Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment/Arguments
Applicant's amendment filed on 7/15/2025 has been entered.
Claims 1-9 and 20 were previously cancelled.
Claim 10 has been amended to at least include “a longitudinal sidewall of the fastener” which was previously initially recited in claim 13.
Claims 11-19 are as previously presented.
Claims 21-30 have been added.
Claims 10-19 and 21-30 are still pending in this application, with claims 21 and 26 being independent.
This amendment overcomes the previously set-forth 103 rejections of claims 11 and 16-19, but introduces a new 112b rejection below. Applicant’s arguments regarding Rudgley in view of amended claim 10/claim 13 are not persuasive, see updated rejection presenting Rudgley as anticipating amended claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13:
The recitation of “a longitudinal sidewall” renders the claim indefinite because it is unclear if this is intended to be distinct from the longitudinal sidewall recited in claim 10. Claim 13 will be interpreted as reciting “[[a]]the longitudinal sidewall”
Claims 14-15 are rejected due to dependence on a rejected claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10-11, 13-14, 16, 18-19, and 20-30 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Rudgley (US 20160361770 A1).
Regarding claim 10,
Rudgley teaches:
An electro-discharge machining, EDM, tool [figs. 1-3: hand-held device 10] for removing fasteners having a longitudinal shank [fig. 4A: fastener 18] from a workpiece [see fig. 4A, showing a workpiece surface 20; para. 0055], the EDM tool comprising:
an EDM electrode for eroding the fastener [fig. 4A: erosion electrode 66; [para. 0056: “…The erosion electrode 66 may be configured to controllably approach a portion of a workpiece to be eroded, such as a fastener 18 or a collar 24.”];
an EDM fixture [fig. 4A: base 26, hood 32, movable by handle 28] configured to
contact a longitudinal sidewall of the fastener to make electrical contact with the longitudinal sidewall of the fastener [Rudgley teaches that the shape and arrangement of conventional electrodes of an EDM fixture is not limited (para. 0057), and may be configured to contact a longitudinal sidewall of the fastener; see fig. 6B, wherein electrode 66 is configured as a tube shaped to contact a corresponding longitudinal sidewall of the fastener; para. 0058], so as to
locate the EDM tool and the EDM electrode relative to the fastener in a lateral direction [Rudgley teaches that it is known to properly position/locate the tool and its electrodes relative to the fastener, at least in a lateral direction, e.g., with visual aids incorporating the electrodes with a sensor and display (para. 0085), whereby this allows controlled erosion, e.g., the erosion of just the fastener; para. 0058: “Where erosion of the frame is not desired, such erosion may be minimized or avoided by providing a hollow tubular erosion electrode 66 having an outer diameter that is about equal to or less than the outer diameter of the shank of the fastener 18 or the inner diameter of the hole of the frame.”] and to
establish an electrical ground connection with the fastener [see fig. 4A, showing ground electrode 38 making electrical contact with the fastener 18, thereby establishing the conventional ground connection required by EDM].
Examiner notes that Rudgley teaches the conventional swapping of ground/workpiece electrode and erosion/tool electrode (see fig. 4A and fig. 5A), wherein material is removed from the fastener proximate the tool electrode, relative to an arc generated therebetween [i.e., the conventional EDM process, see instant disclosure, p. 1, lines 13-31; see Rudgley figs. 4B and 5B showing the corresponding removed material proximate the tool electrode].
In response to applicant's argument “As such, Rudgley separates the electrical grounding function from the physical locating function of the fixture, whereas the amended claim requires both functions to be performed by the same structure-i.e., a fixture configured to contact the sidewall for electrical and positional purposes.”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art [i.e., changing the shape of electrodes] cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The tube-shaped electrode, shaped according to the outer diameter of a fastener would also allow “physical locating” of the fixture to the fastener (i.e., a locking sensation perceived by the user when the tube shape is positioned around the fastener). Although the claims are interpreted in light of the specification, limitations from remarks are not read into the claims; It is noted that the features upon which applicant relies (i.e., “physical locating function”) are not recited in the rejected claim(s). See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, a recitation of the intended use of the claimed invention [i.e., shaped electrodes used for “physical locating”] must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 11, Rudgley discloses as shown in figure 5A a recess for receiving a portion of the fastener (element 18).
Regarding claim 13, Rudgley discloses:
wherein the recess of the EDM fixture comprises a surface configured to make contact with a longitudinal sidewall of the fastener [see fig. 6B] and an opening configured to receive the EDM electrode so that the EDM electrode can erode the fastener [see figs. 4A/4B, and an opening defined by the tubular electrode 38].
Regarding claim 14, Rudgley discloses:
wherein the EDM fixture comprises a workpiece seal, configured to seal against the workpiece [figs. 4A/4B: hood 32; para. 0055: “According to some exemplary implementations, mounted on a distal end of the base 26 is a hood 32. The hood 32 defines a workspace, within which erosion activity may occur. The hood 32 may be configured to seal against a portion of a workpiece, such as a frame, thereby enclosing the workspace such that the workspace includes access to at least a portion of a fastener 18, a collar 24, or another workpiece.”] so that the recess and the workpiece together define a cavity [i.e., a workspace].
Regarding claim 16, Rudgley discloses electrode 38 as an electrically conducting body.
Regarding claim 18, Rudgley discloses a handheld EDM tool (see handle 28, see paragraph 54).
Regarding claim 19, Rudgley discloses a power supply (element 86, see paragraph 86) that is used to supply pulses (see paragraph 9) that is considered to supply current when there is an electrical discharge. Rudgley further discloses an inlet pump (element 92), a drain pump (element 84), a dielectric inlet (element 54) and a dielectric outlet (element 34) that is considered to meet the limitation of a fluid circulation unit, configured to circulate a dielectric fluid through the EDM tool, in use.
Claims 21-30 are rejected for the same corresponding reasons as presented for claims 10-14, since Rudgley’s tubular shaped electrode also centrally locates the tool relative to the fastener, the unitary tube defining a non-compliant recess for the fastener.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Rudgley (US 20160361770 A1) in view of Houman (US 5618449 A).
Regarding claim 12 (see instant figs. 7-9, showing an alternative EDM fixture),
Rudgley discloses the EDM tool of claim 10, wherein the
wherein the EDM electrode is configured to erode the fastener from a first side of the workpiece [see fig. 4A/4B showing the fastener being eroded from a right side to a left side], and the EDM fixture is configured to locate the EDM tool and the EDM electrode and make ground electrical contact with the fastener by contact with the workpiece [para. 0018: “a ground electrode having a distal end disposed within the workspace and configured to contact at least a portion of the workpiece”] or the fastener [see fig. 4A, showing the ground electrode contacting the fastener on the same side as the tool electrode].
However, Rudgley does not explicitly disclose wherein the ground connection is made to the fastener from a second side of the workpiece, opposite to the first side.
Houman, in the same field of endeavor [para. 2: “The present invention relates to an electrical discharge machining ("EDM") apparatus, and more particularly, to a compact portable hand-held EDM tool of less than 20" height which can be carried by a worker to a remote job site for drilling holes in an electro-conductive workpiece”; para. 12: “It is, therefore, an object of the present invention to provide a relatively inexpensive, compact, portable and held--held electro discharge machining (EDM) tool which can be easily carried by a worker to a remote job site and used for drilling a hole in a workpiece and especially for removing a metallic object in the workpiece.”], teaches wherein the ground connection is made to the fastener from a second side of the workpiece, opposite to the first side [see fig. 2, showing tool electrode 23 at a first side of a fastener 12, wherein ground is connected to workpiece 11, the workpiece 11 having a portion thereof located opposite the first side of the fastener; paras. 25-29: “In order to operate the tool 10, the following steps should be undertaken…connect the power supply's "Ground" to the workpiece 11.” ].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the EDM tool of Rudgley, as suggested by Houman with a reasonable expectation of success of removing material, so as to arrive at the invention of claim 12, since Houman evidences this arrangement as yielding predictable results in allowing the conventional ground/tool electrode connections, wherein this alternative and equivalent arrangement may allow for a more secure and/or simpler ground connection at positions opposite to the tool electrode.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Rudgley (US 20160361770 A1) in view of Kobayashi (US 6583376 B2).
Regarding claim 15, Rudgley discloses:
wherein the EDM fixture comprises a groove around a perimeter of the recess, the workpiece seal disposed in the groove, and/or
wherein EDM fixture comprises a fluid channel configured to communicate with the cavity for dielectric fluid circulation [fig. 4A: dielectric inlet 54].
Kobayashi in U.S. Patent No. 6,583,376. Kobayashi teaches a seal (o-ring) inside of a groove (element 9) to prevent entrance of fluid and to prevent the o-ring seal from being released (see column 5, lines 33-41). It would have been obvious to adapt Rudgley in view of Palleva et al. and Kobayashi to provide a groove to prevent the o-ring seal from being released.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Rudgley (US 20160361770 A1) in view of Palleva (WO 2012103017 A2).
Regarding claim 17,
Palleva et al. (017) teaches as shown in figure 4 an attachment mechanism (shape 340 and element 42) to removably couple a fixture (element 100) to a hand tool (element 20). It would have been obvious to adapt Rudgley in view of Palleva et al. to provide this to removably couple the EDM fixture to a body of the EDM tool.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD F LANDRUM whose telephone number is (571)272-5567. The examiner can normally be reached M-F 8-5.
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/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
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