DETAILED ACTION
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/17/23 is being considered by the examiner.
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 1-12, 16, 17, 19, and 20 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.
Claims 1-12 are rejected under 35 U.S.C. §112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites “a non-metallic first insert piece insertably connected to the first pan rail, in which the first insert piece is configured to connect a tubular end horn to the pan rail.” The phrase “the pan rail” lacks clear antecedent basis. Claim 1 previously recites “a pan rail assembly” and “a first pan rail,” but does not previously introduce a generic “pan rail” as a separate element. It is therefore unclear whether “the pan rail” refers to the first pan rail, the pan rail assembly, or another pan rail.
Because claims 2-12 depend from claim 1, claims 2-12 incorporate the indefinite limitation and are likewise indefinite.
Appropriate correction would be to amend “the pan rail” to “the first pan rail” if that is the intended antecedent.
Claim 11 is rejected under 35 U.S.C. §112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 11 recites “a non-metallic curved material is located between the first portion and the second portion, the second portion and the third portion, the third portion and the fourth portion, and the fourth portion and the fifth portion of the end horn.” The phrase “non-metallic curved material” does not clearly identify a definite structural element of the end horn assembly. It is unclear whether the phrase refers to a discrete tubular connector, a bent portion, a sleeve, an insert, a coating, an adhesive, or merely a material occupying space between adjacent steel portions.
Further, claim 10 requires the first, second, third, fourth, and fifth portions to be constructed of steel, while claim 11 introduces “non-metallic curved material” between those steel portions. The claim does not clearly define whether the “non-metallic curved material” forms part of the end horn, connects the steel portions, surrounds the steel portions, or is otherwise located between the portions without being part of the load-bearing tubular structure.
Appropriate correction would be to recite the structural component with greater specificity, for example, “non-metallic bent connector portions are positioned between and connect adjacent ones of the first, second, third, fourth, and fifth portions,” if that is the intended structure.
Claim 16 recites that “the first and second insert pieces are configured to attach to existing fastener location at the ends of the first and second pan rails, respectively.” The phrase “existing fastener location” is unclear because the claim does not previously recite any fastener location. It is also unclear whether the “existing fastener location” is a hole, slot, threaded opening, bracket, fastener, mounting interface, or other structure.
The term “existing” is also unclear in the context of an apparatus claim because it appears to depend on a prior state of the pan rails before assembly or retrofit, rather than on a definite structural feature of the claimed work machine. The claim therefore does not clearly define the structure by which the insert pieces attach to the pan rails.
Claim 17 depends from claim 16 and therefore incorporates this indefinite limitation.
Appropriate correction would be to identify the fastener structure, for example, “existing fastener openings formed at the ends of the first and second pan rails,” if that is the intended structure.
Claim 17 is rejected under 35 U.S.C. §112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 17 recites that “the first and second insert pieces are configured to support a stronger force that is applied from above the longitudinal axis than a force that is applied from below the longitudinal axis.” The phrase “a stronger force” is indefinite because the claim does not provide an objective standard for determining the relative force-supporting capability. It is unclear whether “support a stronger force” refers to force at failure, force before deformation, allowable load, impact resistance, bending strength, shear strength, pull-out resistance, fatigue resistance, or another mechanical property.
The claim also does not define the test conditions, direction of loading, points of force application, support conditions, or threshold comparison for determining whether the insert pieces support a greater force from above the longitudinal axis than from below the longitudinal axis. Accordingly, the metes and bounds of the claimed force capability cannot be determined with reasonable certainty from the claim language.
Appropriate correction would be to recite a definite structural feature that produces the force capability, or to define the force capability using an objective measurable parameter and test condition.
Claim 19 recites “The pantograph assembly of claim 18,” and claim 20 recites “The pantograph assembly of claim 18.” However, claim 18 is directed to “[a]n end horn assembly for a pantograph,” not a pantograph assembly. It is therefore unclear whether claims 19 and 20 are intended to further limit the end horn assembly of claim 18, the pantograph referenced as intended environment in claim 18, or an unclaimed pantograph assembly.
Appropriate correction would be to amend claims 19 and 20 to recite “The end horn assembly of claim 18” if claims 19 and 20 are intended to depend from and further limit claim 18.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 19 and 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 18 is directed to “[a]n end horn assembly for a pantograph.” Claims 19 and 20 each depend from claim 18 but recite “The pantograph assembly of claim 18.” Because claim 18 does not claim a pantograph assembly as the claimed subject matter, claims 19 and 20 do not clearly and properly specify a further limitation of the subject matter claimed in claim 18.
Appropriate correction would be to amend claims 19 and 20 to recite “The end horn assembly of claim 18,” if that is the intended dependency.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0004] states that “there remains a need for improved dipper designs for work machines,” which appears inconsistent with the disclosed pantograph/end horn subject matter. Correction is required for clarity.
Paragraph [0019] recites “insulting members,” which appears to be a typographical error for “insulating members.”
Paragraph [0022] refers to “the first pan rail 113, and/or second pan rail 114,” whereas the surrounding disclosure identifies these components as first pan rail 213 and second pan rail 214.
Paragraph [0025] states “An elevated portion 264 of the first insert piece 264,” which appears to incorrectly identify the first insert piece as reference numeral 264 rather than 260. Paragraph [0025] also uses reference numeral 274 for both the bottom surface and the tubular-shaped connection portion, creating potential reference-number ambiguity.
Paragraph [0026] states “FIGS. 6 through 6,” which appears to be an error. Paragraph [0026] also includes the phrase “when the end horns hard hollow tubular objects,” which appears to contain typographical errors.
Paragraph [0027] includes the phrase “of the of the third portion 282,” which appears to be a typographical error.
Paragraph [0030] states “bent to from the end horn 276,” which appears to be a typographical error for “bent to form the end horn 276.”
Appropriate correction is required.
Allowable Subject Matter
Claims 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-12, 16, 17, 19, and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 13-15 and 18 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON C SMITH whose telephone number is (703)756-4641. The examiner can normally be reached Monday - Friday 8:30 AM - 5:00 PM.
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/Jason C Smith/ Primary Examiner, Art Unit 3615
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