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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP 2022-181723, filed on 11/15/2022.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: "movable member" in claim 5 and "processing unit" in claim 14.
Regarding claim 5, “member” is a generic placeholder for performing the claimed function. The generic placeholder “member” is modified by functionally language: “moveable member to move”. The generic placeholder “member is not modified by sufficient structure, material, of acts for performing the claimed function.
Regarding claim 14, “unit” is a generic placeholder for performing the claimed function. The generic placeholder “unit” is modified by functionally language: “processing unit to bend”. The generic placeholder “unit” is not modified by sufficient structure, material, of acts for performing the claimed function.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recites sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-4, 8-12, 14 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Harrabi WO 2022200620 A1. WO 2022200620 A1 to be referred to as the Harrabi patent, discloses elements of the applicant’s device as claimed, thus anticipating the applicant’s claimed invention. Citations below are directed to the translation of CN 117136036.
Regarding claim 1, Harrabi discloses an elongated material supply device, comprising: a conveyor (Harrabi – Wire Guide Unit 2) to convey a rod-shaped or linear elongated material (Harrabi Content of the Invention Page 3, Line 6: wire guide unit being configured to guide the wire through the outlet in a first direction along the longitudinal axis; Device Page 8, Lines 45-48: FIG. 3 shows a perspective view of the wire guide unit (2) of the present invention according to a specific embodiment in which the navigation system 21 comprises a drive roller 211, a driven roller 212, a driver 213 connected to the drive roller 211 and configured to drive the rollers 211, 212 to rotate, and a tube 214 located upstream of the roller.); a sorter (Harrabi – Outlet 22) to allow the elongated material to pass through when a variation in shape of the elongated material is within a predetermined variation range (Harrabi Content of the Invention Page 3, Line 6: an outlet for conveying the wire; Content of the Invention Page 3, Line 24-25: In one embodiment, the outlet is a nozzle, preferably a removable nozzle. Advantageously, this embodiment allows different nozzles with different cross-sections to be used as desired.); and a detector to detect presence or absence of the elongated material at a position downstream from an inlet of the sorter in a conveyance direction of the elongated material (Harrabi Content of the Invention Page 5, Lines 3-4: In one embodiment, the system further includes a wire detection unit for detecting the presence of the wire).
Regarding claim 2, Harrabi discloses the elongated material supply device, wherein the sorter (Harrabi – 22) is formed of a single member or a plurality of members that define a passage allowable width that allows passage of the elongated material when the variation in shape of the elongated material is within the predetermined variation range (Harrabi Content of the Invention Page 3, Line 24-25: In one embodiment, the outlet is a nozzle, preferably a removable nozzle. Advantageously, this embodiment allows different nozzles with different cross-sections to be used as desired.).
Regarding claim 3, Harrabi discloses the elongated material supply device, wherein the passage allowable width is larger than a width of the elongated material and is equal to or less than six times the width of the elongated material (Harrabi Device, Page 8, Lines 22-23: Therefore, for the cross section of the used wire and/or the shape of the arch wire to be obtained, the nozzle with optimized cross section can be selected.). Applicant has not positively claimed the elongated material as part of their invention. Applicant claims a device in which an elongated material is conveyed through the device. MPEP 2115 states that a claim is only limited by positively recited elements. The "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Regarding claim 4, Harrabi discloses the elongated material supply device, wherein the sorter (Harrabi – 22) and the detector are disposed downstream from the conveyor in the conveyance direction of the elongated material (Harrabi Content of the Invention Page 5, Lines 4-5: the wire detection unit being preferably mounted between the outlet of the wire guide unit and the wire bending unit.).
Regarding claim 8, Harrabi discloses the elongated material supply further comprising a controller to control the conveyor to retry to pass the elongated material through the sorter (Harrabi – 22) in a case that the elongated material has not passed through the sorter (Harrabi – 22) (Harrabi Content of the Invention Page 4, Lines 51-52: a programmable controller configured to send a control command to the driver of the driver assembly; Lines 47-49: a driver assembly comprising a first driver operatively connected to the wire guide unit and configured to drive the wire in the guide unit.).
Regarding claim 9, Harrabi discloses the elongated material supply device, wherein the passage allowable width is changeable (Harrabi Device Page 8, Lines 20-22: In one embodiment, the outlet (22) is a nozzle, preferably a removable nozzle. This embodiment allows the use of different nozzles with different cross-sections. Therefore, for the cross section of the used wire and/or the shape of the arch wire to be obtained, the nozzle with optimized cross section can be selected.).
Regarding claim 10, Harrabi discloses the elongated material supply device wherein the elongated material is formed of a flexible metal material with a full length of 100 millimeters or more and a width of 3 millimeters or less (Harrabi Page 3, Lines 14-17: Thus, for a given bending moment, the force exerted by the bending member on the wire is maximized, thereby allowing the wire to be more quickly, more efficiently and more accurately bent.). The nature of wire mentioned in Harrabi calls for the wire to be bent. Thus, one having ordinary skilled in the art before the effective filing date of the claimed invention would infer that the wire is of a flexible material. Referring to MPEP 2115, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Regarding claim 11, Harrabi discloses the elongated material supply device, wherein the elongated material is made of iron, stainless steel, aluminum, copper, or an alloy containing iron, stainless steel, aluminum, or copper. As to claims 10 and 11, it has been previously stated that applicant has not positively claimed the elongated material as part of their invention. Referring to MPEP 2115, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). Additionally, according to MPEP 2115 the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable. In this instance the elongated material is not formed, however, the elongated material is the article included within the body of the claim.
Regarding claim 12, Harrabi discloses the elongated material supply device, wherein the elongated material has a circular or polygonal cross section (Harrabi Page 17, Lines 10-11: FIG. 5A is a perspective view of an outlet (22) of the wire guide unit 2 according to one embodiment, wherein the outlet (22) is a nozzle having a circular inner surface which is rounded.). Referring to MPEP 2115, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Regarding claim 14, Harrabi discloses the bending apparatus, comprising: the elongated material supply device disclosed in Harrabi (See claim 1 rejection); and a processing unit (Harrabi – Wire Bending Unit 3) to bend the elongated material supplied by the elongated material supply device (Harrabi Device, Page 7, Lines 50-55: The wire guide unit (2) may also comprise a hollow body 218 having an outer surface and an inner surface defining an inner hollow portion. The hollow body 218 extends from the navigation system 21 to the outlet (22) in a direction parallel to the longitudinal axis x, such that the wire exits the navigation system 21, enters the hollow body 218, advances in the interior hollow portion, and is conveyed to the outlet (22) of the wire guide unit (2). Here, the wire is exposed to the wire bending unit (3) and will be bent by the bending members 31,32.).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Harrabi CN 117136036 A as applied to claim 1 above, and further in view of Song US 5,966,974. US 5,966,974 is a published patent to be referred to as the Song patent. Harrabi discloses the claimed invention (See Claim 1 rejection), however, Harrabi fails to disclose an elongated material supply device, wherein the detector includes a movable member to move in contact with the elongated material and a sensor to detect displacement of the movable member.
Song teaches a detector that includes a movable member (Song FIG. 6 – 1000) to move in contact with the elongated material (Song Col. 6, Lines 37-40: Therefore, the position detection sensor (1000) fixed to the rotary body 413b rotates to thereby detect the folded position of the member 500.) and a sensor (Song – 1110, 1120, 1130) to detect displacement of the movable member (Song Col. 6 Lines 40-41: The signals detected by the detection sensors (1110), (1120) and (1130) of the position detector (1000)).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the detector of Harrabi to be a moveable member, as taught by Song, wherein rotation of the detector allows the detector to detect a position of the elongated material (Song Col. 6, Lines 37-40: Therefore, the position detection sensor (1000) fixed to the rotary body 413b rotates to thereby detect the folded position of the member 500.).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Harrabi CN 117136036 A as applied to claim 1 above, and further in view of Murray et al. US 5,844,146. US 5,844,146 is a published patent to be referred to as the Murray patent. Harrabi discloses the claimed invention (See Claim 1 rejection), however, Harrabi fails to disclose an elongated material supply device, wherein the detector includes a sensor to detect light shielding due to passage of the elongated material.
Murray teaches a detector (Murray – 206) that includes a sensor to detect light shielding due to passage of the elongated material (Murray Col. 7, Lines 22-24: The position-sensitive detector (206) detects the shifting the light source). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the detector of Harrabi to be a detector able to detect a shifting light source, as taught by Murray, wherein the substitution of one known element for another yields predictable results to one of ordinary skill in the art. According to MPEP 2143(B) simple substitution of one known element for another to obtain predictable results supports a conclusion of obviousness. Harrabi teaches a detector for detecting the presence of a material (wire), whereas Murray teaches a detector for detecting a shift in light. Both the detector for detecting the presence of a material and the detector for detecting a shift in light are known within the art. One of ordinary skill in the art could have substituted a detector for detecting the presence of a material for a detector for detecting a shift in light, and the results of the substitution would have been predictable.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Harrabi CN 117136036 A as applied to claim 1 above, and further in view of Huang CN 106847492 A. CN 106847492 A is a published patent application to be referred to as the Huang patent. Harrabi discloses the claimed invention (See Claim 1 rejection) and discloses the detector detecting the absence of the elongated material (Page 14, lines 1-2), however, Harrabi fails to disclose an elongated material supply device further comprising a notifier to notify that the elongated material has not passed through the sorter.
Huang teaches a notifier (Huang – 1) to notify that the elongated material has not passed through the sorter (Huang Invention Contents, Page 3, Lines 4-7: the fixing plate is further provided with an alarm, the alarm is connected with the control module. when serious bending of pin does not enter to the pin opening in extrusion pressure sensor, the pressure sensor sends a signal to the controller, the controller receives the signal and then sends a signal to the alarm).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the elongated material supply device disclosed by Harrabi to comprise a notifier, wherein the notifier is an alarm, as taught by Murray, used to alert a worker that the elongated material has not passed through the sorter, thus requiring attention (Huang Invention Contents, Page 3, Lines 7-8: alarm lights and alarms to remind the worker of the network transformer pin needs secondary processing.).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Harrabi CN 117136036 A as applied to claim 1 above, and further in view of Walz et al. US 2023/0114519 A1 . US 2023/0114519 A1 is a published patent application to be referred to as the Walz patent. Harrabi disclosed the elongated material supply device (See claim 1 rejection), however, Harrabi fails to disclose the elongated supply device further comprising a plurality of sorters including the sorter and a plurality of detectors including the detector, wherein the plurality of sorters and the plurality of detectors are disposed downstream from the conveyor in the conveyance direction of the elongated material.
Walz teaches a plurality of sorters (Walz – FIG. 1: Pipeline 310, 315) including the sorter and a plurality of detectors including the detector (Walz– FIG. 1: Passage Sensor S1, S2-1, S2-2, S3, S4, S5) (Walz Para [0045]: A functional group which has two spring passage sensors disposed to be mutually spaced apart at different positions of the pipeline; Para [0099]: Some of the sensors in the example are: a spring passage sensor (S1) in the initial region of the pipeline (310) in the proximity of the spring coiling machine 200; a spring passage sensor (S2-1) in the end region of the pipeline (310) ahead of the beginning of the braking track. A further spring passage sensor (S2-2) in the proximity of the sensor (S2-1)).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the elongated material supply device disclosed by Harrabi and include a plurality of sorters and detectors, as taught by Walz, so as to convey various widths of elongated material through the elongated supply device (Walz Para [0045]: wherein sensor signals of the spring passage sensors are processed to detect a time-of-flight in the pipeline.).
Moreover, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a plurality of sorters and a plurality of detectors, since it has been held that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04(VI)(B) provides for legal precedent as a source of supporting rationale wherein duplication of parts supports an obviousness rejection. In In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. Applicant provides no detail pertaining to any difference between the included sorter versus the plurality of sorters. One skilled in the art would understand the plurality of sorters to function the same as the individual sorter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARLINGTON N IBEKWE whose telephone number is (571)272-2474. The examiner can normally be reached Monday - Friday 8am - 4:00pm.
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D.N.I.
Patent Examiner, Art Unit 3725
/Christopher L Templeton/ Supervisory Patent Examiner, Art Unit 3725