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 .
Election/Restrictions
Applicant’s election without traverse of Group l, corresponding to claims 1-9 and 17-18, in the reply filed on 5/27/25 is acknowledged.
Claim Interpretation
3. 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.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 limitation(s) uses 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 limitation(s) is/are: “Docking Element” recited in claim 2 and 3 “Securing Element” reciting in claim 2 and 3 “Holding Element” recited in claim 2 and 3.
“Docking Element (5)” is interpreted as structurally requiring a printed press-fit pin, a metal press-fit pin, or a mix of a metal press fit pin and a printed press-fit pin having a spherical surface and/or a plane surface, or a structure for joining two elements, which includes press fit pins, holes, grooves or wells [as described on page 8 lines 26- page 9 line 10, page 10 lines 1-7, and page 16 lines 5-10 of the instant application], or an equivalents thereof.
“Securing Element (7)” is interpreted as structurally requiring a printed press-fit pin, a metal press-fit pin, or a mix of a metal press fit pin and a printed press-fit pin, the securing element comprising a spherical surface and/or plane surface, or a structure for joining two elements, which includes press fit pins, holes, grooves or wells [as described on page 8 line 11- 24, page 9 line 11-13, and page 10 lines 1-7 of the instant application], or an equivalents thereof.
“Holding Element (9)” is interpreted as structurally requiring a structure for joining two elements, which includes press fit pins, holes, grooves or wells [as described on page 10 lines 1-7 of the instant application], or an equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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 this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/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 limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
6. 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.
Claim 9 is 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.
A) Applicant recites the phrase “each other” in claim 9 line 5. The structure corresponding to the phrase “each other” is unclear and indefinite.
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.
Claim(s) 1-6, 8, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dee Lee (WO 2013/104741A1).
Regarding to claim 1, Dee Lee discloses a method for using a fixing arrangement [as can be seen from Figures 1-2 in Dee Lee] with a base element (base structure 12, as described on page 21 lines 6-15, and can be seen from Figure 1 in Dee Lee) for fixing a workpiece (object 24, as can be seen from Figure 1 in Dee Lee) in a welding process [as described on page 13 lines 3-11 in Dee Lee], comprising:
attaching a fixture (locators 14, 16, 18, 20, 22, as described on page 21 lines 6-15 and can be seen from Figure 1 in Dee Lee) at a precision structure of a work surface (a top surface of 12, as can be seen from Figure 1 in Dee Lee) of the base element (12) and; securing the workpiece (24) at the fixing arrangement by the fixture(14, 16, 18, 20, 22) [as can be seen from Figure 1 in Dee Lee]; the fixture (14, 16, 18, 20, 22) being formed by an additive manufacturing process [as described on page 2 lines 28-31 in Dee Lee].
11. Regarding to claim 2, Dee Lee discloses the method according to claim 1, wherein the fixture (14, 16, 18, 20, 22) comprises a first surface (a first surface of 14, 16, 18, 20, 22, as can be seen from Figure 1 in Dee Lee) and a docking element (placement feature 35, as invoked by 112 (f) having the corresponding structure of an element for joining to parts, as set forth above) to attach the fixture at the precision structure [as described on page 16 lines 9-34 and can be seen from Figures 1-5 in Dee Lee], the docking element located on the first surface (first surface of 14, 16, 18, 20, 22).
12. Regarding to claim 3, Dee Lee discloses the method according to claim 1 further comprising: providing a device to fix the workpiece (24) in the welding process[Figures 1-5], comprising the base element (12) with the work surface (top surface of 12) [Figure 1], the work surface comprises the precision structure, the fixture (14, 16, 18, 20, 22), comprising a first surface (a first surface of 14, 16, 18, 20, 22) with a docking element (a first placement feature 35, as invoked by 112 (f) having the corresponding structure of an element for joining to parts, as set forth above) and a second surface (a second surface of 14, 16, 18, 20, 22) with a securing element (a second placement feature 35, as invoked by 112 (f) having the corresponding structure of an element for joining to parts, as set forth above), and the workpiece (24) comprising a holding element (opening, as can be seen from Figure 1 in Dee Lee and as invoked by 112 (f) having the corresponding structure of an element for joining to parts, as set forth above], interjoining the precision structure of the base element (12) with the docking element (first 35) of the first surface , and interjoining the securing element (second 35) of the second surface with the holding element of the workpiece (24), to precisely fix the workpiece(24) [as can be seen from Figure 1 in Dee Lee].
13. Regarding to claim 4, Dee Lee discloses the method according to claim 2, wherein the docking element or the securing element (first or second 35) comprises a spherical surface or a plane surface [as can be seen from Figures 1-5 in Dee Lee].
14. Regarding to claim 5, Dee Lee discloses the method according to claim 2, wherein the first surface (a first surface of 14, 16, 18, 20, 22) and the second surface (a second surface of 14, 16, 18, 20, 22) stand at a predeterminable angle to each other, or an angle between the first surface and the surface is between 0 and 360 degrees or the angle between the first surface and the second surface varies across the first surface and the second surface B, or the first surface or the second surface comprises a spherical surface or a plane surface or the fixture is a solid block of material, or the fixture is flexible [Figure 1 in Dee Lee].
15. Regarding to claim 6, Dee Lee discloses the method according to claim 1, wherein the fixture (14, 16, 18, 20, 22) comprises a hole or a gap to save on material, or the fixture is made of a compound material, or wherein the fixture masks a part of the workpiece, or the welding process is automated [Figure 1 in Dee Lee].
Regarding to claim 8, Dee Lee discloses the method according to claim 1, wherein the fixture is capable of being used several times [as can be seen from Figure 1 in Dee Lee].
Regarding to claim 18, Dee Lee discloses the method according to claim 2 and 13, having an angle between the first surface (a first surface of 14, 16, 18, 20, 22) and the second surface (a second surface of 14, 16, 18, 20, 22) between 0 and 180 degrees [as can be seen from Figure 1 in Dee Lee].
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.
Claim(s) 7, 9, and 17 is/are rejected, as best understood in view of the above 112 rejection, under 35 U.S.C. 103 as being unpatentable over Dee Lee (WO 2013/104741A1)
Regarding to claim 7, Dee Lee discloses according to claim 2, a connection between the precision structure and the docking element. However, Dee Lee does not explicitly disclose the connection having a clearance between 0.5 and 1 mm. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the connection to include having a clearance between 0.5 and 1 mm, as an obvious to try clearance range with would yield a predictable solution with a reasonable expectation of success.
21. Regarding to claim 9, Dee Lee discloses the method according to claim 1, having a fixture (14, 16, 18, 20, 22) being a clamp. However, Dee Lee does not explicitly disclose the clamp being a sliding clamp, comprising a stationary bracket and a sliding bracket, the stationary bracket and the sliding bracket each comprise a clamping surface, the clamping surfaces of stationary bracket and the sliding bracket are parallel to each other and face each other, the sliding bracket is capable of being moved along an Axis is the Axis being orthogonal to the clamping surfaces, or each of the clamping surfaces comprises a precision pin to fix the workpiece. However, it would have been obvious to one of ordinary skill in the art to modify the fixture in Dee Lee to include an alternate clamping apparatus having the recited structure, as a simple substitution of one known clamping element for another to obtain predictable results.
Regarding to claim 17, Dee Lee discloses the method according to claim 2, a connection between the precision structure and the docking element. However, Dee Lee does not explicitly disclose the connection having a clearance between 0.065 and 0.085 mm. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the connection to include having a clearance between 0.0.65 and 0.085 mm, as an obvious to try clearance range with would yield a predictable solution with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIRVANA DEONAUTH whose telephone number is (571)270-5949. The examiner can normally be reached Monday-Friday 9am-5pm.
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/NIRVANA DEONAUTH/ Primary Examiner, Art Unit 3726