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 .
Claims 1-7 have been presented for examination.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over AAPA1 in view of Pruftechnik2.
Referring to claim 1, the AAPA teaches the method of aligning a shaft of a first machine and a shaft of a second machine [0004] comprising:
b) providing a set of shims, each of the shims having a thickness [0016].
c) determining the thickness of each shim in the set of available shims [0016].
d) determining at least one subset of the set of available shims required to provide the total required shim thickness [0016].
e) removing one of the at least one subset of shims from the set of available shims [0015-0016].
f) inserting the one of the at least one subset of shims between the portion of the first machine and the first machine support [0015-0016].
While the AAPA teaches the invention substantially as claimed above, it is not explicitly taught to 1) determine a total required shim thickness needed to raise a portion of the first machine relative to a first machine support to align the shaft of the first machine with the shaft of the second machine; and 2) that the thicknesses of the shims are provided to a processor to automatically determine a subset of the shims to provide the shim thickness to align the first and second machines.
With respect to 1), it should be first noted that the AAPA teaches the use of laser alignment methods which provide alignment adjustments with far more speed and accuracy than other methods but does not explicitly teach that laser alignment provides total required shim thicknesses. Pruftechnik teaches a laser alignment tool which is used to identify a required shim thicknesses for shaft alignment [pgs. 110-112: emphasis on bottom figure on page 111]. In addition, Pruftechnik also identifies shim thicknesses and adjustments for feet as well [pgs. 68-69]. It would have been obvious to include Pruftechnik into the AAPA method because doing so would provide a fast and highly accurate alignment tool which would provide the exact shim thicknesses instead of relying on the trial-and-error process described by the AAPA [0016].
With respect to 2), while the AAAP-Pruftechnik combination teaches determining the required shim thickness, it is not explicitly taught that a computer processor automatically determines a subset of shims required to provide the total shim thickness based on provided thicknesses to the processor that are available. In other words, the AAPA teaches the process of selecting the shims is a manual process versus an automatic process performed by a processor. Broadly automating a manual activity is not a patentable concept. See In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined “old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed.” The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.) [Emphasis added]. Therefore, providing a processor for automatically calculating the shims to use based on the determined thickness required instead of mandating that a user determine the combination of shim thickness manually is not a patentably distinct concept as indicated immediately above.
Referring to claim 2, the AAPA teaches the need to minimize the number of shims used [0018-0019]. It would have been obvious to one of ordinary skill in the art to limit the number of shims to any “low” value so long as the number of shims use does not become excessive. Therefore, limiting the shims to three would have been obvious to one of ordinary skill in the art before the effective filing date to limit the number of shims to three because it would provide the ability to fine tune the shim thickness without allowing too many shims to be used as cautioned by the AAPA.
Referring to claim 3, Pruftechnik teaches that shimming is the result of determined misalignment [116].
Referring to claim 4, both the AAPA and Pruftechnik teach multiple feet that can be shimmed [AAPA: 0016; Pruftechnik pgs. 68-69]. Therefore, steps b-f, which detail which shims are required, removing those shims and inserting the shims, would need to be repeated for each foot that needs to be shimmed.
Referring to claim 5, while the AAPA does not explicitly teach replacing the used shims, the examiner is taking official notice that replacing used shims is a well-known concept in the art. Replacing the used shims is necessary because over time, used shims that are not replaced would become unavailable for future alignments and potentially making future alignments impossible. Therefore, it would have been obvious to one of ordinary skill in the art to replace the used shims because it would ensure that all thicknesses are available for future alignment procedures.
Referring to claim 6, while the AAPA-Pruftechnik combination teaches inserting shims under the machinery feet [0016], it is not explicitly taught that the shims are inserted simultaneously. It would have been obvious to one of ordinary skill in the art before the effective filing date to try inserting them simultaneously because a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. Because the insertion method only has a limited number of variations (i.e., individually or simultaneously), selecting either of the finite choices would lead to the same predictable solution of the shims being placed under each foot, each which has a reasonable expectation of success of those shims being placed under the feet.
Referring to claims 7-8, the AAPA teaches that the user can use a plurality of different shims which includes two or more shims [0016-0017, 0019]. This teaches the subset comprises two different subsets.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over AAPA and Pruftechnik as applied to claims 1-8 above, and further in view of RELIABLITYWEB, Best Practices: Machinery Alignment Shimming [RW].
Referring to claim 9, while the AAPA and Pruftechnik teach the invention substantially as claimed above, it is not explicitly taught to limit the number of shims to three. RW teaches that then shimming machinery, shims should be limited to no more than three [pgs. 2-3]. It would have been obvious to one or ordinary skill in the art before the effective filing date to include the teachings of RW into the AAPA-Pruftechnik combination to limit the number of shims to 3 or less because otherwise there runs the risk of exceeding a soft foot tolerance as taught by RW.
Response to Arguments
Applicant's arguments filed 6/16/26 have been fully considered but they are not persuasive. In the REMARKS, applicants argue in substance that 1) Pruftechnik does not teach providing a computer processor the thickness of each shim in the set of available shims or to automatically determine by the processor at least one subset of the set of shims required to provide the total required shim thickness; 2) Applicant disagrees with the MPEP indicating that “The court held that broadly providing an automatic or mechanical means to replace a manual activity which is accomplished the same result is not sufficient to distinguish over the prior art” because if such was the case, it would be impossible to patent a dishwasher; 3) MPEP 2144(III) states that “legal precedent can provide the rationale supporting obviousness only if the facts in the case are sufficiently similar to those in the application” and the examiner has not shown an automatic use of a motor or timer to replace a manual system for determining a set of available shims to provide a total required shim thickness.
Referring to applicants first argument, this argument is moot because Pruftechnik was not relied upon to teach providing the processor the thickness of each shim or to have the processor determine the at least one subset to provide the total thickness.
Referring to applicants second argument, applicant equates this argument to not being able to patent a dishwasher since a dishwasher is a machine to automate the task of manual dishwashing. The examiner would like to highlight that the section cited by applicant explicitly states that “broadly providing an automatic or mechanical means to replace a manual activity...”. In applicants’ example, a dishwasher would include pumps, solenoids, hoses, racks, gearing, gaskets… all working together to realize a physical dishwasher. Or in other words, a physical dishwasher comprises many parts to facilitate the automatic washing of dishes. In the instant case, the claims simply use a processor to perform calculations the AAPA teaches are performed by a user to accomplish the same result thus, broadly providing an automatic or mechanical means to replace a manual activity which accomplishes the same result.
Referring to applicants third argument, applicant cited MPEP 2144(III) to further argue that Venner (i.e., the basis for automating a manual activity) is not applicable because applicant argues that the claims are not “sufficiently similar” to Venner since the claims are directed to determining shim thickness and Venner is directed to mold casting. Applicant explicitly points out that the claims do not require “a motor or a timer” to determine the total shim thickness. The examiner would like to emphasize that MPEP 2144(III) further states that “In this context, ‘sufficiently similar’ does not necessarily require that the facts of the prior legal decision and those of the application under examination come from the same technological area. Rather, facts are sufficiently similar when they can be analogized to each other such that they present the same legal issue.” In the instant case, “broadly providing an automatic or mechanical means to replace manual activity” represents the similarity since the concept of automating a manual activity. That is the common legal issue presented in both Venner and in this case.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A CONNOLLY whose telephone number is (571)272-3666. The examiner can normally be reached Monday-Friday 9am-5pm.
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/MARK A CONNOLLY/Primary Examiner, Art Unit 2115 8/10/26
1 Cited in the prior office action.
2 Cited in the prior office action.
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