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 .
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.
1. Claims 1, and 4-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Evens et al. (US 10,000,019; previously presented; hereafter known as Evens).
Regarding claim 1, Evens teaches of a system for joining (col. 2 lines 11-25) a first structure (patch; noted as element 30 in col. 6 lines 21-23) and a second structure (workpiece; workpiece noted as element 14 in col. 5 lines 18-20) comprising a plurality of fixtures (installation stand- 10), including a first fixture (carrier plate- 12; col. 4 lines 59-62) that is fixed to a first structure (patch- 30; col. 6 lines 21-23), a second fixture fixed to a second structure (feet -20 fixed to workpiece- 14; col. 8 lines 58-63;), a vacuum bag (vacuum bag- 38), a vacuum port (vacuum probe base- 44) coupled to the vacuum bag as seen in Figure 9, and a heater (heating blanket- 56). The fixtures are capable of forming a bond cavity and is capable of adjusting the distance between the first and second structure (col. 2 line 57- col. 3 line 7), the vacuum surrounds a portion of first structure and the second structure as seen in Figure 9, the vacuum port is capable of evacuating and de-aerating the adhesive in a bond cavity (col. 8 lines 6-9), and the heater is capable of curing the adhesive between structure for bonding (col. 11 lines 21-25). It is the opinion of the Examiner that without evidence to the contrary the vacuum bag would be capable of having a “collapsible standoff” within it.
The collapsible standoff is “material worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the collapsible standoff and its positioning in the structures as well as its function in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
In regard to the claim limitation establishing a structural relationship between the collapsible standoff and fixtures, these structural relationships depend on the properties of the first and second structures as well as the manner of operating the apparatus. The first and second structures are “materials worked upon” and lack patentable weight, these indirect properties cannot be given patentable weight as doing so would necessitate and wrongly incorporate the properties of the first and/or second structures into the apparatus.
In regard to the claim limitation of the collapsible standoff being within the vacuum bag, the structure of the collapsible standoff being within the vacuum bag is only relevant during specific steps of operation, and in the case of Applicant’s disclosure, such a step where the collapsible standoff is not within the vacuum bag is shown in Figure 5E, where the collapsible standoff is by itself in the final product. This structure as argued by Applicant only exists in specific operation steps, and is in the Examiner’s opinion directly a “recitation with respect to the manner in which a claimed apparatus is intended to be employed” (See MPEP 2114.II), and not a constant structural limitation. For this reason, it is the Examiner’s opinion that this claim limitation does not differentiate the claimed apparatus from the prior art, and consequentially Evens anticipates this claim.
Regarding claim 4, the adhesive is “material worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the adhesive and its positioning in the structure as well as its function in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 5, the spacer is “material worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the spacer and its positioning in the structure as well as its function in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 6, the collapsible standoff is “material worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the collapsible standoff and its positioning in the structure as well as its function in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 7, the first and second structures as well as the collapsible standoff are “materials worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the first structure, second structure, and collapsible standoff and their respective positionings as well as respective functions in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 8, Evens further teaches the inclusion of a semi-permeable breather material (breather material) placed around the product in process (col. 10 lines 6-11). The bond cavity is “material worked upon” and therefore the semi-permeable breather material only has to be capable of being placed at its one or more exits to meet the claim limitation. Since Evens teaches that the semi-permeable material surrounds their workpiece, the Examiner sees no reason it could not be placed at the exit of the bond cavity.
Regarding claim 9, Evens teaches of a vacuum port as mentioned in the rejection of claim 1. It should be noted that the manner of operation of an apparatus does not differentiate the apparatus claims from the prior art. MPEP 2114.II teaches-"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). “Continuously evacuat[ing] the bond cavity while the first fixture and second fixture cause movement of the first structure and the second structure to one another” is a manner of operation of the vacuum port and contains no further apparatus structure features, and consequentially Evens anticipates this claim limitation as this claim limitation does not differentiate from Evens.
Regarding claim 10, the adhesive, collapsible standoff, first structure, and second structure are all “materials worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the adhesive, first fixture, second fixture, and collapsible standoff and their respective positionings as well as their respective functions in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 11, the phrase “cur[ing] the deaerated adhesive and caus[ing] the collapsible standoff to collapse due to heating and thermal softening at a predetermined temperature” is a “manner of operation” of the one or more heaters. MPEP 2114.II teaches-"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In applying the teachings of MPEP 2114.II, these claim limitations do not differentiate the claimed apparatus over the prior art, and consequentially Evens anticipates this claim.
Regarding claim 12, the phrase “the vacuum port continuously evacuates the bond cavity while the one or more heaters cure the deaerated adhesive” is a manner of operation of both the vacuum port and one or more heaters. MPEP 2114.II teaches-"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In applying the teachings of MPEP 2114.II, these claim limitations do not differentiate the claimed apparatus over the prior art, and consequentially Evens anticipates this claim.
Regarding claim 13, the phrase “the one or more heaters apply heat to achieve a first temperature to cause the collapsible standoff to collapse resulting in the first structure and the second structure moving toward each other due to vacuum pressure” is a manner of operation of the one or more heaters. MPEP 2114.II teaches-"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In applying the teachings of MPEP 2114.II, these claim limitations do not differentiate the claimed apparatus over the prior art, and consequentially Evens anticipates this claim.
Regarding claim 14, the phrase “the one or more heaters apply heat to achieve a second temperature higher than the first temperature to cure the deaerated adhesive and bond the first structure to the second structure” is a manner of operation of the one or more heaters. MPEP 2114.II teaches-"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In applying the teachings of MPEP 2114.II, these claim limitations do not differentiate the claimed apparatus over the prior art, and consequentially Evens anticipates this claim.
Regarding claim 15, Evens teaches that their apparatus and method are applicable to airframes and either a patch or doubler (col. 1 lines 24-31), which gives creditability that the apparatus of Evens is capable of doing work on a wing skin and wing of an aircraft. The first and second structures are “materials worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the first and second structures and their respective positionings as well as their respective functions in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 16, Evens teaches of a system for joining (col. 2 lines 11-25) a first structure (patch; noted as element 30 in col. 6 lines 21-23) and a second structure (workpiece; workpiece noted as element 14 in col. 5 lines 18-20) comprising a plurality of fixtures (installation stand- 10), including a first fixture (carrier plate- 12; col. 4 lines 59-62) that is fixed to a first structure (patch- 30; col. 6 lines 21-23), a second fixture fixed to a second structure (feet -20 fixed to workpiece- 14; col. 8 lines 58-63;), a vacuum bag (vacuum bag- 38), a vacuum port (vacuum probe base- 44) coupled to the vacuum bag as seen in Figure 9, and a heater (heating blanket- 56). The fixtures are capable of forming a bond cavity and is capable of adjusting the distance between the first and second structure (col. 2 line 57- col. 3 line 7), the vacuum surrounds a portion of first structure and the second structure as seen in Figure 9, the vacuum port is capable of evacuating and de-aerating the adhesive in a bond cavity (col. 8 lines 6-9), and the heater is capable of curing the adhesive between structure for bonding (col. 11 lines 21-25). It is the opinion of the Examiner that without evidence to the contrary the vacuum bag would be capable of having a “collapsible standoff” within it.
The collapsible standoff is “material worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the collapsible standoff and its positioning in the structures as well as its function in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
In regard to the claim limitation establishing a structural relationship between the collapsible standoff and fixtures, these structural relationships depend on the properties of the first and second structures as well as the manner of operating the apparatus. The first and second structures are “materials worked upon” and lack patentable weight, these indirect properties cannot be given patentable weight as doing so would necessitate and wrongly incorporate the properties of the first and/or second structures into the apparatus.
In regard to the claim limitation of the collapsible standoff being within the vacuum bag, the structure of the collapsible standoff being within the vacuum bag is only relevant during specific steps of operation, and in the case of Applicant’s disclosure, such a step where the collapsible standoff is not within the vacuum bag is shown in Figure 5E, where the collapsible standoff is by itself in the final product. This structure as argued by Applicant only exists in specific operation steps, and is in the Examiner’s opinion directly a “recitation with respect to the manner in which a claimed apparatus is intended to be employed” (See MPEP 2114.II), and not a constant structural limitation. For this reason, it is the Examiner’s opinion that this claim limitation does not differentiate the claimed apparatus from the prior art, and consequentially Evens anticipates this claim.
Regarding claim 17, the collapsible standoff is “material worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the collapsible standoff and its composition is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 18, the collapsible standoff is “material worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the collapsible standoff and composition is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 19, the collapsible standoff is “material worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the collapsible standoff and composition is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 20, the collapsible standoff, first structure, and second structure are “materials worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the collapsible standoff, first structure, and second structure with their corresponding positionings as well as their respective functions in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Regarding claim 21, as mentioned in the rejection of claim 16, the apparatus of Evens has a heater that can cure adhesive (heating blanket- 56). The limitation “cure the deaerated adhesive and cause the collapsible standoff to collapse due to heating and thermal softening at a predetermined temperature” is a “manner of operation” of the heater and contains no further apparatus structure features. MPEP 2114.II teaches-"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In applying the teachings of MPEP 2114.II, these claim limitations do not differentiate the claimed apparatus over the prior art, and consequentially Evens anticipates this claim.
Regarding claim 22, Evens teaches that their apparatus and method are applicable to airframes and either a patch or doubler (col. 1 lines 24-31), which gives creditability that the apparatus of Evens is capable of doing work on a wing skin and wing of an aircraft. The first and second structure are “materials worked upon” and not part of the apparatus. MPEP 2115 teaches- ‘Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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)’. In line with these teachings from MPEP 2115, the first and second structures and their positionings as well as their functions in the method of manufacture of the product is irrelevant and does not contribute to apparatus’s patentability in regard to the prior art. Consequentially, Evens anticipates this claim.
Response to Amendments/Arguments
2. Applicant argues that the newly added limitations to amended claims 1 and 16 establish the collapsible standoff as a structural element of the apparatus claims, specifically, the phrase “collapsible standoff within the vacuum bag”. The Examiner disagrees, and while some reasoning is in the rejections above, further reasons are given here. Applicant notes that the limitation of the “collapsible standoff [being] within the vacuum bag” is not a product feature, and therefore must be apparatus claim structure. It is the Examiner’s opinion that this is method claim structure as the structure of the “collapsible standoff [being] within the vacuum bag” is only true during method steps. This structure is not present in non-operating apparatus. This limitation would thus fall under a “manner of operating the device”, which under MPEP 2114.II does not differentiate current apparatus claims to a prior art apparatus. For this reason, the Examiner finds this argument unpersuasive and currently rejected.
3. Applicant argues that the Examiner’s statement that the collapsible standoff is not a structural element is erroneous as a standoff is similar to a screw, bolt, or rivet and is a very mechanical, structural feature and adds benefits to the final product. The Examiner disagrees, as while a standoff is a mechanical structure, in the context of Applicant’s claims, this structure is related to the product, not the apparatus. It does not add apparatus structure, but rather functional apparatus limitations, and even then, such functional limitations are entirely dependent upon the first and second structures, which are “materials worked upon” as noted in the Non-Final Rejection of 04/03/2025. Incorporation of limitations and advantages that depend upon “materials worked upon” inherently incorporates the limitations of the “materials worked upon”, which is erroneous. For these reasons this argument is unpersuasive.
Conclusion
4. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
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/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745