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 .
Claim Objections
Claims 5-6 and 8-9 are objected to because of the following informalities: the phrases “forming the grommet conduit” and forming “the proximal grommet end” is not found in the specification for what “forming” is taking place since or limited to and since the specification does not describe the conduit and proximal end being formed and the drawings do not show the conduit or proximal end in any “forming” process/step examiner is interpreting installing the grommet will form the proximal end, conduit, and distal end at least to some degree. Also, the drawings only show the distal end being formed (fig. 4). Appropriate correction is required.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the term “cylindrical prism” recited in claim 14 and “a number of embossers” recited in claim 18 is not found in the specification. Also, the phrases “forming the grommet conduit” and forming “the proximal grommet end” in claims 5-6 and 8-9 are not found in the specification. The specification does recite “The remaining tubular shank of the grommet collapses inward 108, pressing against the outer diameter of the mandrel” [0033] in which is not clear if this is the “forming the conduit” and “forming the proximal end” feature.
Also, the specification recites – “Punch 60 includes a proximal end 62. Proximal end 62 includes flare geometry 64. Proximal and 62 includes bore 66. Punch 60 includes punch conduit 68. Punch conduit 68 includes threaded portion 70. Punch 60 includes distal end 72” [0028]. However, these features are only shown in a block diagram and the illustrations of the punch are not labeled with these reference numbers.
The disclosure is objected to because of the following informalities: the phrase “Proximal and 62 includes bore 66” ([0028], instant specification) which presumably should be recited - - Proximal end 62 includes bore 66.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “number of embossers” (claim 18) and “forming the conduit” and “forming the proximal end” of the grommet must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Having the reference numbers included in the illustrations would benefit clarity of the drawings/illustrations and specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 60, 62, 64, 66, 68, 70, and 72. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. These reference numbers (60, 62, 64, 66, 68, 70, and 72) are only shown in the block diagram and not shown in the illustrations.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for having an anvil, does not reasonably provide enablement for the distal anvil end comprises a number of embossers. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. Examiner cannot find support for “the distal anvil end comprises a number of embossers”. What are the embossers?
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 1-10 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.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being unclear with structural cooperative relationships of elements. Claim 1 recites “the punch conduit comprises a threaded proximal punch conduit end, and a distal punch conduit end, wherein the proximal punch end comprises a flaring geometry” and the specification recites that the proximal end 62 includes bore 66 without threads and the flaring geometry. The figures show the proximal end of the punch having a flaring geometry without threads. Do both the proximal end and the distal end have threads? Presumably the distal end has the threads and the proximal end does not have threads. It is not clear with the mis-match of the specification and drawings if both ends have the threads or just one.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11-14 and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mead et al. (US 9061379 B1).
Regarding claims 11, Mead et al. discloses a grommet installation tool (fig. 2), comprising: a hydraulic puller (52); an anvil (32/33) removably coupled to the hydraulic puller (end at chuck 54 capable of being removed), the anvil comprising a proximal anvil end (end at chuck 54), a distal anvil end (36), and an anvil conduit (34) that extends from the proximal anvil end to the distal anvil end, wherein the proximal anvil end is removably connected to the hydraulic puller (capable of being removed, col. 3, line 8 - col. 4, line 8, figs. 1-5);
a mandrel (56) removably coupled to the anvil and the hydraulic puller, wherein the mandrel comprises a proximal mandrel end (end at chuck 54), and a threaded distal mandrel end (58), wherein the mandrel passes through the anvil conduit (34) and is removably connected to the hydraulic puller (col. 3, line 8 - col. 4, line 8, figs. 1-5).
Regarding claim 20, Mead et al. discloses a grommet installation tool (fig. 2), comprising: a hydraulic puller (52); an anvil (32/33) removably coupled to the hydraulic puller (end at chuck 54 capable of being removed), the anvil comprising a proximal anvil end (end at chuck 54), a distal anvil end (36), and an anvil conduit (34) that extends from the proximal anvil end to the distal anvil end, wherein the proximal anvil end is removably connected to the hydraulic puller (capable of being removed, col. 3, line 8 - col. 4, line 8, figs. 1-5);
a mandrel (56) removably coupled to the anvil and the hydraulic puller, wherein the mandrel comprises a proximal mandrel end (end at chuck 54), and a threaded distal mandrel end (58), wherein the mandrel passes through the anvil conduit (34) and is removably connected to the hydraulic puller (col. 3, line 8 - col. 4, line 8, figs. 1-5); and
a punch (die 40) removably coupled to the mandrel (threaded distal mandrel end 58), wherein the punch comprises a proximal punch end (45B), a distal punch end (46), and a punch conduit (48) that extends from the proximal punch end to the distal punch end, wherein the punch conduit comprises a threaded proximal punch conduit end (mating threads for mandrel 56, fig. 5), and a distal punch conduit end (tapered tubular portion 42), and wherein the proximal punch end comprises a flaring geometry (tapper 45A/45B, and conical surface 44, figs. 1-5);
wherein the threaded proximal punch conduit end is reversibly threaded onto the threaded distal mandrel end of the mandrel (col. 3, line 8 - col. 4, line 8, figs. 1-5).
Regarding claims 12-13, Mead et al. discloses a punch (die 40) removably coupled to the mandrel (threaded distal mandrel end 58), wherein the punch comprises a proximal punch end (45B), a distal punch end (46), and a punch conduit (48) that extends from the proximal punch end to the distal punch end, wherein the punch conduit end comprising a punch bore (tubular portion 40) and a distal punch conduit end comprising a threaded portion (mating threads for mandrel 56, fig. 5), and wherein the proximal punch end comprises a flaring geometry (tapper 45A/45B, and conical surface 44, figs. 1-5) adapted to form a grommet (fig. 3), wherein the threaded proximal punch conduit end is reversibly threaded onto the threaded distal mandrel end of the mandrel (col. 3, line 8 - col. 4, line 8, figs. 1-5).
Regarding claim 14, Mead et al. discloses the mandrel (56) comprises an un-tapered primary outer diameter between the proximal mandrel end and the threaded distal mandrel end, the un-tapered primary outer diameter defining a cylindrical prism that supports an inner diameter of a grommet (24) from collapse during forming (mandrel will support the inner diameter of grommet 24 from “collapse” figs. 2-3).
Regarding claims 17-19, Mead et al. discloses the proximal mandrel end (end at chuck 54) comprises a threaded portion (58) coupled to the hydraulic puller wherein the distal anvil end comprises a number of embossers (individual threads for 58) adapted to form a grommet a grommet (24) coupled to the mandrel (56), wherein the grommet comprises a tubular shank (28, col. 3, line 8 - col. 4, line 8, figs. 1-4. Also, see 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ) concerns for “embossers”).
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.
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(s) 1-10 is/are rejected under 35 U.S.C. 103 as obvious over Mead et al. (US 9061379 B1) in view of JOHNSON (US 20160158819 A1) and further in view of Chu et al. (US 20100295696 A1).
Regarding claims 1, Mead et al. discloses a method of installing a grommet (24, col. 1, lines 10-52), comprising: providing a hydraulic puller (52, col. 1, lines 35-45, col. 3, lines 60-63); coupling the hydraulic puller to a hydraulic power unit (52) set at a predetermined hydraulic pressure, (a pressure will be required and set to operate tool 52, col. 1, lines 35-45, col. 3, lines 60-63);
providing an anvil (32/33) removably coupled to the hydraulic puller, the anvil comprising a proximal anvil end (end at chuck 54), a distal anvil end (36), and an anvil conduit (34) that extends from the proximal anvil end to the distal anvil end, wherein the proximal anvil end is removably connected to the hydraulic puller (capable of being removed, col. 3, line 8 - col. 4, line 8, figs. 1-5);
providing a mandrel (56) removably coupled to the anvil and the hydraulic puller, wherein the mandrel comprises a proximal mandrel end (end at chuck 54), and a threaded distal mandrel end (58), wherein the mandrel passes through the anvil conduit (34) and is removably connected to the hydraulic puller (col. 3, line 8 - col. 4, line 8, figs. 1-5);
providing a grommet (24), wherein the grommet comprises a proximal grommet end (26), a distal grommet end (31), and a tubular shank (28) defining a grommet conduit that extends from the proximal grommet end to the distal grommet end, wherein the proximal grommet end comprises a grommet flange head (26, fig. 1); inserting the distal mandrel end (58) through the grommet conduit until the distal anvil end (36) contacts the grommet flange head (26, figs. 2-3); inserting the distal grommet end (31) of the grommet through a hole (16) in a web (10);
threading reversibly a punch (die 40) onto the threaded distal mandrel end (58), wherein the punch comprises a proximal punch end (45B), a distal punch end (46), and a punch conduit (48) that extends from the proximal punch end to the distal punch end, wherein the punch conduit comprises a threaded proximal punch conduit end (mating threads for mandrel 56, fig. 5), and a distal punch conduit end (tapered tubular portion 42), and wherein the proximal punch end comprises a flaring geometry (tapper 45A/45B, and conical surface 44, figs. 1-5);
activating the hydraulic puller, wherein the mandrel and punch are drawn toward the hydraulic puller while the anvil and grommet remain stationary against the web (fig. 2); contacting the distal grommet end with the flaring geometry of the proximal punch end (figs. 2-3 show grommet being formed, col. 3, line 8 - col. 4, line 8); and forming the grommet (fig. 3 shows grommet formed);
Mead et al. fails to teach coupling the hydraulic puller to a hydraulic power unit (4) set at a predetermined hydraulic pressure.
JOHNSON teaches a hydraulic tool (110, [0005, 0017-0025], figs. 1-6) having a hydraulic powered shaft (linearly reciprocating shaft 320) coupled to a hydraulic power unit (hydraulic lines 160, 170, [0017, 0025-0027]) set at a predetermined hydraulic pressure (pressure regulator 190/620 and/or step 730, [0008, 0017, 0021, 0024-0027] figs. 1-7) and method of using the hydraulic tool with setting the pressure ([0026-0027], fig. 7).
JOHNSON states: “operator sets the tool pressure (730) using the regulator located at the compressor, inline in the supply hose to the tool, or on the tool itself” [0026].
Chu et al. teaches having pneudraulic/hydraulic fastener pulling tool (10) coupled to a hydraulic power unit (30) set at a predetermined hydraulic pressure (maximum over pressure- via input means 214/CPU 23 pressure and pulling force calculation module, over pressure determination module with pressure sensor 12, [0030-0045], claims 1-4, and see “entering predetermined highest working pressure limit for judging over pressure” claim 1).
Given the teachings of Mead et al. to have a hydraulic puller to install a grommet, it 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 to modify the hydraulic power unit with the step of coupling the hydraulic puller to a hydraulic power unit set at a predetermined hydraulic pressure for more precise operation of the tool and more precise action on a workpiece (avoid overshoot/damage to the workpiece) and/or for having different pressure modes for different types of tool driving purposes as taught by JOHNSON and Chu et al. and since it has been held - adjustability, where needed, is not a patentable advance, and if an art-recognized need for adjustment the prior art would have been obvious. In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954).
Regarding claims 4-9, Mead et al. discloses forming the grommet comprises forming the distal grommet end (flaring the second end 31, see 31A, fig. 3), the grommet conduit (29/28 – die tapered tubular portion 42 inserts into the internal bore 29 of the second end 31 of the grommet 24) and forming the proximal grommet end (proximal in pressed into countersunk 18, col. 3, line 8 - col. 4, line 8, figs. 1-4 and Mead et al. discloses manually forming the grommet with a wrench, fig. 6 – note the specification/drawings do not limit forming the proximal grommet end and conduit to any particular step or feature).
Regarding claims 2-3 and 10, Mead et al. discloses inserting the distal grommet end of the grommet through a hole (16 with counterbore 18, tapered countersink 20) in the web (10) comprises inserting the distal grommet end of the grommet through the hole (16) in the panel (10).
Mead et al. fails to explicitly disclose untreading the punch from the threaded distal mandrel end, reactivating the hydraulic puller, wherein the mandrel is drawn out of the grommet conduit and the hole in the panel is in an aircraft skin panel.
However, after the grommet is formed (fig. 3) the die/punch would inherently be removed and Mead et al. also teaches manually forming the grommet with a wrench, fig. 6 in which the wrench also would be inherently removed after the grommet is installed, and the used of the device on an aircraft skin panel is a type of panel in which Mead et al. teaches since Mead et al. teaches any panel. The step of untreading the punch from the threaded distal mandrel end, reactivating the hydraulic puller, wherein the mandrel is drawn out of the grommet conduit and the hole in the panel is in an aircraft skin panel is/are an obvious step(s) necessary for using the apparatus and since it has been held - If a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will perform the claimed process. Thus, the method, as claimed, would necessarily result from the normal operation of the apparatus. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) and See MPEP 2112.02. Further, It has been held that to be entitled to weight in method claims, the recited structure limitations therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure, Ex parte Pfeiffer, 1962 C.D. 408 (1961).
Allowable Subject Matter
Claims 15-16 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Reasons for Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach or render obvious a surgical stapling device comprising all the structural and functional limitations and further comprising, amongst other limitations/features the mandrel comprises a secondary outer diameter between the un-tapered primary outer diameter and the threaded distal mandrel end, the secondary outer diameter aligning the punch bore relative to the mandrel. Though Mead et al. (US 9061379 B1) teaches having a hydraulic puller with an anvil, mandrel, punch to install a grommet, it would not be obvious to modify the mandrel to comprise a secondary outer diameter between the un-tapered primary outer diameter and the threaded distal mandrel end, the secondary outer diameter aligning the punch bore relative to the mandrel one of ordinary skill would recognize that modify the mandrel would require modifying the grommet and the anvil also. Having the efficiency and alignment feature of the added secondary outer diameter between the un-tapered primary outer diameter and the threaded distal mandrel end with the secondary outer diameter aligning the punch bore relative to the mandrel provides an effective correct alignment of the punch/die to have the grommet flared the ensured to align the correct amount when installing the grommet on a panel/work area in a more secure connection.
While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Additional prior art considered pertinent: Chouinard (US 4644656 A) - hydraulic punch (1) coupled to a hydraulic power unit (auxiliary hydraulic step-up unit, electrically-driven hydraulic pump, electronic control) set at a predetermined hydraulic pressure (col. 3, lines 18 – 40, col. 6, lines 31-49, figs. 1-8) and see form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SHELLEY SELF can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT F LONG/Primary Examiner, Art Unit 3731