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
The election/restriction mailed December 19, 2025 has been withdrawn given the amendments to claims 15-20 in the response filed January 22, 2026. Claims 1-20 are examined for patentability.
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.
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:
“jaw rotation mechanism configured to rotate the plurality of jaws” in claim 15 [corresponding structure is engaging projections].
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
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 4, 7-9, 11 and 13-20 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.
With regards to claim 4, the claim states “wherein the predetermined period of time is between 0.1 seconds and 0.5 seconds”, this renders the claim indefinite since claim 4 depends from claim 3 which sets forth two options, after a predetermined time or having started the braking operation, for when the controller rotates the motor in reverse, therefore how the predetermined period of time being between 0.1 and 0.5 seconds further defined the claim if the second option is selected. It is suggested to clarify in claim 4 that the first option is selected prior to further defining the period of time.
With regards to claim 7, the claim states “the controller determined that the screw shaft has reached the front end portion based on a signal from the first motor sensor”, this renders the claim indefinite since it is unclear if this is in addition to the controller determining the screw shaft has reached the front end portion based on a signal from the detector, as set forth in claim 1, or if this is in place of the using the signal from the detector. Clarification and/or correction is required.
With regards to claim 11, the claim states “further comprising a number of balls placed in an engagement portion between the screw shaft and the female screw”, this renders the claim indefinite since it is unclear the structural element that engagement portion is associated with, i.e. is the portion a part of the screw shaft or the female screw or a part of a different structural element. Clarification and/or correction is required.
With regards to claims 13 and 14, the claims appear to be further define the fluid pipe, however this renders the claims indefinite since it is further defining an element not positively recited within the claims. Specifically, the fluid pipe is set forth within an intended use and is not a structural requirement of the expansion tool.
With regards to claim 15, there appears to be insufficient antecedent basis for the limitation “the motor shaft” found in line 16.
The phrase "trigger-type" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "-type"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
The claim states “the motor includes a stator arranged radially outside a motor shaft” it is unclear if the limitation is intending to set forth a motor shaft in addition to the one previously set forth in the claim or if the limitation is intending to refer to the previously recited motor shaft. Clarification and/or correction is required. For examination purposes the limitation is being interpreted as referring to the same motor shaft, i.e. there is a single motor shaft within the tool.
With regards to claim 18, the phrase "trigger-type" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "-type"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
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.
Claim(s) 1-3, 5, 7-8, 10 and 13-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wekwert et al (US 11,633,775).
In reference to claim 1, Wekwert et al discloses a tube expansion tool (10) for expanding an end portion of a fluid pipe, the tool comprising
a female screw (84) configured to the rotated by a motor [see paragraph 0068],
a screw shaft (80) configured to engage the female screw to move the screw shaft in a front-rear direction [see paragraph 0068],
a plurality of jaws (118) configured to expand in a radial direction [see paragraph 0071; figure 5],
a wedge (50) positioned at a front end of the screw shaft (80) to be inserted between the plurality of jaws (118), the wedge being configured for expanding the end portion of the fluid pipe via the plurality of jaws [see paragraph 70],
a detector configured to detect that the screw shaft has reached a front end position [see paragraph 0095], and
a controller configured to perform a braking operation of the motor upon the controller determining, based on a signal from the detector, that the screw shaft has reached the front end position, and to rotate the motor in a reverse direction to move the screw shaft rearward upon the controller detecting that the screw shaft has stopped [see paragraphs 90-91 & 96].
In reference to claim 2, after performing the braking operation, the controller is configured to rotate the motor in reverse direction upon detecting a stopping or rearward movement of the screw shaft [see paragraph 0091].
In reference to claim 3, after a predetermined period of time has passed upon the screw shaft having reached the front end position, the controller is configured to rotate the motor in the reverse direction upon detecting the stopping or rearward movement of the screw shaft [see paragraph 0104].
In reference to claim 5, Wekwert et al further discloses the motor includes a stator and a rotor configured to rotate around the stator [see paragraph 0063; motor is a DC electric motor], and the braking operation is such that the controller stops power supply to the motor and thereby suppresses rotor rotation by an electromotive force caused by an inertial force of the rotor.
In reference to claim 7, Wekwert et al further discloses a first motor sensor configured to detect motor rotation, wherein the controller determines that the screw shaft has reached the front end position based on a signal from the first motor sensor [see paragraph 0096].
In reference to claim 8, Wekwert et al further discloses a second motor sensor configured to detect the motor rotation, wherein the controller determines the stopping or rearward movement of the screw shaft based on a signal from the second motor sensor [see paragraphs 0095-0096].
In reference to claim 10, Wekwert et al further discloses a transmission mechanism (76) located between the motor and the screw shaft, the transmission mechanism including a gear [see paragraph 0078] that transmits an output of the motor [see figure 4], and a sensor configured to detect movement of at least one of the motor, the transmission mechanism and the screw shaft [see paragraph 0096].
In reference to claim 13, Wekwert et al further discloses the fluid pipe is a synthetic resin-made fluid pipe [see paragraph 0074].
In reference to claim 14, Wekwert et al further discloses the fluid pipe is a copper-made fluid pipe.
In reference to claim 15, Wekwert et al further discloses a tool main body housed in a main body housing and including
a planetary gear reduction mechanism (76) configured to reduce an output speed of a motor shaft [see paragraph 0080], a feed screw mechanism having the screw shaft and the female screw, and
a ring-shaped cap attached to a front portion of the tool main body and configured so that the wedge is positioned radially within,
a jaw rotation mechanism configured to rotate the plurality of jaws (118) in a circumferential direction of the wedge [see paragraph 0075],
a grip portion (14) positioned at a lower portion of the main body housing, extending downward, and including a trigger (26) switch lever at a front surface of the grip portion, and
a box-shaped housing portion located at a lower end of the grip portion and configured to extend in the front rear direction and in a left right direction with respect to the grip portion, wherein:
the tool main body further comprises the female screw (84), the screw shaft (80), which is formed in a cylindrical shape and located in a middle of the tool main body, the wedge (50), which is formed in a conical shape, and the detector
the motor includes a stator arranged radially outside the motor shaft and a rotor attached to the motor shaft on an inner circumferential side of the stator,
the plurality of jaws (118) are arranged in a circumferential direction of the wedge, and
the box-shaped housing portion includes the controller.
In reference to claim 16, Wekwert et al further discloses a battery (46) removably attached to a battery attachment portion (48), wherein the battery attachment portion is positioned at a lower surface of the box-shaped housing portion [see figure 1].
In reference to claim 17, the conical wedge (50) is configured to be inserted between the plurality of jaws (118) for expanding the end portion of the fluid pipe via the plurality of jaws, as seen in figure 1.
In reference to claim 18, the plurality of jaws radially expands by pulling the trigger switch lever .
In reference to claim 19, each of the plurality of jaws further includes a plurality of engaging recesses, as seen in figure 5.
In reference to claim 20, wherein the jaw rotation mechanism further includes a plurality of engaging projections configured to engage the plurality of engaging recesses for transmitting rotation power to the plurality of jaws [see paragraph 0075].
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) 4, 6, 9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wekwert et al.
In reference to claim 4, Wekwert et al further discloses reversing the motor after a predetermined period of time but fails to disclose the predetermined period of time being between 0.1 seconds and 0.5 seconds.
However, it would have been obvious to one having ordinary skill to determine the predetermined time to be between 0.1 and 0.5 seconds, since it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation [In re Aller, 105 USPQ 233].
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the tool of Wekwert et al such that the predetermined time is between 0.1 seconds and 0.5 seconds, since discovering the optimum or workable ranges by routine experimentation is an established obvious variant by one skilled in the art.
In reference to claims 6 and 9, Wekwert et al discloses the tool having a detector and sensors but fails to disclose them to be a magnet and hall element.
However, it would have been obvious to one having ordinary skill in the art to use a magnet and hall element for the positional detection/sensing, since it has been held to be within the general skill of a worker in the art to select a known element on the basis its suitability for the intended use as a matter of mechanical efficiency.
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the tool of Wekwert et al such that the detector and sensors are a magnet and hall element based on their suitability to determine positions within the tool.
In reference to claim 12, Wekwert et al discloses the tool having a sensor but fails to disclose the sensor being a pressure sensor.
However, it would have been obvious to one having ordinary skill in the art to use a pressure sensor for sensing movement, since it has been held to be within the general skill of a worker in the art to select a known element on the basis its suitability for the intended use as a matter of mechanical efficiency.
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the sensor to be a pressure sensor based on its suitability to sense the movement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725