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 .
This is the first Office action responsive to application 18547245 filed 8/21/2023. Claims 1-11 are canceled by Applicant. Claims 12-22 are newly presented by Applicant.
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 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: “an element feed system via which joining elements can be transported from a sorting device to the mobile joining head by compressed air” (claim 17), “a control device for actuating the joining tool and controlling the element feed system” (claim 17).
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 Objections
Claims 12 & 19-22 are objected to because of the following informalities:
Regarding Claim 12:
The recitation “feed system, via which joining elements can be conveyed from” (ll. 1-2) is believed to be in error for - - feed system, the element feed system configured to convey joining elements from - -.
Regarding Claim 19:
The recitation “the first compressed-air line” (l. 3) is believed to be in error for - - a first compressed-air line - -.
Regarding Claim 20:
The recitation “a loading state” (l. 3) is believed to be in error for - - the loading state - -.
Regarding Claim 21:
The recitation “the second compressed-air line” (l. 4) is believed to be in error for - - a second compressed-air line - -.
Regarding Claim 22:
The recitation “joining elements are supplied separately” (l. 3) is believed to be in error for - - supplying joining elements separately - -.
The recitation “transported” (l. 4) is believed to be in error for - - supplied - -.
Appropriate correction is required.
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.
Claims 12, 17, 19-20, & 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidt DE 19756798 (copy provided by Applicant with IDS filed 8/21/2023, an English translation is attached hereto).
Regarding Independent Claim 12, Schmidt teaches a pre-separating device (Fig. 2) for installation in an element feed system, via which joining elements can be conveyed from a separating device to a joining-element holder on a joining head by compressed air (italicized limitations are directed to the intended use of the pre-separating device and are not positively recited), the pre-separating device comprising:
a channel (16) which has a feed opening (at upstream end) and an outlet opening (at downstream end) and through which the joining elements (1) can be conveyed;
a first channel-blocking element (18) having a first actuating device (18 is actuated and therefore has an associated actuating device; see English translation p. 2);
a second channel-blocking element (19) having a second actuating device (19 is actuated and therefore has an associated actuating device; see English translation p. 2);
wherein each of the first channel-blocking element and the second channel-blocking element is movable between a blocking position and a passage position (see double arrows for each of 18 and 19);
wherein the second channel-blocking element is disposed downstream of the first channel-blocking element in a conveying direction of the joining elements (19 downstream of 18 in conveying direction of 1);
a first compressed-air supply opening which leads into the channel upstream of the first channel-blocking element in the conveying direction (not shown, but feeds compressed air into 16); and
a second compressed-air supply opening (20) which leads into the channel between the first channel-blocking element and the second channel-blocking element in the conveying direction (portion of outlet of 20 is between 18 and 19).
Regarding Dependent Claim 17, Schmidt further teaches a joining device (100) (Figs. 1-2), comprising:
a multiaxis industrial robot (see English translation, p. 2, 1st full paragraph);
a mobile joining head (4) with a joining tool (5) which is disposed on the multiaxis industrial robot (English translation, p. 2, 1st full paragraph);
an element feed system (12/13/14/3) via which joining elements (1) can be transported from a sorting device (12) to the mobile joining head by compressed air; and
a control device (24) for actuating the joining tool and controlling the element feed system (to reload the head 4; see English translation, p. 3);
wherein the element feed system includes the pre-separating device according to claim 12 (14, see rejection of claim 12 above) which is disposed stationarily relative to the joining head (Fig. 1).
Regarding Dependent Claim 19, Schmidt further teaches the control device is configured to generate a first signal via which a joining element is moved from the sorting device towards the tool head by compressed air and wherein the first compressed-air line is loaded with 24compressed air (24 sends signal to actuate 18 and 19, creating a negative pressure to pull joining element 1 from 17 in compressed-air loaded line 13; English translation, p. 3).
Regarding Dependent Claim 20, Schmidt further teaches the first signal is also used to put the joining head into a loading state or the first signal indicates that the joining head is in a loading state (the signal discussed for claim 19 above indicates that the head 4 is in a loading state – i.e. being reloaded by providing a new joining element 1 from 17).
Regarding Dependent Claim 22, Schmidt further teaches operating the joining device according to claim 17 (see rejection of claim 17 above), comprising the steps of:
joining elements are supplied separately and positionally correctly to the joining head by compressed air (see Figs. 1-2, joining elements 1 supplied separately by action of 18 and 19, to head 4; English translation, p. 3), wherein each joining element is transported:
via a first compressed-air stream into a first waiting position in front of the first channel-blocking element (first compressed-air stream in line 13 into first waiting position in front of 18);
via a second compressed-air stream from the first waiting position into a second waiting position in front of the second channel-blocking element (second compressed-air stream from first waiting position discussed above into second waiting position in front of 19); and
via a third compressed-air stream from the second waiting position to the joining head (third compressed-air stream from second waiting position discussed above to head 3). Note that the three compressed-air streams are not required to be supplied by any particular compressed-air lines or openings and that two compressed-air streams can be distinguished in terms of time (i.e. within the same channel, a first stream at a first time causes a joining element 1 to move to the first waiting position, a second stream from the same source but at a second subsequent time forces the joining element 1 to move to the second waiting position, and a third stream at a third subsequent time forces the joining element to the head 4).
While Schmidt teaches an apparatus, it has been held that “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,” In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See MPEP 2212.02.
Schmidt’s apparatus would, in its normal and usual operation, necessarily perform the claimed method. Therefore, the instant claim is anticipated by Schmidt.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt, as applied to claim 12 above, and further in view of Rubey 4519867.
Regarding Dependent Claim 13, Schmidt teaches the invention as claimed and as discussed above for claim 12, but Schmidt fails to teach the first actuating device comprises a single-action pneumatic cylinder for moving the first channel-blocking element into the blocking position.
Rubey teaches a separating device (Fig. 4a) with two channel-blocking elements (53, 61) controlled pneumatically via single-action pneumatic cylinders (49, 51, pressurized air supplied via respective lines 57, 59 which also provide an outlet for air to leave cylinders 49, 51; Col. 6, ll. 59-60, Col. 7, ll. 2-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schmidt’s pre-separating device such that the first actuating device comprises a single-action pneumatic cylinder for moving the first channel-blocking element into the blocking position, as taught by Rubey, because a) the prior art contained a device which differed from the claimed device by the substitution of some components with other components (Schmidt’s channel-blocking element with associated actuator versus the claimed channel-blocking element with single-action pneumatic cylinder actuator, as taught by Rubey), b) the substituted components and their functions were known in the art (both Schmidt’s actuator or Rubey’s single-action pneumatic actuator were known for actuating blocking devices), and c) one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable (either Schmidt’s actuator or Rubey’s single-action pneumatic actuator could have been used to predictably provide actuation for the blocking element). It has been held that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR International Co. v. Teleflex Inc., et al., 82 USPQ2d 1385, 1395 (2007) (citing United States v. Adams, 383 US 39, 50-51 (1966)). See MPEP 2143 I(B).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt, as applied to claim 12 above, further in view of Rubey and further in view of CN 201002332 (original copy and English translation attached).
Regarding Dependent Claim 14, Schmidt teaches the invention as claimed and as discussed above for claim 12, but Schmidt fails to teach the second actuating device comprises a double-action pneumatic cylinder for moving the second channel- blocking element into both the blocking position and the passage position.
Rubey teaches a separating device (Fig. 4a) with two channel-blocking elements (53, 61) controlled pneumatically via single-action pneumatic cylinders (49, 51, pressurized air supplied via respective lines 57, 59 which also provide an outlet for air to leave cylinders 49, 51; Col. 6, ll. 59-60, Col. 7, ll. 2-10).
CN 201002332 teaches an actuator that is either a single-action pneumatic cylinder or a double-action pneumatic cylinders (see claim 5).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Schmidt’s pre-separating device such that the second actuating device comprises a double-action pneumatic cylinder for moving the second channel- blocking element into both the blocking position and the passage position, as taught by CN 201002332, because a) the prior art contained a device which differed from the claimed device by the substitution of some components with other components (Schmidt’s actuator for the second channel-blocking element versus a claimed pneumatic actuator, taught by Rubey, and specifically a double-action pneumatic cylinder, as taught by CN 201002332), b) the substituted components and their functions were known in the art (each of Schmidt’s actuator, Rubey’s single-action pneumatic cylinder, and CN 201002332’s double-action pneumatic cylinder were known for providing actuation force in apparatus), and c) one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable (any of Schmidt’s actuator, Rubey’s single-action pneumatic actuator, or CN 201002332’s double-action pneumatic actuator could have been predictably used to provide actuation to Schmidt’s second channel-blocking element). It has been held that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR International Co. v. Teleflex Inc., et al., 82 USPQ2d 1385, 1395 (2007) (citing United States v. Adams, 383 US 39, 50-51 (1966)). See MPEP 2143 I(B).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt, as applied to claim 17 above, and further in view of Kondo 5688414.
Regarding Dependent Claim 18, Schmidt teaches the invention as claimed and as discussed above for claim 17, and Schmidt further teaches that the joining device can be for bolts (English translation, p. 3, last paragraph).
Schmidt fails to teach the joining device is a bolt welding device.
Kondo teaches a bolt welding device (Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schmidt’s joining device such that the joining device is a bolt welding device, as taught by Kondo, in order to weld supplied bolts (Kondo; Col. 1, ll. 4-6).
Allowable Subject Matter
Claims 15 & 21 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Dependent Claim 15, the prior art fails to teach, in combination with the remaining limitations of the claim, the second actuating device is configured to move the second channel- blocking element into the passage position when the first compressed-air line is loaded with compressed air.
The closest prior art is Schmidt, as discussed for claim 12 above. Schmidt fails to expressly teach a first compressed-air line via which the first actuating device, the second actuating device, and the second compressed-air supply opening can be jointly loaded with compressed air; wherein the first actuating device is configured to move the first channel-blocking element into the blocking position. Rubey teaches a common compressed-air line (65) via which the first and second actuating devices (49, 51) can be actuated. While it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include such a common compressed-air line for the first and second actuating devices, by swapping Schmidt’s actuating devices for Rubey’s pneumatic actuating devices and providing for a common compressed-air line to each one, and while it would have been obvious, in view of Rubey, to further supply Schmidt’s second compressed-air supply opening via the common compressed-air line (i.e. supply compressed air from a common upstream source and “simply route high pressure air” via a valve to the portions of the apparatus which need it; Rubey, Col. 7, ll. 11-22), the second actuating device being configured to move the second channel-blocking element into the passage position when the first compressed-air line is loaded with compressed air is not fairly taught or suggested by the prior art and would only be arrived at by impermissible hindsight reconstruction of Applicant’s invention (in order for the pre-separating device to function properly, the blocking devices must move in a coordinated manner which requires a particular configuration of the actuators and blocking elements that the prior art cannot be reasonably combined to achieve without using Applicant’s own disclosure as guidance).
Regarding Dependent Claim 21, the prior art fails to teach, in combination with the remaining limitations of the claim, the control device is configured to generate a second signal via which the second compressed-air line is loaded with compressed air and the loading pin is extended.
The closest prior art is Schmidt, as discussed for claim 19 above. Mueller EP 1362660 (copy provided by Applicant with IDS filed 8/21/2023) teaches bolt welding machines (see English translation, p. 2, last paragraph) with a loading pin (English translation, p. 2, 4th paragraph). While it may have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schmidt’s joining device such that the joining head is a bolt welding head with a loading pin and to use the first signal to arrange a retraction of the loading pin (i.e. when the joining element is loaded in the head, using the signal to prepare the bolt welding head to receive the joining element), the prior art fails to teach or reasonably suggest the control device is configured to generate a second signal via which the second compressed air line is loaded with compressed air and the loading pin is extended.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT J WALTHOUR whose telephone number is (571)272-4999. The examiner can normally be reached Monday-Friday, 10 a.m.-6 p.m. Eastern.
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/SCOTT J WALTHOUR/Primary Examiner, Art Unit 3741