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 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.
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.
Claim 3 is no longer rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
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.
Claims 7 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 7, the claim requires the method step of “alternatively using the straight-toothed clamping device or the helical-toothed clamping device.” However, claim 7 is dependent upon claim 4 which requires the use of a combination of a straight-toothed clamping device and a helical-toothed clamping device.
Given that claim 4 requires the use of both straight and helical clamping devices, it is unclear how claim 7 can purport to use just one or the other. The use of just one or the other while simultaneously using both has no support in the originally filed specification.
Moreover, if Applicant believes that claim 4 is broad enough to cover the use of just one of straight or helical clamping devices, then claim 4 is open for rejection under 35 USC 102 under Lutz, as Lutz teaches the method of using an electrode cap removal device using just straight clamping devices.
Similarly, claim 10 requires: “the clamping device is configured so that the straight-toothed clamping device and the helical-toothed clamping device can be used alternatively.” While the originally filed specification recites this phrase in paragraph [0031], it is unclear that this system is compatible with the system of claim 3 from which it depends, which requires both straight and helical clamping devices. In other words, straight OR helical is incompatible with straight AND helical.
However, if Applicant believes that claim 3 is broad enough to cover the use of just one of straight or helical clamping devices, then claim 3 is open for rejection under 35 USC 102 under Lutz, as Lutz teaches an electrode cap removal device using just straight clamping devices.
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.
Claims 3-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lutz (DE-10 2014 209 828) in view of Lee (KR-101692981-B1).
As to claim 3, Lutz teaches a system (workstation 10) for removing an electrode cap from an electrode shaft (Page 2 Paragraph 2 of the translation: “It is the object of the present invention to provide a removal tool for removing electrode caps from cap carriers of spot welding electrodes, with which electrode caps can be pulled off from these carrying cap carriers in a simple and reliable manner.”), the system comprising: at least one electrode cap removal device (puller 16) which is mounted so as to be rotatable about a tool axis of rotation (as shown in Fig 1, the puller 16 is mounted in the workstation 10. The puller is capable of rotation. See Page 4 lines 23-25: “The removal tool 16 includes a generally with 24 designated and in the workstation 10 for rotation about the axis of rotation A in both directions of rotation R1 and R2”), wherein, the at least one electrode cap removal device comprises a clamping device (jaw 42, see Fig 3) for fixing the electrode cap to be removed (the jaws 42 engage the caps 20, 22).
Lutz does not teach1: the clamping device comprises a combination of a straight-toothed clamping device and a helical-toothed clamping device.
Instead, Lutz only teaches the use of straight-toothed formations 72, 74 as illustrated in Fig 3.
However, in the field of electrode cap removal tools, it was known at the time the invention was effectively filed to provide for the mixture of both straight-toothed and helical-toothed formations. See Lee which teaches “an electrode tip replacing apparatus” (Abstract) which uses clamping devices (clampers 25) which are useful for capturing an electrode tip between the clampers 25 and the body 23. See Fig 3.
Lee teaches the body 23 has flat teeth 31 and the clamp body 25 has a helical tooth 33 (Page 7 Paragraphs 2-3). Lee teaches the clampers 25 rotate to clamp onto the electrode tip, and “in order to provide a clamping force to the electrode tip 7… the respective clampers 25 are inclined in opposite directions to each other in correspondence to the flat teeth 31 [and] a different helical tooth 33 is formed.” Thus the combination of helical and straight teeth improve the grip of the rotating clampers onto the electrode tip.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided the clamping devices of Lutz with a combination of a straight-toothed clamping device and a helical-toothed clamping device as taught by Lee. Such a person would have been motivated to do so, with a reasonable expectation of success in order to achieve the benefits of electrode tip removal as described by Lee at Page 7 Paragraphs 2-3.
As to claim 4, Lutz teaches a method of using an electrode cap removal device (Lutz teaches using the puller 1 to remove caps 20, 22), wherein, the electrode cap removal device (puller 16) is mounted so as to be rotatable about a tool axis of rotation (as shown in Fig 1, the puller 16 is mounted in the workstation 10. The puller is capable of rotation. See Page 4 lines 23-25: “The removal tool 16 includes a generally with 24 designated and in the workstation 10 for rotation about the axis of rotation A in both directions of rotation R1 and R2”), the electrode cap removal device (puller 16) comprises a clamping device (jaw 42, see Fig 3) for fixing an electrode cap to be removed (the jaws fix caps 20, 22).
Lutz does not teach: the clamping device comprises the combination of the straight-toothed clamping device and the helical-toothed clamping device.
Instead, Lutz only teaches the use of straight-toothed formations 72, 74 as illustrated in Fig 3.
However, in the field of electrode cap removal tools, it was known at the time the invention was effectively filed to provide for the mixture of both straight-toothed and helical-toothed formations. See Lee which teaches “an electrode tip replacing apparatus” (Abstract) which uses clamping devices (clampers 25) which are useful for capturing an electrode tip between the clampers 25 and the body 23. See Fig 3.
Lee teaches the body 23 has flat teeth 31 and the clamp body 25 has a helical tooth 33 (Page 7 Paragraphs 2-3). Lee teaches the clampers 25 rotate to clamp onto the electrode tip, and “in order to provide a clamping force to the electrode tip 7… the respective clampers 25 are inclined in opposite directions to each other in correspondence to the flat teeth 31 [and] a different helical tooth 33 is formed.” Thus the combination of helical and straight teeth improve the grip of the rotating clampers onto the electrode tip.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided the clamping devices of Lutz with a combination of a straight-toothed clamping device and a helical-toothed clamping device as taught by Lee. Such a person would have been motivated to do so, with a reasonable expectation of success in order to achieve the benefits of electrode tip removal as described by Lee at Page 7 Paragraphs 2-3.
Lutz in view of Lee teaches: the method comprising: providing the combination of the straight-toothed clamping device and the helical- toothed clamping device as the clamping device for the electrode cap removal device (the puller 16 of Lutz is obviated to include both straight and helical teeth); and using the combination of the straight-toothed clamping device and the helical-toothed clamping device as the clamping device for the electrode cap removal device to remove the electrode cap from an electrode shaft (both Lutz and Lee use their puller tools to remove electrode caps from electrode shafts. The modified puller of Lutz would work in the same way. See Lutz Page 4 lines 17-18: “the electrode caps with respect to these carrying cap carrier, also commonly referred to as quills, rotated and then can be deducted from these.”).
As to claim 5, Lutz in view of Lee teaches the method as recited in claim 4, wherein the combination of the straight-toothed clamping device and the helical-toothed clamping device of the clamping device (as described above, Lutz in view of Lee suggests the system of Lutz using a combination of helical and straight clamping devices. The most straight-forward construction is that half of Lutz’s jaws (42, 48) are have straight formations (72) while half have helical formations) is provided as two straight-toothed clamping devices and one helical-toothed clamping device (The claim is a “comprising” claim. As there are three jaws having straight formations and three jaws having helical formations, the claim to “two straight” and “one helical” is met.).
As to claim 8, Lutz in view of Lee teaches the system as recited in claim 3, wherein the combination of the straight-toothed clamping device and the helical-toothed clamping device of the clamping device (as described above, Lutz in view of Lee suggests the system of Lutz using a combination of helical and straight clamping devices. The most straight-forward construction is that half of Lutz’s jaws (42, 48) are have straight formations (72) while half have helical formations) is provided as two straight-toothed clamping devices and one helical-toothed clamping device (The claim is a “comprising” claim. As there are three jaws having straight formations and three jaws having helical formations, the claim to “two straight” and “one helical” is met.).
Allowable Subject Matter
Claims 6 and 9 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.
Claims 6 and 9 both require a specific ratio of straight-toothed clamping devices with respect to helical-toothed clamping devices which is not found in the prior art. Lutz teaches a device and method of using said device in which there are only straight-toothed clamping devices. Lee teaches a ratio of one-to-one straight-to-helical clamping devices. There is not teaching or suggestion that a person would have modified Lutz in view of Lee to include twice as many straight-toothed clamping devices as helical-toothed clamping devices.
Response to Arguments
Applicant's arguments filed 14 January 2026 have been fully considered but they are not persuasive.
On page 8 Applicant argues a POSITA would not have combined Lutz and Lee to render either of independent claims 3 and 4 of the present invention obvious.
On page 9 Applicant argues Lee “has an entirely different functionality than does Lutz” Applicant further argues “it would be wholly improper to simply incorporate the helical teeth 33 of Lee into the Lutz arrangement absent some valid motivation therefor.”
Examiner disagrees. The issue of “entirely different functionality” is covered by whether Lee is analogous art to the present invention. Since Lee is in the same field as the invention (e.g. devices for pulling electrode caps), Lee is indeed analogous art. The question is not whether Lee has an entirely different functionality from Lutz, the question is what a POSITA would understand from Lee’s teachings and what those teachings might suggest to such a POSITA in view of Lutz.
Examiner disagrees with Applicant’s argument that there is no “valid motivation” to combine Lee’s use of both a straight toothed clamping device and a helical toothed clamping device in an electrode cap removal system into the system of Lutz. As described in the rejection, the motivation is derived from Lee page 7 paragraphs 2-3 reproduced here:
The clamper 25 is provided as a pair, and is installed on both sides of the clamp body 23 so as to be rotatable. The clamper 25 clamps the electrode tip 7 together with the clamp body 23 and clamps the electrode tip 7 from the fixed electrode rod 3 and the movable electrode rod 5 as the rotation of the spot welding gun 1. [ A clamping force by the elastic force of the torsion spring 27 is provided to the electrode tip 7.
[For this purpose, in order to provide a clamping force to the electrode tip 7 due to the elastic force of the torsion spring 27, the respective clampers 25 are inclined in opposite directions to each other in correspondence to the flat teeth 31 of the clamp body 23 A different helical tooth 33 is formed.
Lee teaches that “to provide a clamping force to the electrode tip” one clamper has a straight tooth profile and the other clamper has a “different helical tooth” profile.
See also Lee Page 13 Paragraph 5 which teaches, “Since the helical teeth 33 are formed on the clamp body 23 and the helical teeth 33 are formed on the clamper 25 in an oblique direction opposite to each other, the electrode tip 7 is fixed [during rotation].”
Thus Lee teaches that a true fixing of the rod during rotation requires two different tooth geometries. This would have been understood by an artisan having ordinary skill as an improvement over previous iterations of clamps attempting to provide for a fixing of a rotating electrode but using the same geometry on all clamping bodies.
On page 9, Applicant argues “a POSITA would not again attempt to solve a problem which has already been solved. The Office has therefore failed to identify any valid motivation that would have led a POSITA to selectively pick Lee’s helical teeth 33 while ignoring Lee’s wrench-like configuration.”
Examiner disagrees with the statement that a POSITA would not attempt to solve a problem which has already been solved. If it were true then the standard of obviousness could not exist. Instead, persons of ordinary skill routinely look to make improvements on existing designs. In the specific case of Lutz in view of Lee, Lutz may already exist to solve a problem, but that doesn’t mean that no POSITA would attempt to modify or improve it.
Lee, by using clamps with different tooth profiles, improves upon prior art electrode grippers using clamps with a single tooth profile. The motivation of an artisan is held within the desire to improve a design to achieve, in this case, a stronger fixing regardless of direction of rotation.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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, Thomas Hong can be reached at (571) 272-0993. 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.
/JACOB J CIGNA/Primary Examiner, Art Unit 3726 1 May 2026
1 This was also described by the International Searching Authority.
Prosecution Insights