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 .
Response to Amendment
Applicant’s 5-26-2026 Amendment was received. Claims 1-5 and 7-13 were amended. Claims 14-20 were withdrawn. Claims 1-5 and 7-13 are pending and examined.
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 1-2, 7-8, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2005074441A.
In re Claim 1, JP2005074441A teaches a punching tool having an elongated shape (see JP2005074441A, Fig. 1) configured for punching out at least one beam element with both ends attached to an inside surface of an elongated through hole (the Examiner notes that the claim is an apparatus claim directed to the structure of the punch and is not a method claim – the structure of JP2005074441A is capable of punching out a beam element in a hole of an unclaimed workpiece), the punching tool comprising:
a holding end (see JP2005074441A, Fig 1. #4); and
a punching end (see JP2005074441A, Fig 1, end opposite of #4) wherein the punching end comprises:
a front surface configured to be inserted into the elongated through hole (see Fig. 7, #7; see also Figs. 2, 5, and 10 #7), and
at least one cutting edge spaced apart from the front surface along a longitudinal axis of the punching tool and extending substantially transverse to the longitudinal axis (see annotated Fig. 7 below; see also the same surfaces in Figs. 2, 5, and 10); and
a recess formed into the front surface along the longitudinal axis of the punching tool (see Figs. 7 and 10, #6), wherein the recess has a T-shape or an X-shape (see Fig. 7 which has a “T” shape or an “X” shape; see also Fig. 10, which has both “X” and “T” shapes) and wherein the recess is configured to receive and stabilize the beam element prior to contact of the at least one cutting edge with the beam element (the examiner notes that the workpiece is not affirmatively claimed and the claims are directed to the structure of the punch. The punch in JP2005074441A, either Fig. 7 or Fig. 10 or Figs. 2 and 5, can receive stabilize a workpiece that is inserted into the recess #6) .
In re Claim 2, JP2005074441A teaches wherein the at least one cutting edge is adjacent to a peripheral surface of the punching tool (see annotated Fig. 7 above.).
In re Claim 7, JP2005074441A teaches wherein preferably the at least one cutting edge forms part of the recess (see annotated Fig. 7, above).
In re Claim 9, JP2005074441A teaches wherein the T-shape or X-shape of the recess is seen in a direction from the punching end to the holding end (see JP2005074441A, Figs. 7, 5, 2).
In re Claim 8, JP2005074441A teaches wherein the recess tapers from the front surface to the at least one cutting edge (see JP2005074441A , Fig. 2, 5 teaching #6 tapering).
In re Claim 11, JP2005074441A teaches wherein a peripheral edge of the front surface is rounded and/or beveled (see JP2005074441A Figs. 7, #7 has a peripheral edge that is rounded)) and wherein a peripheral edge is substantially perpendicular to the longitudinal axis of the punching tool (see JP2005074441A Figs. #2,5,7 and 10, the peripheral surfaces/edge of the front surface of the tool are perpendicular to the longitudinal axis of the tool).
In re Claim 12, JP2005074441A teaches wherein the punching tool comprises two instances of the at least one cutting edge (see annotated Fig. 7, above).
In re Claim 13, JP2005074441A teaches wherein the two instances of the at least one cutting edge are arranged opposite to each other and are axially spaced apart from each other along the longitudinal axis (see annotated Fig. 7, above).
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.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over JP2005074441A in view of JP H0947828 A
In re Claim 3, JP2005074441A teaches wherein the at least one cutting edge is inclined relative to the longitudinal axis of the punching tool (see JP2005074441A, Figs. 2, 5, #6 is includes inclined surfaces that periphery of the tool); however, JP2005074441A does not teach wherein an inclination angle between the at least one cutting edge and the longitudinal axis lies in a range from 91 to 103 degrees.
However, JP H0947828 A teaches that it is known in the art of punches to provide the one cutting edge is inclined relative to the longitudinal axis of the punching tool (see Fig. 1, “α”) and wherein an inclination angle between the at least one cutting edge and the longitudinal axis lies in a range from 91 to 103 degrees (see JP H0947828 A, Par. 0006, teaching “the oblique descending angle α is 6 °, but 3 ° to 8 ° depending on the material and size of the punch 11” – the Examiner notes that equates to a range of 93-98 degrees and a single embodiment of 96 degrees).
In the same field of invention, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to provide at least one cutting edge of JP2005074441A inclined relative to the longitudinal axis between 91-103 degrees, as taught by JP H0947828 A). Doing so eliminates the occurrence of burrs on the workpiece (see JP H0947828 A, Para. 0003).
In re Claim 4, modified JP2005074441A, in re Claim 3, teaches wherein the longitudinal axis lies in a range from 93 to 100 degrees (see JP H0947828 A, Par. 0006, teaching “the oblique descending angle α is 6 °, but 3 ° to 8 ° depending on the material and size of the punch 11” – the Examiner notes that equates to a range of 93-98 degrees and a single embodiment of 96 degrees).
In re Claim 5, modified JP2005074441A, in re Claim 3, teaches wherein the longitudinal axis lies in a range from 940 to 970 (see JP H0947828 A, Par. 0006, teaching “the oblique descending angle α is 6 °, but 3 ° to 8 ° depending on the material and size of the punch 11” – the Examiner notes that equates to a range of 93-98 degrees and a single embodiment of 96 degrees).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over JP2005074441A in view of US 300624 to Mitchell.
In re Claim 10, JP2005074441A does not teach wherein the punching tool comprises a flex portion arranged between the punching end and the holding end and wherein a cross-sectional area in the flex portion of the punching tool is reduced compared to portions of the punching tool adjacent to the flex portion and wherein the cross-sectional area in the flex portion continuously decreases to a minimum.
However, Mitchell teaches that that it is known to provide a flex portion (see Mitchell, Figs. 1-4, “b”) arranged between the punching end and the holding end and wherein a cross-sectional area in the flex portion of the punching tool is reduced (see Mitchell, Fig. 2) compared to portions of the punching tool adjacent to the flex portion and wherein the cross-sectional area in the flex portion continuously decreases to a minimum (see Mitchell, Fig. 2).
In the same field of invention, punches, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to provide a bore and a channel in the punch of JP2005074441A. Doing so provides a hollow punch that captures and passes through the workpiece into the handle.
Response to Arguments
Applicant’s arguments with respect to claims 1-5, and 7-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN RILEY whose telephone number is (571)270-7786. The examiner can normally be reached Monday - Friday, 8:30 AM - 5:00 PM.
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/JONATHAN G RILEY/Primary Examiner, Art Unit 3724
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