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 Rejections - 35 USC § 112(b)
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 and 8, and those depending therefrom, 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.
Regarding claim 4, the claimed function “wherein the deburr head is passable through an abrupt right angle turn from one 2-inch diameter pipe segment to another 2-inch diameter pipe segment” is indefinite.
Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function.
A claim term is functional when it recites a feature “by what it does rather than by what it is” (e.g., as evidenced by its specific structure or specific ingredients). In reSwinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004).
Notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008).
The claimed “wherein the deburr head is passable through an abrupt right angle turn from one 2-inch diameter pipe segment to another 2-inch diameter pipe segment” is indefinite. A functional limitation describes structure and this is a functional limitation tied to the “deburr [remova] head.” Passing it from one section to the next, even at 90 degrees, does not inherently require additional structure, flexibility, etc. Therefore, applying an inherent structure, like flexibility, to the “deburr head” would be improper. However, it appears as though the functional limitation is meant to modify the structure of the deburr head so the claim is indefinite as to what the extent of the modification and/or structural definition would be.
Regarding claim 8, the claimed “wherein the flexible sheath is operatively coupled to the expandable burr removal head such that the flexible sheath adjusts the expandable burr removal head from the collapsed configuration to the expanded configuration as the flexible sheath moves from the retracted position to the extended position” is indefinite.
A function is defined as the action for which a thing is specially fitted (i.e. contains a structure for performing the action) or used for (i.e. intended use). It is understood that “wherein the flexible sheath is operatively coupled to the expandable burr removal head” requires the flexible sheath to be operatively coupled to the expandable burr removal head. However, it is unclear what structure would be required for performing the action “such that the flexible sheath adjusts the expandable burr removal head from the collapsed configuration to the expanded configuration as the flexible sheath moves from the retracted position to the extended position” as claimed.
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.
Claim(s) 1 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clark (US-2,778,168).
Regarding claim 1, Clark (US-2,778,168) discloses a deburr tool comprising:
a flexible drive shaft (flexible shaft 11) having an axis of rotation (axis of tool shaft 14) and a proximal end portion and a distal end portion spaced apart along the axis of rotation (Fig. 1), the proximal end portion of the flexible drive shaft (flexible shaft 11) configured to couple to a prime mover (drill) such that the prime mover can drive rotation of the flexible drive shaft (tool shaft 14) about the axis of rotation (“The improved cylinder honing tool is designed to be rotated in its entirety about its longitudinal axis from any motor driven device such as an electric drill and is provided with a chuck stud 10 designed to be chucked in the chuck of such a drill.”) [Clark; col. 1, lines 54-58]; and
an expandable burr removal head (hone stones 23) comprising a burr removal element (hone stone 23), the expandable burr removal head (hone stones 23) being selectively adjustable between a collapsed configuration in which the burr removal element (hone stone 23) is radially spaced apart from the axis of rotation (axis of tool shaft 14) by a first radial dimension (Fig. 1) and an expanded configuration in which the burr removal element (hone stone 23) is radially spaced apart from the axis of rotation (axis of tool shaft 14) by a second radial dimension greater than the first radial dimension (“centrifugal force will tend to expand the hone stones relative to each other”) [Clark; col. 2, lines 66-67],
the expandable burr removal head (hone stones 23) being operatively coupled to the distal end portion of the flexible drive shaft (flexible shaft 11) such that the burr removal element (hone stone 23) rotates with the flexible drive shaft (flexible shaft 11) about the axis of rotation (Fig. 1) (“The improved cylinder honing tool is designed to be rotated in its entirety about its longitudinal axis from any motor driven device such as an electric drill and is provided with a chuck stud 10 designed to be chucked in the chuck of such a drill.”) [Clark; col. 1, lines 54-58].
Regarding claim 14, Clark discloses the deburr tool of claim 1, wherein in the collapsed configuration, the expandable burr removal head (hone stones 23) has collapsed effective diameter (“centrifugal force will tend to expand the hone stones relative to each other”) [Clark; col. 2, lines 66-67], and in the expanded configuration, the expandable burr removal head has an expanded effective diameter greater than the collapsed effective diameter (“centrifugal force will tend to expand the hone stones relative to each other”) [Clark; col. 2, lines 66-67].
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US-2,778,168) in view of Wallace (US-2,312,013).
Regarding claim 2, Clark discloses the deburr tool of claim 1, but fails to disclose wherein the expandable burr removal head (hone stones 23) further comprises a resilient member yieldably biasing the burr removal head toward the collapsed configuration.
However, Wallace (US-2,312,013) teaches a resilient member (garter springs 73) yieldably biasing a burr removal head toward a collapsed configuration (“The tool may be rotated and reciprocated to perform the honing function, and upon release of fluid pressure the garter springs 73 will cause contraction of the tool to its normal diameter.”) [Wallace; page 1, col. 2, lines 29-33]. Since Wallace is pertinent to expandable hones, such as Clark’s, it therefore would’ve been obvious to one of ordinary skill in the art to modify the removal head of Clark with a resilient member as taught by Wallace in order to return and contract the hone to it’s collapsed, normal diameter (“The tool may be rotated and reciprocated to perform the honing function, and upon release of fluid pressure the garter springs 73 will cause contraction of the tool to its normal diameter.”) [Wallace; page 1, col. 2, lines 29-33].
Claim(s) 3, 4, 16, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US-2,778,168) in view of Besenbruch (US-3,713,256).
Regarding claim 3, Clark discloses the deburr tool of claim 1, but fails to disclose wherein the expandable burr removal head is passable through a lumen of a 2 inch-diameter pipe in the collapsed configuration.
However, Besenbruch (US-3,713,256) discusses adjusting the diameter to the diameter of the workpiece to be ground (“Additional means are provided to set a maximum radial spacing of the grinding stones, depending on the diameter of the cylinder to be ground.”) [Besenbruch; col. 1, lines 31-33]. Therefore, while the prior art of Clark does not disclose a specific diameter, it would’ve been an obvious design choice, given the suggestion of Besenbruch, to modify the expandable burr removal head of Clark to be the size of the workpiece to be worked on, including workpieces with a 2 inch-diameter pipe, in order to grind the specific workpiece(s).
Regarding claim 4, Clark discloses the deburr tool of claim 3. As to “wherein the deburr head is passable through an abrupt right angle turn from one 2-inch diameter pipe segment to another 2-inch diameter pipe segment,” this is considered a functional limitation. While it is understood that a functional limitation requiring the deburr head is passable through a 2-inch diameter pipe segment would, generally, require a 2-inch diameter tool or less. A bend would be assumed to be 2-inch diameter as well and, as such, would similarly just require a 2-inch diameter tool or less. For the purpose of examination, the examiner will consider this to require a 2-inch diameter tool.
Besenbruch (US-3,713,256) discusses adjusting the diameter to the diameter of the workpiece to be ground (“Additional means are provided to set a maximum radial spacing of the grinding stones, depending on the diameter of the cylinder to be ground.”) [Besenbruch; col. 1, lines 31-33]. Therefore, while the prior art of Clark does not disclose a specific diameter, it would’ve been an obvious design choice, given the suggestion of Besenbruch, to modify the expandable burr removal head of Clark to be the size of the workpiece to be worked on, including workpieces with a 2 inch-diameter pipe, in order to grind the specific workpiece(s).
Regarding claim 16, Clark discloses the deburr tool of claim 14, but fails to disclose wherein the collapsed effective diameter is in an inclusive range of from 1 inch to 1.5 inches.
However, Besenbruch (US-3,713,256) discusses adjusting the diameter to the diameter of the workpiece to be ground (“Additional means are provided to set a maximum radial spacing of the grinding stones, depending on the diameter of the cylinder to be ground.”) [Besenbruch; col. 1, lines 31-33]. Therefore, while the prior art of Clark does not disclose a specific diameter, it would’ve been an obvious design choice, given the suggestion of Besenbruch, to modify the expandable burr removal head of Clark to be of a size, in collapsed effective diameter, that the tool could be inserted into the workpiece to be worked on, including workpieces with an effective opening of 1 inch to 1.5 inches, in order to grind the specific workpiece(s).
Regarding claim 17, Clark discloses the deburr tool of claim 14, but fails to disclose wherein the expanded effective diameter ED2 is in an inclusive range of from 2.25 inches to 2.75 inches.
However, Besenbruch (US-3,713,256) discusses adjusting the diameter to the diameter of the workpiece to be ground (“Additional means are provided to set a maximum radial spacing of the grinding stones, depending on the diameter of the cylinder to be ground.”) [Besenbruch; col. 1, lines 31-33]. Therefore, while the prior art of Clark does not disclose a specific diameter, it would’ve been an obvious design choice, given the suggestion of Besenbruch, to modify the expandable burr removal head of Clark to be the effective diameter of the workpiece to be worked on, where the expanded effective diameter would be the diameter in which the tool must be to effectively work on the workpiece with the same inner diameter, including workpieces with a 2.25 inch to 2.75 inch-diameter pipe, in order to grind those specific workpiece(s).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US-2,778,168).
Regarding claim 5, Clark discloses the deburr tool of claim 1, but fails to disclose wherein the flexible drive shaft has a contiguous flexible length of at least 6 feet, the flexible drive shaft being flexible along essentially the entire contiguous flexible length.
However, it would’ve been an obvious design choice to make the drive shaft of any desired length, including 6 feet. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.). The prior art of Clark teaches that the size of the tool is meant to be inserted into and abrade a cylinder wall and, therefore, it would’ve been obvious to adjust the length, particularly at the flexible shaft 11, in order to accommodate deeper workpieces for extending the tool into for abrading (“A further object is to so construct the honing tool that the hones will be diametrically expanded against the cylinder wall by centrifugal force and to provide highly efficient cushioning means which will prevent damage to the tool should the latter be accidentally operated beyond the confining enclosure of the cylinder wall.”) [Clark; col. 1, lines 31-36].
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US-2,778,168) in view of Phillips (US-2,612,010).
Regarding claim 6, Clark discloses the deburr tool of claim 1, but fails to disclose wherein the flexible drive shaft (flexible shaft 11) comprises a flexible drive coil and a flexible sheath encasing a length of the flexible drive coil.
However, Phillips (US-2,612,010) teaches a flexible drive shaft (drive shaft 25) comprises a flexible drive coil (spring 41) and a flexible sheath (rubber hose 31) encasing a length of the flexible drive coil (spring 41) (Fig. 1). Since Phillips is in the same field of endeavor, it therefore would’ve been obvious to one of ordinary skill in the art to use the flexible drive shaft of Phillips for the flexible drive shaft of Clark in order to prevent collapsing or buckling of the flexible member [Phillips; col. 2, lines 49-54].
Regarding claim 7, Clark, as modified by Phillips, discloses the deburr tool of claim 6, wherein the flexible sheath (rubber hose 31 of Phillips) is movable in relation to the flexible drive coil (spring 41 of Phillips) between a retracted position and an extended position (“The spring is a close fit within the element 30 but is not connected thereto other than being in supporting engagement with the walls thereof.”) [Phillips; col. 2, lines 52-54].
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US-2,778,168) in view of Schmid (DE102014225164A1).
Regarding claim 15, Clark discloses the deburr tool of claim 14, but fails to disclose wherein the expanded effective diameter is at least 0.75 inches greater than the collapsed effective diameter.
However, the prior art, such as Schmid (DE102014225164A1) teaches that the diameter between the expanded and collapsed diameter allows for insertion of the tool into different diameter workpieces, varying from one diameter to another (Fig. 3), and, therefore, it would have been obvious an obvious optimalization to make the expanded effective diameter as great as possible, up to and including at least 0.75 inches, in order to allow for insertion into smaller openings and expansion to fit larger diameters, such as seen in Figure 3 of Schmid, as the expansion is due to conform against the surface/interior to be machined, and the collapsed is to allow insertion of the tool into the surface/interior to be machined (Fig. 3).
Allowable Subject Matter
Claim 8, as interpreted under 35 USC 112(b) above, was neither considered anticipated by the prior art or render obvious. However, since the claim is rejected under 35 USC 112(b) and subject to an indefinite interpretation, then official indication of allowable subject matter is withheld until the claim is put into clear and defined language.
Claims 9-13, depending therefrom, would be allowable if claim 8 were to be found allowable.
Claim 18, and those claims depending therefrom including claims 19-20 are allowed.
The prior art fails to anticipate or render obvious, in combination with all other claim limitations, “[a] method of deburring a Piccolo tube installed in a preassembled aircraft engine, the method comprising: inserting a deburr tool through an inlet neck of the Piccolo tube until an expandable burr removal head of the deburr tool is located inside an outlet section of the Piccolo tube” as claimed.
The prior art of Graebner (US-9,316,617) discloses an expandible tool for insertion into airplane parts for inspection. However, this is not a deburr tool as required by the claims and defined by the specification.
The prior art of US-6267328 and US-5807454 describe Piccolo tubes, but do not mention deburring them and, therefore, it would’ve not been obvious to use an expandable deburring tool on them as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-2736146, US-3005294, US-3381419, US-3065579, US-2782572, US-2932137, US-3334453, US-3400500, US-2805528, and US-3324606 are pertinent to claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL DILLON CRANDALL whose telephone number is (571)270-5947. The examiner can normally be reached Mon - Fri 8:30 - 5:30.
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/JOEL D CRANDALL/Examiner, Art Unit 3723
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