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 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 1-9 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 1, the phrase "arm-like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "like"), thereby rendering the scope of the claim(s) unascertainable [see MPEP § 2173.05(d)].
The claim states “the thus expanded pipe member”, there appears to be insufficient antecedent basis for this limitation. Additionally, it is unclear when the metal pipe member became the expanded pipe member, specifically it is noted that pressurizing the pipe does not inherently result in an expansion of the pipe member. Clarification and/or correction is required. For examination purposes the limitation is being interpreted as: pressurizing the pipe member with liquid supplied to an inside thereof to expand the pipe and cause an external surface of the pipe member to be pressed against an inner surface of the cavity.
The preamble of the claim recites “a method for producing an arm-like structure”, however upon completion of the two forming steps one of ordinary skill in the art would obtain a formed arm precursor and not an arm-like structure. Therefore it is unclear if the formed arm precursor and the arm-like structure are intending to be the same element or if they are different than it is unclear when the arm-like structure is produced. Clarification and/or correction is required.
With regards to claim 2, the claim states “wherein the pipe member is formed by, in a state in which a first die is closed with a straight-pipe-shaped material being disposed in the cavity thereof”, this renders the claim indefinite since it is unclear if the limitation “the cavity” is intending to refer to the cavity previously recited in claim 1 in which case it would appear that the first die is further defining the die of claim 1, or if the limitation “the cavity” is intending to refer to a cavity of the first die which is different from the previously recited die of claim 1.
With regards to claim 3, the claim states “wherein the flange portion is formed in a ring shape having a center hole by bending an entire circumference of an end of the arm precursor member…” it is unclear if this limitation is intending to further define the machining that forms the flange portion or if the limitation is intending to set forth a forming step of bending in addition to the machining step of claim 1. Clarification and/or correction is required.
With regards to claim 5, the claim states “the flange portion is formed by joining a ring-shaped reinforcing member to the bent end of the arm precursor member”, this renders the claim indefinite since it is unclear if this limitation is intending to further define the forming by machining and bending steps of claims 1 and 3 or if the limitation is intending to be in addition to the forming by machining and bending. Clarification and/or correction is required. It is further noted that it is unclear if the ring-shaped reinforming member is an element formed within the scope of the method (and if so when is it formed) or if it is a separate element not formed within the scope of the method.
With regards to claim 6, the claim states “wherein a reinforcing rib is formed…” this limitation is couched in a narrative format which does not lend itself to a clear understanding of the essential steps of the method. Positively setting forth the method as a series of steps with the essential features of each step being distinctly claimed would overcome the indefiniteness with regard to the inferential claimed provision. Applicant is respectfully reminded that to be entitled to patentable weight in method claims, the structural limitations recited therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure [see Ex parte Pfeiffer, 135 USPQ 31 (1961)]. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced, e.g. it doesn't begin a step with a gerund term.
With regards to claims 8 and 9, the claims states “wherein heat treatment…is performed” these limitations are couched in a narrative format which does not lend itself to a clear understanding of the essential steps of the method. Positively setting forth the method as a series of steps with the essential features of each step being distinctly claimed would overcome the indefiniteness with regard to the inferential claimed provision. Applicant is respectfully reminded that to be entitled to patentable weight in method claims, the structural limitations recited therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure [see Ex parte Pfeiffer, 135 USPQ 31 (1961)]. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced, e.g. it doesn't begin a step with a gerund term.
With regards to claims 6-9, the claim states “the arm precursor member or the arm-like structure” (claims 6 & 7} or “the arm-like structure” (claims 8 & 9), this renders the claim indefinite since it is unclear when the arm-like structure is formed within the method. As stated in the indefiniteness rejection of claim 1, while the preamble is sets forth the method produces an arm-like structure, upon completion of the steps only an arm precursor member is produced. Therefore it is unclear how these additional steps, i.e. cutting or heat treatment, can be performed on an object that has yet to be formed. Clarification and/or correction is required. For examination purposes the claim is being interpreted as referring solely to the arm precursor member.
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) 1-4 and 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasshi et al (US 5,662,349).
In reference to claim 1, Hasshi et al discloses a method of producing an arm structure (A) comprising
forming an arm precursor member having an external shape of the arm structure by, in a state in which a die is closed with a metal pipe member being disposed in a cavity thereof, pressurizing the pipe member with liquid (oil) supplied to an inside thereof to cause an external surface of the pipe member to be pressed against an inner surface of the cavity [see figure 7D; col. 4 lines 50-58];
forming a flange portion to be attached to a driven body by machining at least an end of the formed arm precursor member [see col. 4 lines 32-38; figures 4, 6, 8A-8D].
In reference to claim 2, the pipe member is formed by, in a state in which a first die [see figure 7D], is closed with a straight-pipe-shaped material being disposed in the cavity thereof, changing a shape of the cavity of the first die so that both ends of the material are bent in a same direction, while pressurizing the material with the liquid supplied to an inside thereof [see col. 3 lines 50-57; see figure 7B].
In reference to claim 3, the flange portion is formed in a ring shape having a center hole by bending an entire circumference of an end of the arm precursor member at least ones in a radial direction [see figures 8A-8B; col. 4 lines 32-38].
In reference to claim 4, Hasshi et al further discloses the flange portion is formed by bending the end of the arm precursor member radially inward, as seen in figure 8B.
In reference to claim 6, Hasshi et al further discloses a reinforcing rib (portion of material surrounding holes 23] is formed so as to extend between a rear side of an attachment surface of the flange portion and an inner wall surface of the arm precursor member, as seen in figure 8B.
In reference to claim 7, wherein a working opening is formed by cutting off a portion of a wall of the arm precursor member [see col. 4 lines 7-10].
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) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasshi et al.
In reference to claims 8 and 9, Hasshi et al discloses the invention substantially as claimed except for wherein a heat treatment is performed.
However, it would have been obvious to one having skill in the art at the time the invention was made to perform heat treatment processes on a workpiece for the purpose of strengthening the workpiece to a desired strength, since it has been held to be within the general skill of a worker in the art that heat treatments are performed for increase the strength of a material when desired.
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 method of Hasshi et al to include a heat treatment, since it is well known in the art to perform heat treatment to achieve a desired strength of the workpiece.
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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/Debra M Sullivan/
Primary Examiner, Art Unit 3725