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.
In Claim 1, a limitation “a first supporting means” is interpreted as “two support arms” according to [0048] in the current specification.
In Claim 1, a limitation “a second supporting means” is interpreted as “two support arms” according to [0048] in the current specification.
In Claim 7, a limitation “at least one alignment means” is interpreted as “an alignment pin” according to [0065] of the current specification.
In Claim 8, a limitation “a first alignment means” is interpreted as “an alignment pin” according to [0065] of the current specification.
In Claim 8, a limitation “a second alignment means” is interpreted as “two alignment bolts” according to [0066] of the current specification.
In Claim 13, a limitation “a third supporting means” is interpreted as “a rigid body formed in one piece with the second base body part” according to [0070] of the current specification.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 7-11 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (U.S. Patent Publication No. 2007/0186744).
Regarding Claim 1, Lee teaches a tool cartridge (Fig. 1, 10) for supporting tool parts, comprising
a base body (Fig. 2, 12 & 30),
a first supporting means (Fig. 2, 14) attached to the base body (Fig. 2, 12 & 30) for reversibly detachably receiving a first tool part (punch) ([0065]: two punch-retention arms 14), and
a second supporting means (Fig. 2, 16) attached to the base body (Fig. 2, 12) for reversibly detachably receiving a second tool part (die) ([0065]: two die-retention arms 16),
wherein the base body (Fig. 2, 12 & 30) is configured in two parts (12 & 30),
wherein the first supporting means (Fig. 2, 14) is arranged at a first base body
part (Fig. 2, 30), and
wherein the second supporting means (Fig. 2, 16) is arranged at a second base body part (Fig. 2, 12).
Examiner notes that the claim language such as “for reversibly detachably receiving a first tool part” and “for reversibly detachably receiving a second tool part” are statements of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the structure of Lee's first supporting means and second supporting means are not only capable of performing the intended function, but also actually perform the intended functions. (see MPEP 2114)
Regarding Claim 2, Lee teaches the tool cartridge according to claim 1, wherein the tool cartridge (Fig. 1, 10) is construed for supporting a multi-part machining tool (punch & die) ([0065]: two punch-retention arms 14 & two die-retention arms 16) for at least one of a punching and forming apparatus.
Regarding Claim 3, Lee teaches the tool cartridge according to claim 1, wherein the first base body part (Fig. 2, 30) is reversibly detachably connected to the second base body part (Fig. 2, 12) ([0068]).
Regarding Claim 4, Lee teaches the tool cartridge according to claim 1, comprising at least one bearing means (Fig. 2, 134) attached to both base body parts (Fig. 2, 12 & 30) for pivotably mounting at least one of the first supporting means (Fig. 2, 14) at the base body (Fig. 2, 12 & 30) ([0068]: each arm 14 is adapted to pivot on a pin 134).
Regarding Claim 5, Lee teaches the tool cartridge according to claim 4, wherein the at least one bearing means (Fig. 2, 134) is designed as a bearing bolt ([0068]: a pin) that is rigidly connected to the base body (Fig. 2, 12 & 30) ([0068]: a pin 134 anchored to the main body and/or to the center piece).
Regarding Claim 7, Lee teaches the tool cartridge according to claim 1, wherein at least one alignment means (Fig. 2, 36) is arranged at the base body (Fig. 2, 12 or 30) for fixing an alignment of the first tool part relative to the base body (Fig. 2, 12 or 30) ([0075]).
Examiner notes that the claim language such as “for fixing an alignment of the first tool part relative to the base body” is a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the structure of Lee's at least one alignment means is not only capable of performing the intended function, but also actually performs the intended function. (see MPEP 2114)
Regarding Claim 8, Lee teaches the tool cartridge according to claim 1, comprising a first alignment means (Fig. 2, 36) at the first base body part (Fig. 2, 30) ([0075]) and a second alignment means (Fig. 2, 20) at the second base body part (Fig. 2, 12) ([0077]).
Regarding Claim 9, Lee teaches the tool cartridge (1) according to claim 1, wherein the base body (Fig. 2, 12) has undercuts (Fig. 1, 56, 58, 60) in each spatial direction ([0099]: front, side, bottom).
Regarding Claim 10, Lee teaches the tool cartridge according to claim 1, wherein the base body (Fig. 2, 12) is manufactured using an additive manufacturing process.
This is considered a product-by-process claim whose patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (see MPEP 2113) The main body (12) of Lee teaches all structural limitations in the claimed base body according to Claim 1 and there is no structural or functional distinction in the claimed article attributable to the additive manufacturing process.
Regarding Claim 11, Lee teaches the tool cartridge according to claim 1, wherein the base body (Fig. 2, 12) comprises a plastic material. ([0100]: conventional plastic cartridge)
Regarding Claim 13, Lee teaches the tool cartridge according to claim 1, comprising a third supporting means (Fig. 2, 18) formed in one piece with the second base body part (Fig. 2, 12) ([0081]: integral to the main body 12) for reversibly detachably receiving a third tool part ([0078]: stripper plate).
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (U.S. Patent Publication No. 2007/0186744) in view of Gregg (U.S. Patent No. 9,248,967).
Regarding Claim 6, Lee teaches the tool cartridge according to claim 1, wherein the first supporting means (Fig. 2, 14) has a counter-bearing means (Fig. 2, holes in the main body 12 for receiving pins 134.). Lee does not teach a counter-bearing means having a bearing collar.
Gregg teaches the first supporting means (Fig. 3, 120) has a counter-bearing means (Fig. 3, 128) having a bearing collar (Fig. 3, 182).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a bushing inside the hole in the main body (12) of Lee for receiving a pin as taught by Gregg (134) in order to prevent a wear and tear of the hole in the main body (12) and simplify a repair process if the bushing (182) is damaged.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (U.S. Patent Publication No. 2007/0186744) in view of Kerscher et al. (U.S. Patent Publication No. 2019/0344324).
Regarding Claim 12, Lee teaches the tool cartridge (1) according to claim 11, but does not explicitly teach wherein the base body comprises a fiber-reinforced plastic material.
Kerscher teaches the base body comprises a fiber-reinforced plastic material. ([0023]: The cartridge base body 2 is made of plastic, for example, a fiber-reinforced polyamide.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the base body of Lee with a fiber-reinforced polyamide as taught by Kerscher as fiber-reinforced polyamide is light as suggested in Kerscher [0011] and it further offers increased mechanical strength and rigidity.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (U.S. Patent Publication No. 2007/0186744).
Regarding Claim 14, Lee teaches a combination, comprising
the tool cartridge (Fig. 1, 10) according to claim 1.
Although Lee does not explicitly teach the first tool part received at the tool cartridge, it teaches that the two punch-retention arms are adapted to removable retain a punch on the cartridge. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the first tool part in the tool cartridge of Lee in order to easily exchange several different sets of tools including a punch during a machining process.
Regarding Claim 15, Lee teaches the combination according to claim 14, wherein the first tool part (punch) is part of a multi-part machining tool ([0003]: punch, die, stripper) for a punching apparatus or a forming apparatus.
Allowable Subject Matter
Claim 16 is 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN S YOO whose telephone number is (571)270-7141. The examiner can normally be reached 9AM-5PM.
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, SUNIL SINGH can be reached at (571) 272-3460. 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.
/JUN S YOO/Primary Examiner, Art Unit 3726 9/5/2026
Prosecution Insights