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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
• “piercing element” as recited in at least claim 12 (first, “element” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “piercing”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “piercing” preceding the generic placeholder describes the function, not the structure, of the element)
• “biasing member” as recited in at least claim 15 (first, “member” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “biasing”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “biasing” preceding the generic placeholder describes the function, not the structure, of the member)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 12 and 19-20 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.
Regarding claim 12, the limitations “the first support plate surrounds the first stem” and “the second support plate surrounds the second stem” do not appear to be supported by the written description. It is noted that in at least fig. 1A, first stem 34 appears to be at least partially surrounded by first support member 22, and second stem 48 appears to be at least partially surrounded by second support member 24.
Regarding claims 19 and 20, there does not appear to be written support for the second face of the first support plate being offset from the first surface of the first stem in a direction towards/away from the base respectively. Examiner notes that paragraph [0026] discusses a stem offset distance thickness t2, but it is not clear how the thickness of first support member 22 results in it being offset either towards or away from the base. Further, the drawings do not appear to show the offset either.
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 12 and 19-20 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 12, it is unclear exactly what is intended by the claim limitations “the first support plate surrounds the first stem” and “the second support plate surrounds the second stem”. As discussed above, the written description does not appear to further elaborate on the relationship of the support plates to their respective stems. Further, the drawings appear to show the support plates only partially surrounding the stems. Thus, it is unclear if the term “surround” is intended to mean that the support plates completely surround a periphery of the stems, or if they may partially surround the stems. For purposes of examination, it is interpreted that the support plates are required to at least partially surround the respective stems.
Regarding claims 19 and 20, as discussed above, the offset of the second face of the first support plate from the base is not clear. The written description does not sufficiently describe this relationship, and the drawings do not appear to show the offset either. Therefore, it is not understood what is intended by the limitations drawn to the offsets, or how the second face is offset in a direction towards or away from the base respectively.
Claim Rejections - 35 USC § 103
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 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 12-13, 15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gregory (US 0689394) in view of Halamoda (US 20070227217).
Regarding claim 12, Gregory discloses a tool for forming holes in a fiber preform of a ceramic matrix composite component, the tool comprising: a first tool component (see annotated portion of fig. 1 below) comprising: a base (see annotated portion of fig. 1 below); and a first stem extending outward from the base (female die 20 extends out from the base; see fig. 1); a first hole extending through the base and the first stem that includes a first diameter (female die 20 is hollow throughout its length; see pg. 1, lines 95-97 and fig. 1); and a first surface at an end of the first stem opposite the base (the first surface is located on an end of female die 20 opposite the base; see annotated portion of fig. 1 below), wherein the first surface circumscribes the first hole (the first surface is formed around the hole that extends through female die 20; see annotated portion of fig. 1 below); a second tool component spaced from the first tool component (when the second tool component is retracted, it is spaced apart from the first tool component; see annotated portion of fig. 1 below), the second tool component comprising: a second stem (hollow head 9; see fig. 1), wherein an outer periphery of the first stem coincides with an outer periphery of the second stem (the outer portion of female die 20 coincides with the outer portion of hollow head 9; see figs. 1-2); and a second hole extending through the second stem coaxially with the first hole that includes a second diameter (the second hole extends through hollow head 9 and is coaxial to the first hole; see fig. 1), wherein the first diameter is less than the second diameter (at least a portion of the first hole has a smaller diameter than at least a portion of the diameter of the second hole; see fig. 1); and a plunger assembly comprising: a collet longitudinally guided by the second tool component along the second hole (movable stripper 18 is guided along the axis of the second hole; see figs. 1-2), wherein an outer periphery of the collet conforms to the second diameter (the outer portion of movable stripper 18 conforms to the second diameter such that movable stripper 18 corresponds to at least a portion of the second hole; see fig. 1); and a piercing element received within the collet (perforator 15 is received within movable stripper 18; see figs. 1-2), wherein the plunger assembly has an extended position in which the piercing element protrudes into the first hole (perforator 15 extends into the first hole in an extended position; see fig. 2) and a retracted position in which the piercing element is entirely within the second hole (perforator 15 is contained within the second hole in a retracted position; see fig. 1).
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Gregory does not explicitly disclose a first support plate having a first face abutting the base of the first tool component and a second face spaced from the first face, wherein the first support plate surrounds the first stem; a second support plate spaced from the first support plate by a distance configured to retain the fiber preform, wherein the second support plate surrounds the second stem.
Halamoda discloses a first support plate having a first face abutting the base of the first tool component (lower tool 6 comprises a bottom surface and as modified, this bottom surface abuts the base of the first tool component) and a second face spaced from the first face (as modified, support surface 7 is spaced apart from the first face), wherein the first support plate surrounds the first stem (as modified, lower tool 6 at least partially surrounds the first stem as in fig. 1); a second support plate (tool guide plate 9; see figs. 1-2) spaced from the first support plate by a distance configured to retain the fiber preform (a gap is formed between tool guide plate 9 and support surface 7, with foil 2 fixed in the gap; see paragraphs [0036, 0042-0043] and figs. 1-2), wherein the second support plate surrounds the second stem (as modified, tool guide plate 9 at least partially surrounds the first stem as in fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Gregory in view of Halamoda to include a first support plate and a second support plate. Halamoda discloses that the second support plate (tool guide plate 9) clamps foil 2 against support surface 7 of the first support plate (lower tool 6) in order to perform a piercing operation (see paragraph [0043]). A person of ordinary skill in the art would understand that clamping the material to be perforated locks the material in place and prevents unwanted movement, thus ensuring the material is not ripped or cut during the perforating operation. While female die 20 and movable stripper 18 of Gregory are configured to clamp the material during perforation, these surfaces are comparatively small and do not secure as much material. A person of ordinary skill in the art would understand the benefit of adding the support plates of Halamoda into the device of Gregory to improve the clamping operation by holding a larger portion of the material in place and thus reduce the chance of ripping the material during perforation.
Regarding claim 13, Gregory as modified discloses the limitations of claim 12 as described in the rejection above.
Halamoda further discloses wherein the second face of the first support plate is aligned with an end of the first stem (support surface 7 is aligned with opening 11 which is configured to receive working part 16, wherein the opening corresponds to the end of the first stem; see figs. 1-2).
Regarding claim 15, Gregory as modified discloses the limitations of claim 12 as described in the rejection above.
Gregory as modified further discloses a shaft extending from the collet (plunger 12 extends from movable stripper 18 via stem 16; see figs. 1-2); a flange extending outward from the shaft (collar 13 is pinned to and extends out from plunger 12; see pg. 1, lines 55-59 and fig. 1); and a biasing member disposed between the flange and the second stem (coiled spring 14 is located between collar 13 and a portion of hollow head 9; see fig. 1), wherein as the plunger assembly displaces from the retracted position towards the extended position, the biasing member compresses (coiled spring 14 is compressed when the plunger assembly moves from the retracted position to the extended position; see pg. 1, line 103-pg. 2, line 2 and fig. 2) and thereby generates a restoring force that acts on the flange and the second stem to bias the plunger assembly towards the retracted position (upon release of pressure, coiled spring 14 exerts a restoring force that returns the plunger assembly to its original position; see pg. 2, lines 13-19 and fig. 1).
Regarding claim 17, Gregory as modified discloses the limitations of claim 12 as described in the rejection above.
Gregory as modified further discloses wherein the first stem and the second stem are tubular (female die 20 and hollow head 9 each have a tubular form designed to accommodate the conical perforator 15; see pg. 1, lines 55-65 and figs. 1-2).
Regarding claim 18, Gregory as modified discloses the limitations of claim 12 as described in the rejection above.
Gregory as modified further discloses a support frame that retains the first tool component in fixed relationship to the second tool component (base 7 supports the first tool component such that it remains fixed relative to the second tool component; see pg. 2, lines 31-35 and figs. 1-2).
Regarding claim 19, Gregory as modified discloses the limitations of claim 12 as described in the rejection above.
Gregory as modified does not explicitly disclose wherein the second face of the first support plate is offset from the first surface of the first stem in a direction towards the base.
It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Gregory to have the first support plate be offset in a direction towards the base since it has been held that rearranging parts of an invention involves only routine skill in the art (see In re Japikse, 86 USPQ 70). In the instant case, depending on the type of material being produced, lower clamping force may be necessary to properly hold the material during operation. Therefore, a person of ordinary skill in the art would understand that the support plate may be lowered towards the base in order to avoid placing too much pressure against a surface of the workpiece.
Regarding claim 20, Gregory as modified discloses the limitations of claim 12 as described in the rejection above.
Gregory as modified does not explicitly disclose wherein the second face of the first support plate is offset from the first surface of the first stem in a direction away from the base.
It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Gregory to have the first support plate be offset in a direction away from the base since it has been held that rearranging parts of an invention involves only routine skill in the art (see In re Japikse, 86 USPQ 70). In the instant case, depending on the type of material being produced, higher clamping force may be necessary to properly hold the material during operation. Therefore, a person of ordinary skill in the art would understand that the support plate may be raised away from the base in order to provide more pressure against the surface of the workpiece.
Response to Arguments
Applicant's arguments filed 6/1/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s assertion that Halamoda does not disclose first and second support plates that are separate from and surround the first and second stems, Examiner respectfully points to the combination of Gregory as modified by Halamoda. As discussed above, the first and second support plates of Halamoda are added to the device of Gregory, thus resulting in first and second support plates that are positioned at least partially surrounding the first and second stems respectively. Such a modification would be obvious to one of ordinary skill in the art in order to provide a clamping device that secures the material against unwanted movement, thus preventing damage during the perforation operation (see rejection of claim 12 above).
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 HALEIGH N WATSON whose telephone number is (571)272-3818. The examiner can normally be reached M-Th 530AM-330PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571)272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HALEIGH N WATSON/Examiner, Art Unit 3724
/BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
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