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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “angular position(s)” recited in instant dependent claim 4 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: The instant filed specification employs both the terms “sought point” and “intersection point” for the “the seam peaking,” both of which are indicated in the instant filed drawings as “P.” The specification terminology must be consistent, as well as with within the claimed invention.
Appropriate correction is required.
The instant filed specification fails to employ required section headings, and thus objected to. The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Claim Objections
Claim 5 is objected to because of the following informalities: In lines 1-2 of instant dependent claim 5 incorrectly includes the text: “the preceding claims” which has been removed from other dependent claims. In addition, a hyphen is incorrectly placed between the terms “point” and “of.” Appropriate correction is required.
Claim 8 is objected to because of the following informalities: the term “with” in line 2 should be replaced with “wherein,” matching the language of instant dependent claim 4.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3, 5, 7, 8 and 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) mathematical manipulations and calculations based on measurements which can be mentally performed or on a piece of paper based on the measured data. This judicial exception is not integrated into a practical application because the invention is directed to generic measurements which do not add meaningful limitations to the abstract idea and are nominal or extra-solution activity. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there is no structural elements recited, in particular, sensors and other structural means to perform the abstract idea.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the recited “program product” may be directed to a signal per se, mere information in the form of data. The Examiner suggests adding the limitations regarding the computer program product “comprising a non-transitory computer-readable medium” to overcome this rejection.
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 1-10 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.
Claim 1 recites “the seam peaking” and “the internal pipe geometry” in lines 1 and 2, respectively. There is insufficient antecedent basis for this limitation in the claim. All other claims are similarly rejected due to their dependency.
Claim 2 recites “measured values” while instant independent claim 1, from which claim 2 depends, already recites “measured values,” so it is unclear if the recited “measured values” in claim 2 are the same or a subset of the “measured values” obtained in instant independent claim 1.
Claim 3 recites the limitation "the presence of the weld seam" in line 3. There is insufficient antecedent basis for these limitations in the claim.
Claim 3 recites the limitation "the expected weld seam" in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites “neighbouring measured values” while instant independent claim 1, from which claim 2 depends, already recites “measured values,” so it is unclear if the recited “neighboring measured values” in claim 3 are the same or a subset of the “measured values” obtained in instant independent claim 1. The Examiner suggests the claim be amended to state “neighbouring measured values of the measured values.”
Claim 4 recites the limitations: “angular position of the inner wall of the pipe….is determined in each case and the seam peaking of the sought point is determined via an intersection of the angular positions.” The instant filed specification and drawing fail to adequately describe and/or depict the “angular position(s),” rendering the claim indefinite. Instant Fig. 2 employs terms “point angle” and “point angle measured,” but the instant filed specification fails to employ these terms, and it is unclear if the point angle is the angular position, further rendering the claim indefinite.
Further regarding claim 4, phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 5 recites the limitation "the inner surface" and “the circumferential direction” in lines 2 and 3, respectively. There is insufficient antecedent basis for these limitations in the claim.
Further regarding claim 5, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 6 recites the limitation "the straight line" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitations "the inner wall" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Further regarding claim 6, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 7 recites the limitations "the ideal circular arc geometry” and “the calculations” in lines 3 and 4, respectively. There is insufficient antecedent basis for these limitations in the claim.
Claim 8 recites the limitations "the circumferential direction" in line 3. There is insufficient antecedent basis for this limitation in the claim
The Examiner strongly suggests that Applicant perform a thorough review of the pending claims to ensure proper antecedent basis for claimed terms and/or other potential issues the Examiner may have overlooked.
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, 2, 9 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 4,964,059 to Sugaya et al. Sugaya et al. disclose a system and method for determining a seam peaking of a pipeline (see entire reference); wherein measured values of the internal pipe geometry are recorded adjacent to a sought point (S2) (see Figs. 9 and 10, and associated text disclosure within Sugaya et al.) of the seam peaking and a trend (data points) is determined from the measured values and a value of the seam peaking is determined on the basis of the trend (data points) via interpolation/extrapolation (see col. 7, lines 5-41) (as recited in instant dependent claim 1); wherein the measured values which are measured directly at the weld seam are not used by the method for determining seam peaking (see dashed lines in Fig. 9 and associated text within Sugaya et al.) (as recited in instant dependent claim 2); wherein a pig (see Fig. 1) for carrying out a geometry measurement in a pipe (2) having a sensor carrier (see Fig. 2) which has sensors, and a control system and/or software which is configured to carry out the method according to claim 1 (see Fig.5 and associated text within Sugaya et al.) (as recited in instant dependent claim 9); and inherently including a computer product loadable into a program memory and comprising the instructions to carry out all the steps of the method according to claim 1 when the program is executed (as recited in instant dependent claim 10).
Conclusion
Note that all the claims are currently rejected under 35 U.S.C. 112(b). Any claims not rejected under prior art are not to be construed to be containing allowable subject matter. Once the rejections under 35 U.S.C. 112(b) are overcome, the Examiner will again perform a search and consideration of the prior art and amended claims, potentially resulting in prior art rejections, and resulting in final rejection.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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. The central 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.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855