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 . 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.
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: alignment and fastening device comprising guiding means, and heating device in claim 1; first and second coupling members in claim 2; relative control means in claim 14.
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. The alignment and fastening device comprising guiding means is interpreted as a first and second clamp unit (40) and an elongated body (21) [0028-0029] (see U.S PG Pub 20240424746A1 of instant application). The heating device is interpreted as heat plates [0050]. The first and second coupling members are interpreted as a threaded grub screw and a pin respectively [0055-0056].
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 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, 8-11, & 14 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 4 recites the limitation "said threaded pin" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation of “the welding machine according to claim 8”, as such this renders claim 8 indefinite, as it depends on itself, thus it is unclear what the exact dependency of claim 8 is. For examination purposed, it is interpreted that claim 8 is dependent on claim 7. Claims 9-10, being dependent on claim 8, are also rejected as being indefinite.
In claim 14, claim limitation “relative control means” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. the instant specification makes no mention of what the relative control means are, and thus the limitation of the 'relative control means' merely amounts to a general placeholder without subsequent structure being present in the disclosure Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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) 1 & 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bortoli (U.S PG Pub 20100090453A1) and Wanner (U.S PG Pub 20180117717A1).
Regarding claim 1, Bortoli, drawn also to the art of a welding unit for butt-welding pipe portions (Abstract), discloses a base (35), that supports a welding unit (fastening and alignment device with guiding means) comprising 4 clamping units (40) and guiding means (elongated body i.e. supporting frame (39)) [0037-0038]. Bortoli discloses a heating device (43) [0039-0040]. Bortoli also discloses that the welding unit is mechanically connected to the base with brackets (12) [0024] (see also figures 1-4). Bortoli has further disclosed that the welding unit is autonomous and is free to be moved independently [0015 & 0045], which would imply that the welding unit of Bortoli is able to be utilized according to the intended use of the first operative and second operative configuration, wherein the welding unit is connected to the base and machine, and wherein it is independent of the base and machine, respectively.
In the event the applicant does not agree with the above explanation, it is further known from Wanner, for a securing assembly of a welding machine to detachable (Abstract). Wanner is also drawn to the art of welding machine for welding tubular components (Abstract).
It would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Bortoli, with the securing assembly (analogous to the fastening and alignment device) being detachable and independent, as disclosed by Wanner, to arrive at the instant invention, in order to be able to conduct welding with a single automated welding assembly of weld large dimension and weight of the parts to be joined [0004].
Regarding claims 13-14, Bortoli has disclosed 4 clamps (40), which would suggest a first, second, third, and fourth clamping unit with opposing jaws (see figures 1 & 4), as the clamping units of Bortoli have pairs of opposing jaws. Thus, Bortoli has disclosed auxiliary or multiple clamping units other than the first and second clamping units. Regarding the clamp unit being detachable with association to the base, this is necessarily true, as the welding unit itself is detachable and autonomous as associated with the base (see claim 1 rejection above). Regarding the limitations of jaws being movable transversely to the elongated body (39), this would necessarily be the case in order for the jaws to clamp on the pipe portions to be welded [0038]. With regards to the jaws being interchangeable and reversible, this limitation merely amounts to the jaws being separable and adjustable, and the courts have held that making a structure separable and adjustable is obvious to an ordinarily skilled artisan in the absence of new or unexpected results (MPEP 2144.04 V (C) & (D)).
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bortoli (U.S PG Pub 20100090453A1), Wanner (U.S PG Pub 20180117717A1), and Sgarra (DE102004011866A1 - see foreign reference and machine translation attached).
Regarding claims 2-3, Bortoli discloses brackets (12) and upright (33) for supporting the welding unit to the base i.e. second and first coupling members [0024 & 0037]. As can be seen from figures 2-3, the upright (33) is screwed into the base and the brackets are also screwed into the upright, thus, broadly interpreted, the brackets and upright of Bortoli meet the limitations of the second and first coupling members, as the bracket is screwed into the upright, i.e. second coupling member mechanically coupled to first coupling member, and the upright is screwed into the base, i.e. first coupling member coupled to the base.
In the event the applicant disagrees with the above explanation, it is known from Sgarra, to have support members (coupling members) that are coupled to the base.
Sgarra, drawn also to the art of a welding device for pipes [0001-0002], discloses a first (16 & 5) and second support member (17 & 3) (figure 2), wherein the supports are attached to the housing (14) (interpreted as the base) [0021]. Sgarra also discloses the support members are meant as attachments for the holding elements (4 & 6 - jaws) (i.e. clamping members) [0015]. In this instance, the spindle (8) is interpreted as the second coupling member and the support member 3 is interpreted as the first coupling member. As can be seen from figure 2, it can be seen that the support 3 is coupled to the housing 14 [0016-0018], and the spindle is coupled to the support member (3), and wherein the support member has a threaded bore for receiving the spindles (8) and further receiving bores for guide rods (9), and that the spindle is provided with a thread (8a) (it can be reasonably expected that the support member 3, similar to the support member 5 would also have a threaded bore and receiving bores as for support 5, since once end of the spindle and guide rods are attached the support 3) [0017-0018]. Thus, Bortoli, as modified by Sgarra, discloses the limitations of instant claim 2.
It would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Bortoli, with the threaded bore (and consequent threaded screw), receiving bores, as well as the first and second coupling members, as disclosed by Sgarra, to arrive at the instant invention, in order to simplify sliding assembly of workpieces [0005].
Claim(s) 5-9, 12, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bortoli (U.S PG Pub 20100090453A1), Wanner (U.S PG Pub 20180117717A1), and Bortoli (EP1700685A2 - cited in IDS and foreign reference provided by applicant, referred to hereinafter as Bortoli 2).
Regarding claim 5, Bortoli has disclosed the first and second clamp units (4) being supported by an elongated body (39), wherein the first clamp unit is engaged with one end of said elongated body (figure 1). Bortoli also discloses hydraulic pusher cylinders (41) that allow movement of the clamps so as to bring into mutual contact the ends of the pipes to be welded [0038]. Thus, Bortoli has disclosed the clamping units to be movable and being engaged with the ends of the elongated body. Further, it is noted that the courts have held it to be obvious to make a structure movable (i.e. adjustable) in the absence of new or unexpected results (MPEP 2144.04 V (C)).
Regardless, in the event the applicant disagrees with the above explanation as pertaining to the clamping unit being movable or slidable, it is known for a clamping unit to be slidably movable, as disclosed by Bortoli 2.
Bortoli 2, drawn also to the art of a welder for pipes and pipe fittings [0001], discloses two clamping units (locking clamps 14 & 17), which are arranged on an elongated body (sliding guide 12), and wherein the locking clamp 14 is slidably arranged on the sliding guide in a carriage, and wherein the locking clamp 17 is fixed to one end of the sliding guide [0034-0037]. In this instance, the locking clamp 14 is interpreted as the second clamping unit as instantly claimed, and locking clamp 17 is interpreted as the first clamping unit as instantly claimed.
It would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Bortoli, with the second clamping unit being slidably engaged with the elongated body and being movable, as disclosed by Bortoli 2, to arrive at the instant invention, in order to obtain a welder that is reliable and easy in use [0029].
Regarding claims 6-9, Bortoli 2 has disclosed handling means for the second clamping unit [0031]. Bortoli 2 discloses that the carriage (13), which supports the locking clamp 14 [0035], has means for kinematic connection (22) [0039]. Bortoli 2 discloses that the kinematic connection means (i.e. handling/moving means) comprise two racks (24), which are constituted by toothed bars arranged parallel to each other one above the other [0041], and further that the racks (24) mesh with a pinion (i.e. a first and second pinion), wherein the racks are engaged with a first shaft (fixed post 16) [0039 & 0042]. Bortoli also discloses a crank as claimed (instant claim 8) [0010 & 0046-0049]. Further, as pertaining to the friction means, the toothed bars being arranged above each in parallel i.e. two racks (24) would constitute the friction means [0041-0042].
It would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Bortoli and Wanner, with the handling means, the first rack and pinion, as well as the crank and friction means, as disclosed by Bortoli 2, to arrive at the instant invention, in order to obtain a welder that is reliable and easy in use [0029] and compact and structurally simple [0028].
Regarding claim 12, Bortoli 2 also discloses a handle associated with the clamping units and fastening and alignment device (i.e. locking clamps and carriage which support the locking clamps [0035]) (handwheel 23) interpreted as the handle (Figure 1; 0040 & 0043).
It would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Bortoli and Wanner, with the handle, as disclosed by Bortoli 2, to arrive at the instant invention, in order to obtain a welder that is reliable and easy in use [0029] and compact and structurally simple [0028].
Regarding claim 15, Bortoli 2 has disclosed an articulated arm and has disclosed it being provided to the footing (i.e. base) and to the heating device, wherein the heating device is movable by the arm to a welding position and wherein the heating device couples and engages the ends [0005] of the tubular elements [0011-0017].
It would have been obvious to an ordinarily skilled artisan to have modified the apparatus of Bortoli, with the swinging arm, as disclosed by Bortoli 2, to arrive at the instant invention, in order to allow the heating element to be interposed with the sleeve between the two carriages to allow the insertion of pipes in the sleeve [0012].
Allowable Subject Matter
Claims 4 & 10-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not reasonably show or suggest the claimed subject matter of instant claim 4, and instant claim 10, specifically. Claim 11 is dependent on instant claim 10, but does not contain allowable subject matter as such. The prior art of record does not reasonably show or suggest the 'pin protruding cantilevered from said base and fitting into a corresponding seat, wherein the pin has a self-centering hole substantially shaped as a funnel and interacting with said substantially pointed end of said threaded pin to receive said threaded pin' (claim 4), and the limitations pertaining to the bevel gear (claim 10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US-20190255642-A1, US-3688072-A, US-3672247-A, US-3649799-A, DE-2734911-A1, all drawn to various welders and welding devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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