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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/04/2026 has been entered.
Claim Rejections - 35 USC § 102
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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 116214220 (hereafter—CN’220--).
;In regards to claim 1, CN’220 discloses a clamping apparatus capable of being used for reducing an outer diameter of an oversized seal ring having a cross-sectional wedge shape including inclined inner edge surfaces culminating at a pointed leading end edge and an oversized outer diameter extending opposite the pointed leading end edge, wherein the clamping apparatus comprises: a first plate (annotated below) including a first peripheral angled surface (annotated below) and a first outer diameter (D1 annotated below) that is capable of being less than the oversized outer diameter of the oversized seal ring; a second plate (annotated below), the second plate including a second peripheral angled surface (annotated below) that is spaced a distance from the first peripheral angled surface and a second outer diameter (D2 annotated below) that is capable of being less than the oversized outer diameter of the oversized seal ring, wherein the first and second peripheral angled surfaces define a wedge-shaped receiving cavity (annotated below) capable of receiving the inclined inner edges of the oversized seal ring; and the second plate being fastened to the first plate capable of providing a clamping force (due to the clamping generated when actuating bolt 1, so as to squeeze first and second plates together) about the inclined inner edge surfaces of the wedge shape of the oversized seal ring by virtue of the first and second peripheral angled surface, whereby the oversized seal ring capable of being securely held in position with the oversized diameter projecting from the first and second plates to facilitate a reduction of the oversized outer diameter of the oversized seal ring. See annotated Figure 3 below. Regarding the intended use limitations “for reducing an outer diameter of an oversized seal ring having a cross-sectional wedge shape including inclined inner edge surfaces culminating at a pointed leading end edge and an oversized outer diameter extending opposite the pointed leading end edge” it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a “recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations”, if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) See MPEP 2114. CN’220’s discloses the structural limitations of a clamping structure having a first plate including a first peripheral angled surface and a first outer diameter; a second plate including a second peripheral angled surface that is spaced a distance from the first peripheral angled surface and a second outer diameter, the first and second peripheral angled surfaces defining a wedge-shaped receiving cavity; and the second plate being fastened to the first plate (see annotated Figure 3 below); thus the clamping structure is capable of capable of being used for reducing an outer diameter of an oversized seal ring having inclined inner edge surfaces culminating at a pointed leading end edge, due to the wedge-shaped cavity defined by first and second peripheral angled surface as set forth above.
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In regards to claim 2, CN’220 discloses the clamping apparatus of claim 1, CN’220 also discloses a stem extending from a central upper surface of the first plate. See annotated Figure 3 above.
In regards to claim 3, CN’220 discloses the clamping apparatus of claim 2, CN’220 also discloses that the second plate further includes a central opening sized to receive a portion of the stem therethrough; wherein by virtue of the stem, the central opening and the first and second peripheral angled surfaces, the wedge shape of the oversized seal ring is capable of self-centering with respect to the first plate and the second plate. See annotated Figure 3 above.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 115383480 (hereafter—CN’480--).
In regards to claim 1, CN’480 discloses a clamping apparatus capable of being used for reducing an outer diameter of an oversized seal ring having a cross-sectional wedge shape including inclined inner edge surfaces culminating at a pointed leading end edge and an oversized outer diameter extending opposite the pointed leading end edge, wherein the clamping apparatus comprises: a first plate (1-1) including a first peripheral angled surface (1-2) and a first outer diameter (D1 annotated below) that is capable of being less than the oversized outer diameter of the oversized seal ring; a second plate (2-1), the second plate including a second peripheral angled surface (2-2) that is spaced a distance from the first peripheral angled surface and a second outer diameter (D2 annotated below) that is capable of being less than the oversized outer diameter of the oversized seal ring, wherein the first and second peripheral angled surfaces define a wedge-shaped receiving cavity capable of receiving the inclined inner edges of the oversized seal ring; and the second plate being fastened to the first plate capable of providing a clamping force (due to the clamping generated when actuating bolts 4-1, so as to squeeze first and second plates together) about the inclined inner edge surfaces of the wedge shape of the oversized seal ring by virtue of the first and second peripheral angled surface, whereby the oversized seal ring capable of being securely held in position with the oversized diameter projecting from the first and second plates to facilitate a reduction of the oversized outer diameter of the oversized seal ring. See Figures 1-2. Regarding the intended use limitations “for reducing an outer diameter of an oversized seal ring having a cross-sectional wedge shape including inclined inner edge surfaces culminating at a pointed leading end edge and an oversized outer diameter extending opposite the pointed leading end edge” it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a “recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations”, if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) See MPEP 2114. CN’480’s discloses the structural limitations of a clamping structure having a first plate including a first peripheral angled surface and a first outer diameter; a second plate including a second peripheral angled surface that is spaced a distance from the first peripheral angled surface and a second outer diameter, the first and second peripheral angled surfaces defining a wedge-shaped receiving cavity; and the second plate being fastened to the first plate; thus the clamping structure is capable of capable of being used for reducing an outer diameter of an oversized seal ring having inclined inner edge surfaces culminating at a pointed leading end edge, due to the wedge-shaped cavity defined by first and second peripheral angled surface as set forth above.
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In regards to claim 2, CN’480 discloses the clamping apparatus of claim 1, CN’480 also discloses a stem (3, 3-1, 3-2, 3-3, 3-4, 3-5) extending from a central upper surface of the first plate. See Figures 1-2 and 4.
In regards to claim 3, CN’480 discloses the clamping apparatus of claim 2, CN’480 also discloses that the second plate further includes a central opening (where 3-2 assembles to portion 3-1) sized to receive a portion of the stem therethrough, wherein by virtue of the stem, the central opening and the first and second peripheral angled surfaces the wedge shape of the oversized seal ring is capable of self-centering with respect to the first plate and the second plate.
In regards to claim 4, CN’480 discloses the clamping apparatus of claim 3, CN’480 also discloses that the first plate and the second plate each include a plurality of fastener holes (holes where fasteners 4-1 are being disposed into as in Figures 1 and 2), and wherein when the plurality of fastener holes of the first plate and the second plate are respectively aligned with one another a plurality of fasteners (4-1) are respectively extended through the aligned fastener holes so as to be capable of providing the clamping force. See Figures 1 and 2.
In regards to claim 5, CN’480 discloses the clamping apparatus of claim 4, CN’480 also discloses that the plurality of fasteners (4-1) are uniformly spaced circumferentially apart from one another so as to be capable of enabling a substantially constant compressive clamping force to be induced to the inclined inner edge surfaces of the wedge shape of the oversized seal ring. See Figures 1 and 2.
In regards to claim 6, CN’480 discloses the clamping apparatus of claim 5, CN’480 also discloses that the constant compressive force is capable of enabling a lathe to accurately reduce the oversized outer diameter of the seal ring while clamped in the apparatus.
In regards to claim 7, CN’480 discloses the clamping apparatus of claim 5, CN’480 also discloses that the stem (via 3-5) is capable of being rotatable with respect to the lathe.
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) 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 116214220 (hereafter—CN’220--) as applied to claim 3 above, in view of CN 115383480 (hereafter—CN’480--).
In regards to claim 4, CN’220 discloses the clamping apparatus of claim 3, CN’220 also discloses that the first plate and the second plate each include a fastener hole (where fastener 1 is being inserted into) and, wherein when the fastener hole of the first plate and the second plate are respectively aligned with one another a fastener (1) is respectively extended through the aligned fastener hole so as to be capable of providing the clamping force.
However, CN’220 fails to disclose a plurality of fastening holes and a plurality of fasteners.
CN’480 teaches that it is well known in the art to have a plurality of circumferentially spaced apart fastening holes and fasteners extending through and being defined in each of the first and second plates.
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed to duplicate the fastening mechanism of CN’220 so as to include a plurality of fastening mechanisms based on the teachings of CN’480 as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
In regards to claim 5, CN’220 as modified discloses the clamping apparatus of claim 4, CN’220 as modified also discloses that the plurality of fasteners (modified CN’220) are uniformly spaced circumferentially apart from one another (modified CN’220) so as to be capable of enabling a substantially constant compressive clamping force to be induced to the inlined inner edge surfaces of the wedge shape of the oversized seal ring.
In regards to claim 6, CN’220 as modified discloses the clamping apparatus of claim 5, CN’220 as modified also discloses that the constant compressible force is capable of enabling a lathe to accurately reduce the oversized outer diameter of the oversized seal ring while being clamped in the apparatus.
In regards to claim 7, CN’220 as modified discloses the clamping apparatus of claim 5, CN’220 as modified also discloses that the stem (of CN’220) is capable of being rotatable with respect to the lathe.
Response to Arguments
Applicant's arguments filed 09/04/2026 have been fully considered but they are not persuasive.
Applicant goes on at length that the particulars of the oversized seal ring are not being disclosed on the prior art. Applicant for example argues on page 5 that “CN’220 nowhere disclosed an oversized seal ring having the structure recited, and nowhere describes any reduction of the oversized outer diameter of the oversized seal ring”. Examiner disagrees.
However, the scope of the claimed invention is to a clamping structure capable of clamping a seal ring having an oversized shape, and not to the actual structure of the seal ring. The claim is not to a combination of a clamping structure plus an oversized seal ring. Thus, it has been noted that 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. Since as set forth in the rejection above, CN’220’s discloses the structural limitations of a clamping structure having a first plate including a first peripheral angled surface and a first outer diameter; a second plate including a second peripheral angled surface that is spaced a distance from the first peripheral angled surface and a second outer diameter, the first and second peripheral angled surfaces defining a wedge-shaped receiving cavity; and the second plate being fastened to the first plate (see annotated Figure 3 above); thus the clamping structure of CN’220 is capable of capable of being used for reducing an outer diameter of an oversized seal ring having inclined inner edge surfaces culminating at a pointed leading end edge, due to the wedge-shaped cavity defined by first and second peripheral angled surface as set forth above. As such, the Examiner’s interpretation is not precluded.
In re “nowhere describes any reduction of the oversized outer diameter of the oversized seal ring” the Examiner notes that the claim is to an apparatus, and not to a method. Since again, the claimed structure has been disclosed by CN’220, then CN’220 anticipates the claimed invention.
Applicant states on page 5 of the Remarks that “a subjective opinion of the Examiner is not enough to support the present rejection. Instead, the Examiner must prove with extrinsic evidence that the cited art inherently discloses the capability in order to establish a prima facie case of rejection” and cited MPEP sections 2163 and 2112 to support this rationale. The Examiner disagrees as discussed below:
The Examiner is viewing the prior art through the lens of one having ordinary skill in the art in that one of ordinary skill in the art viewing the prior art used in the rejection above, CN’220, would find that the clamping structure of CN’220 is capable of performing the intended function, as CN’220 discloses all of the claimed structural elements. See rejection above.
The rejection was an anticipation rejection, where the Examiner relied upon intended use and not on inherency as alleged by Applicant. CN’220’s discloses the structure as claimed, and as such, the structure of CN’220 is capable of being used for the intended function.
MPEP section 2163 sets forth “Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph, "Written Description"”, thus it is unclear what specifics about this section pertain to “inherency”.
Section 2112 of the MPEP sets forth the requirements of rejection based on Inherency. However, the Examiner did not rely on inherency but on the intended used of the claimed invention. All the structure claimed, which pertains to a clamping apparatus is disclosed by CN’220.
Applicant states on page 6 that “since not extrinsic evidence has not been supplied in the Final Office Action, and because the Examiner’s “position” is merely conclusory, there is not basis in fact or technical reasoning to support the rejection as articulated”. Examiner disagrees. Examiner is not required to provide extrinsic evidence to support the anticipation rejection. Examiner simply interprets the reference through the lens of one having ordinary skill in the art. The purported requirement of extrinsic evidence by applicant is misplaced. That requirements relates to inherency. The rejection does not rely on inherency. As such, the is not conclusory, but instead relies on the prior art disclosure.
In response to applicant's argument on page 6 that “the apparatus of CN’220 addresses a different problem and proposes a different solution than the Applicant’s invention”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). CN’220 discloses all of the structural limitations of claim 1 as set forth in the rejection above, and thus anticipates the claim.
Applicant argues on page 8 of the remarks that “The outer diameter of the rubber ring is not specified in CN'220, but in Fig. 9 the ring is seen to have a cross-sectional diameter φG, so the uncompressed outer diameter of the rubber ring 3 is equal to φG+φK+φG. No numerical dimensions of φK, φG or φB are specified…Silence and ambiguity cannot support the rejection in this aspect either. Such ambiguity includes the possibility that the outer dimension of the ring is equal to or smaller than φB, and the Office may not presume that the outer diameter of the rubber ring 3 meets the claimed subject matter. The Examiner respectfully disagrees and points Applicant to the rejection above for details. It is noted that the arguments of counsel regarding CN’220 “the outer diameter of the rubber ring is not specified in CN'220, but in Fig. 9 the ring is seen to have a cross-sectional diameter φG, so the uncompressed outer diameter of the rubber ring 3 is equal to φG+φK+φG” appear to be an assertion of what seems to follow from common experience. However, arguments of counsel cannot take the place of evidence in the record. See MPEP § 2145 I (The arguments of counsel cannot take the place of evidence in the record.) (citing In re Schulze, 346 F.2d 600, 602 (CCPA 1965)). As discussed in the rejection above, because CN’220 is capable of performing the intended function, for the reasons already discussed above, it anticipates the claim. The Examiner points out as well, to the annotated Figure 3 of CN’220 in the rejection above, for explanation purposes on Examiner’s interpretation.
Applicant argues in pages 8-9 of the Remarks, that CN’480 does not anticipate the claimed invention as set forth in claim 1, because in CN’480 there is no disclosure “of an oversized ring or any reduction of a diameter of a seal ring with a clamping apparatus”. However, the scope of the claimed invention is to a clamping structure capable of clamping a seal ring having an oversized shape, and not to the actual structure of the seal ring or to the reduction of a diameter of the seal ring. The claim is not to a combination of a clamping structure plus an oversized seal ring. Thus, it has been noted that 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. Since as set forth in the rejection above, CN’480’s discloses the structural limitations of a clamping structure having a first plate (1-1) including a first peripheral angled surface (1-2) and a first outer diameter; a second plate (2-1) including a second peripheral angled surface (2-2) that is spaced a distance from the first peripheral angled surface and a second outer diameter, the first and second peripheral angled surfaces defining a wedge-shaped receiving cavity; and the second plate being fastened to the first plate; then the clamping structure is capable of capable of being used for reducing an outer diameter of an oversized seal ring having inclined inner edge surfaces culminating at a pointed leading end edge, due to the wedge-shaped cavity defined by first and second peripheral angled surface as set forth above.
The Examiner notes that no arguments challenging the combination of CN 116214220 (hereafter—CN’220--) with the teachings of CN 115383480 (hereafter—CN’480--) for claims 4-7, as previously set forth on action sent on 07/02/2026, were made. The same rejection was made above as aforementioned.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
