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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-7 in the reply filed on 01/22/2026 is acknowledged.
Claims 8, 10-18 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method of machining and apparatus, Groups II and III there being no allowable generic or linking claim.
Applicant timely traversed the restriction requirement in the reply filed on 01/22/2026. The traversal for the restriction among groups is on the ground(s) that the Inventions I and II and II and III “relate to reducing an outer diameter of a seal ring and thus involve the same product and clearly overlap in scope…and there is no different design as alleged and instead there is a clear overlap between Invention I and III. Consequently, a serious burden to examine the claims…is not evident on the present record”. This is not found persuasive.
Inventions I and III are distinct because as claimed are not capable of use together or can have a materially different design, mode of operation, function, or effect; the inventions are mutually exclusive; and the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed each have a different design and mode of operation. Note that invention I forms a wedge-shaped receiving cavity to secure the seal ring while an outer diameter of the seal ring is reduced while invention Il forms a triangular shaped receiving cavity which centers a seal ring relative to a finishing apparatus such that the seal ring is retained while a portion of the seal ring extend radially from peripheral surfaces.
In apparatus claims, 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. Thus, on this basis, the claimed apparatus is not limited to be used for finishing a seal ring and Groups I and II, and II and III are patentably distinct.
Further, method claims require for the actual method steps limitations, at least to be search on: 1) areas different from areas where apparatus claims have been classified, and 2) on areas that do not automatically encompass the apparatus per se. Method claims require additional limitations to be searched, which are beyond the scope of searching apparatus limitations. For this, there is a search burden and different searches or search queries will have to be done.
MPEP Section 808 states:
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required . . . .
The MPEP expands upon part (B) in Section 808.02 (titled “Establishing Burden”). Specifically, Section 808.02 recites the following:
Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Note that it is only necessary to show one of (A), (B), or (C) to establish a serious burden. In the instant case, at least part (C) of Section 808.02 has been established. On Pages 2-3 of the restriction requirement mailed on 12/01/2025, Examiner noted that, at the very least, that 1) each group as claimed has a separate classification (see page 2) and 2) different areas of search, search queries and search strategies would be necessary to examine the different groups as claimed. Thus, burden has been properly established and the Restriction requirement is still deemed proper.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 2 is objected to because of the following informalities: for consistency purposes the “angle surfaces” of line 3, should be “the angled surfaces”. Appropriate correction is required.
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: finishing apparatus in claim 1; and fastening mechanism in claims 4 and 5.
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 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 1-7 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 “a finishing apparatus for use in reducing an outer diameter of a seal ring”. However, it is unclear how exactly this apparatus is catalogued as a “finishing” apparatus for use in reducing an outer diameter of a seal ring, absent any structure that permits this “finishing” and “reducing” an outer diameter of a seal ring. As best understood, the apparatus is a clamp, that clamps a workpiece. As such, it is unclear how exactly a clamp also finishes and reduced an outer diameter of a seal ring. Further clarification is needed.
Claim 1 recites the term “when” in line 5. However, the term “when” is a conditional term that renders the claim indefinite as it is unclear if the angled surface that is spaced a distance from the first peripheral angled surface, when the finishing apparatus is assembled, is part of the claim or not. What happens when the finishing apparatus is not assembled? Further clarification is needed.
Claim 1 recites “a wedge-shaped receiving cavity that is shaped complementary to a shape of an inner diameter of the seal ring” in lines 6-7. It is unclear in what sense “complementary” is being recited. Is it that the inner diameter of the seal is also wedge shaped? Or is the complement, to the diameter? Further clarification is needed.
Claim 2 recites “the stem cooperating with the first and second peripheral angle surfaces” in lines 2-3. It is unclear what is the “cooperating” relationship between the stem and the first and second peripheral angled surfaces. How is the stem cooperating with the first and second peripheral angle surfaces. Further clarification is needed.
Claim 4 recites “the fasteners” in line 3. There is insufficient antecedent basis for “the fasteners” since no “fasteners” have been previously introduced in the claim. Further clarification is needed.
Claim 5 recites “to enable a substantially constant compressive force to be induced to the seal ring” in lines 2-3. However, it is unclear how exactly a substantially constant compressive force to be induce to the seal ring is actually being enabled. Further clarification is needed.
Claim 6 recites “the finishing tool enables a lathe to reduce an outer diameter of the seal ring” in lines 1-2. First there is insufficient antecedent basis for “the finishing tool” as no “finishing tool” has been previously introduced in the claim. Second, it is unclear how exactly this tool enables a lathe to reduce an outer diameter of the seal ring. Further clarification is needed.
Claim 7 recites “the tool” in line 2. There is insufficient antecedent basis for “the tool” as no “tool” has been previously introduced in the claim. Further clarification is needed.
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 a first interpretation:
In regards to claim 1, CN’220 discloses a finishing apparatus for use in reducing an outer diameter of a seal ring, wherein the finishing apparatus comprises: a first plate including a first peripheral angled surface; and a second plate including a second peripheral angled surface that is spaced a distance from the first peripheral angled surface when the finishing apparatus is assembled, wherein the first and second peripheral angled surfaces define at least a portion of a wedge-shaped receiving cavity that is shaped complementary to a shape of an inner diameter of the seal ring to facilitate securing the seal ring in position relative to the finishing apparatus while the outer diameter of the seal ring is finished to a pre-determined size. See annotated Figure 3 below.
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In regards to claim 2, CN’220 discloses the finishing apparatus of claim 1, CN’220 also discloses a stem extending from an upper surface of the first plate, the stem cooperating with the first and second peripheral angle surfaces (in the same way Applicant’s stem “cooperates” with the first and second peripheral angle surfaces) to facilitate self-centering of the seal ring with respect to the finishing apparatus. See annotated Figure 3 above.
In regards to claim 3, CN’220 discloses the finishing 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. See annotated Figure 3 above.
In a second interpretation:
In regards to claim 1, CN’220 discloses a finishing apparatus for use in reducing an outer diameter of a seal ring, wherein the finishing apparatus comprises: a first plate including a first peripheral angled surface; and a second plate including a second peripheral angled surface that is spaced a distance from the first peripheral angled surface when the finishing apparatus is assembled, wherein the first and second peripheral angled surfaces define at least a portion of a wedge-shaped receiving cavity that is shaped complementary to a shape of an inner diameter of the seal ring to facilitate securing the seal ring in position relative to the finishing apparatus while the outer diameter of the seal ring is finished to a pre-determined size. See annotated Figures 3 and 4 below.
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In regards to claim 2, CN’220 discloses the finishing apparatus of claim 1, CN’220 also discloses a stem extending from an upper surface of the first plate, the stem cooperating with the first and second peripheral angle surfaces (in the same way Applicant’s stem “cooperates” with the first and second peripheral angle surfaces) to facilitate self-centering of the seal ring with respect to the finishing apparatus. See annotated Figures 3 and 4 above.
In regards to claim 3, CN’220 discloses the finishing 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. See annotated Figures 3 and 4 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 a first interpretation:
In regards to claim 1, CN’480 discloses a finishing apparatus for use in reducing an outer diameter of a seal ring, wherein the finishing apparatus comprises: a first plate (1-1) including a first peripheral angled surface (1-2); and a second plate (2-1) including a second peripheral angled surface (2-2) that is spaced a distance from the first peripheral angled surface when the finishing apparatus is assembled (see Figure 1), wherein the first and second peripheral angled surfaces define at least a portion of a wedge-shaped receiving cavity that is shaped complementary to a shape of an inner diameter of the seal ring to facilitate securing the seal ring in position relative to the finishing apparatus while the outer diameter of the seal ring is finished to a pre-determined size. See Figures 1-2.
In regards to claim 2, CN’480 discloses the finishing apparatus of claim 1, CN’480 also discloses a stem (3, 3-1, 3-2, 3-3, 3-4, 3-5) extending from an upper surface of the first plate, the stem cooperating with the first and second peripheral angle surfaces (in the same way Applicant’s stem “cooperates” with the first and second peripheral angle surfaces) to facilitate self-centering of the seal ring with respect to the finishing apparatus. See Figures 1-2 and 4.
In regards to claim 3, CN’480 discloses the finishing 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. See Figures 3 and 4.
In regards to claim 4, CN’480 discloses the finishing apparatus of claim 3, CN’480 also discloses a plurality of fastening mechanisms (4-1) extending through a plurality of holes defined in the first and second plates, wherein the fasteners (4-1) facilitate securing the seal ring within the finishing apparatus. See Figures 1 and 2.
In regards to claim 5, CN’480 discloses the finishing apparatus of claim 4, CN’480 also discloses that the plurality of fastening mechanisms (4-1) are spaced circumferentially to be capable of enabling a substantially constant compressive force to be induced to the seal ring. See Figures 1 and 2.
In regards to claim 6, CN’480 discloses the finishing apparatus of claim 5, CN’480 also discloses that the finishing tool is capable of enabling a lathe to reduce an outer diameter of the seal ring.
In regards to claim 7, CN’480 discloses the finishing apparatus of claim 5, CN’480 also discloses that the stem (via 3-5) is capable of being rotatable with respect to the tool.
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 either first interpretation and/or second interpretation of 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 finishing apparatus of claim 3, CN’220 also discloses further comprising a fastening mechanism (1) extending through a hole defined in the first and second plates, wherein the fastener (1) facilitate securing the seal ring within the finishing apparatus.
However, CN’220 fails to disclose a plurality of fastening mechanisms.
CN’480 teaches that it is well known in the art to have a plurality of circumferentially spaced apart fastening mechanisms extending through holes defined in 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 finishing apparatus of claim 4, CN’220 as modified also discloses that the plurality of fastening mechanisms (modified CN’220) are spaced circumferentially (modified CN’220) so as to be capable of enabling a substantially constant compressive force to be induced to the seal ring.
In regards to claim 6, CN’220 as modified discloses the finishing apparatus of claim 5, CN’220 as modified also discloses that the finishing tool is capable of enabling a lathe to reduce an outer diameter of the seal ring (second interpretation of CN’220).
In regards to claim 7, CN’220 as modified discloses the finishing 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 tool (e.g. a tool that machines seal of the second interpretation of CN’220).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K 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.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722