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 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 1-13 and 15-17 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.
With regards to claim 1, the claim sets forth that the gripping tool comprises a frame and a holding system, however the claim is rendered indefinite since it lacks any mechanical relationship between the frame and the holding system. Specifically, the claim currently reads as a kit claim with the frame and holding system being separate elements not mechanically connected to one another, however based on the disclosure and drawings the gripping tool comprises both of these elements connected to one another always.
There appears to be insufficient antecedent basis for the limitation “the grasping tool” found in 16 and 18. It is noted that it is unclear if this is an additional structure or if this is intending to refer to the gripping tool of the preamble. For examination purposes the limitation is being interpreted as referring to the gripping tool. It is noted that claim 3 recites “said grasping tool” in 13 as well.
With regards to claims 8 & 10-12, claim 8 states “a grasping tool according to claim 1”, this renders the claim indefinite since the preamble of claim 1 is directed to a gripping tool but also recites a grasping tool within the body of the claim, therefore it is unclear if the limitation of claim 8 is intending to refer to gripping tool according to claim 1 or if it is intending to refer to the grasping tool recited within the body of the claim. For examination purposes the limitation is being interpreted as referring to the gripping tool of claim 1. It is noted that claims 10-11 recite the limitation “the grasping tool” also.
With regards to claims 13 and 15-17, the subject matter of the claims are couched in a narrative format, i.e. is provided, etc. which does not lend itself to a clear understanding of the essential steps of the method. Specifically, the method does not recite any clear steps such that one of ordinary skill in the art would be able to replicate the claimed method. Positively setting forth the method as a series of steps with the essential features of each step being distinctly claimed would overcome the indefiniteness with regard to the inferential claimed provision. Applicant is respectfully reminded that to be entitled to patentable weight in method claims, the structural limitations recited therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure [see Ex parte Pfeiffer, 135 USPQ 31 (1961)]. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced, e.g. it doesn't begin a step with a gerund term.
Claim 13 states “a grasping tool according to claim 1”, this renders the claim indefinite since the preamble of claim 1 is directed to a gripping tool but also recites a grasping tool within the body of the claim, therefore it is unclear if the limitation of claim 13 is intending to refer to gripping tool according to claim 1 or if it is intending to refer to the grasping tool recited within the body of the claim. For examination purposes the limitation is being interpreted as referring to the gripping tool of claim 1. It is noted that claims 15-17 recite the limitation “the grasping tool” also.
With regards to claim 17, the claim states “the method uses an assembly comprising the grasping tool and a robotic system”, this renders the claim indefinite since it is unclear how the assembly is used within the method. Specifically, the claim lacks any steps further defining the method of use of the assembly. Clarification and/or correction is required.
Allowable Subject Matter
Claims 1-13 and 15-17 would be allowable if rewritten or amended 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.
It is the opinion of the examiner that the art of record (considered as a whole) neither anticipates nor renders obvious “means for adjusting said centre distance including a slide system between the first recessing system and the second recessing system, allowing an adjustment of the separation between the first recessing system and the second recessing system” in combination with the rest of the claimed limitations set forth in claim 1.
WO 2019/045189 to Lee discloses a gripping tool comprising of a frame (101) equipped with a fastening part configured to be manipulated by a robotic system, and a holding system comprising a first recessing system comprising a first housing (111) configured to receive part of an end of a first rolling roll and a second rolling roll and a second recessing system comprising a second housing (112) configured to receive part of an end of a first rolling roll and second rolling roll.
The prior art neither alone nor in combination, anticipates nor renders obvious the claimed invention, and no motivation is found to modify the prior art to obtain the claimed invention. To modify the prior art to obtain the claim invention would destroy the workability of Lee since it would require different movement
It is noted that the indication of the allowability of claims 1-13 & 15-17 is based on the claim interpretation set forth above given the indefiniteness of the claims. Should the claims be amended to conflict with the examiner’s interpretation as set forth above or broaden from the interpretation above the allowability of the claims may be revoked.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725
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