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
Newly submitted claim 12 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claim 12 recites a lateral hole (another hole different from the lateral opening).
The previously examined claims, for example claim 2 shows a ring shape of the insert, have two-way distinction and a search burden compared to the new claim 12 (search for another lateral opening or hole). For an example:
The die of claim 2 does not require the lateral hole of claim 12, and conversely, the die of claim 12 does not require a ring shape of the insert of claim 2.
Since applicant has received an action on the merits for the originally presented and elected invention, claim 12 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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.
Claim 7 is 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 7 “the form of a counterbore” lacks of antecedent basis for the limitation in the claim. This recitation is indefinite because it is unclear what the form of a counterbore is defined in the claims or whether it refers a previous structure or an inherent structure.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-11, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto (US 2001/0054344) in view of Achler (US 3765285).
Regarding claim 1, Sakamoto shows a punching die (Figures 1A, 1B) comprising:
a mount (a die holder body 13 including a chamber 14, Figure 1A) having a hollow interior (19);
an insert (a die 5) accommodated in a front end of the mount (see the die 5 on a front end of the die holder 13, Figure 1A), and the insert defining a through hole of the punching die (a central hole of the die 5, Figure 1A);
a shank (13, 2, Figure 1A) extending from a rear end of the mount, the shank being configured for fixing the punching die to a pressing tool (figure 2).
However, Sakamoto fails to discuss a lateral opening formed in a side wall of the mount between the insert and the shank, the lateral opening being configured for removing a punched slug from the hollow interior of the mount.
Achler shows a die (Figure 16) having an insert (103) mounted in a mount (192), wherein the mount comprises a lateral opening (exit chute 104) between the insert and a shank of the mount for removing a punched slug.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the exit opening of the mount of Sakamoto to be a lateral opening, as taught by Achler, in order to allow to redirection for a punching slug and discharging the slug laterally.
Regarding claim 2, the modified die of Sakamoto shows that the insert is a ring (see the die 5 in figure 1B; it is circular shape and has a central hole or a square hole).
Regarding claim 3, the modified die of Sakamoto shows that the insert is clamped into a recess of the mount (13a, Figure 1A), and wherein the insert is formed so as to establish an interference fit in the recess (Figure 1A shows the die 5 is an interference fit in the recess or hole 13a).
Regarding claim 4, the modified die of Sakamoto shows that the recess includes a circumferential groove (a seat 13b, Figure 1A) in which an elastic ring accommodated (Para. 18 “the chamber 14 is a ring-shaped container”. Please read an entire of the Para. 18 for “elastic”).
Regarding claim 5, the modified die of Sakamoto shows that the insert is made of a harder material than the mount (see Figure 1A shows the insert is the die 5 and the chamber 14 is an elastic ring and see Para. 18 “The peripheral wall section 14a on the inner peripheral side can be elastically expanded toward an inner diameter side of the chamber 14 under the pressure of the working fluid 16 inside the chamber 14” that is an inherent material less hardness than a material of the die),
Regarding claim 6, the modified die of Sakamoto shows that the insert is configured so as to be removable from the mount (Para. 23 “remove the die 5, the die 5 can be replaced with new one…”).
Regarding claim 7, the modified die of Sakamoto shows that the recess is in a form of a counterbore with a collar engaging below the insert (see Figure 1A below, the counterbore is for the insert 5 seat therein formed a collar).
Regarding claim 8, the modified die of Sakamoto shows that the through hole has an undercut (Figure 1A below).
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Regarding claim 9, the modified die of Sakamoto shows a punching tool (Figure 2), comprising the punching die according to claim 1 (see the discussion in claim 1 above).
Regarding claim 10, the modified die of Sakamoto teaches a method “for punching holes into high-strength car body panels” (as it is written, this method does not provide any step to tie in with high-strength car body panels, therefore, the high-strength car body panels are intended use limitation, therefore, Figure 2 of Sakamoto can be performed high-strength car body panels) comprising: punching a first hole with the punching die according to claim 1 (see the discussion in claim 1); and thereafter exchanging the insert for a new insert (a new one as discussed in claim 6) and punching a second hole (for later punching new holes or Figures 2-3 shows the plurality of dies or inserts and they can be exchanged or rotated to punch one hole to another hole).
Regarding claim 11, the modified die of Sakamoto shows that the shank is arranged coaxial with the through hole (see Figure 16 of Achler).
Regarding claim 13, the modified die of Sakamoto shows all of the limitations as stated above including the lateral opening (see the modification above), but it is generally rectangular with rounded corners.
Since the applicant had not pointed out the criticality of why the lateral opening should be generally rectangular with rounded corners (Applicant’s specification does not mention the generally rectangular with rounded corners. It appears that the shape of the lateral opening is NOT criticality).
Therefore, it would have been an obvious matter of design choice to make the lateral opening of whatever form or shape was desired or expedient, including a generally rectangular with rounded corners. Furthermore, the shape of the lateral opening is merely a recognized equivalent way, since applicant has not disclosed that having any specific shape (generally rectangular with rounded corners) of the lateral opening solve any stated problem or is for any particular purpose, and it appears that the circular lateral opening would perform equally well while being constructed of a generally rectangular with rounded corners. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey etal., 149 USPQ 47. Since a change in shape of a lateral opening involves only routine skill in the art for easily removing the slug.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto in view of Achler and Karl (US 3710666).
Regarding claim 2, this is an alternative rejection if one argue that Sakamoto’s insert or die is NOT in form a ring, then see Karl’s Figure 2 that shows a die (25) wherein the die is in form a ring (see Figure 3 having a circle bore 26).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the die of Sakamoto to have a circular bore, as taught by Karl, in order to allow to punch workpieces into circular pieces.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any teaching or matter specifically challenged in the argument. See the new art.
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
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 NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 4/1/2026