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 .
Withdrawn Rejections
Any rejections made in the previous Office Action mailed on 11/5/2025 and not repeated below are hereby withdrawn due to Applicant's amendment filed on 2/2/2026.
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, 2, 4-7 and 15-18 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 the limitations "the at least two parts" in line 9 and “the parts” in line 16. There is insufficient antecedent basis for these limitations in the claim. It is unclear if referring to the “at least two separate parts” or different parts.
Claims 2, 4-7 and 15-17 are also rejected as being dependent on claim 1 and including the indefinite aspects thereof.
Claim 18 recites the limitation “the parts” in lines 4, 6 and 11. There is insufficient antecedent basis for this limitation in the claim. It is unclear if referring to the “at least two separate, rigid parts” or different parts.
Claim 18 recites the limitation “the level of the perforation” in lines 12-13. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 recites the same limitations as recited in claim 7 and both depend from claim 1. Therefore, claim 17 fails to further limit the subject matter of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 4-7 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Covington et al. (US 2003/0106799) [hereinafter Covington].
Regarding claim 1, Covington teaches a test piece (device; Figs. 3A-8A) comprising at least two separate parts (layers 51-53, 71-75, 101-105, 121-127, 161-165) based on thermoplastic materials (paragraphs [0016] and [0057-0060]) having surfaces to be welded that are at least partially placed opposite one another and respective free surfaces (Figs. 3A-8A; claims 1-2), wherein at least one of the parts is a perforated reference part (layers 51, 53, 71, 101,121, 161 and 162) comprising at least one perforation (holes 55, 56, 58, 59, 77, 78, 107, 108, 109, 130, 131, 167, 168) extending into an interior region of the perforated reference part prior to welding (Figs. 3A-8A; claims 1-2), wherein the at least two parts overlap at least in part (Figs. 3A-8A).
Claim 1 defines the product by how the product was made. The limitations “wherein the method comprises providing a welding installation comprising at least one heating element and at least one temperature sensor; providing heat by means of the heating element; measuring at least one internal temperature of the test piece by means of the temperature sensor at the level of the perforation; wherein the heating element and the temperature sensor move in a welding direction D relative to the parts to be welded during welding” are deemed process limitations. Thus, claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a piece comprising at least two separate parts based on thermoplastic materials having surfaces to be welded that are at least partially placed opposite one another and respective free surfaces, wherein at least one of the parts is a perforated reference part comprising at least one perforation extending into an interior region of the perforated reference part, wherein the at least two parts overlap at least in part. As shown above, Covington suggests such a product. The method of forming the product is not germane to the issue of patentability of the product itself. MPEP 2113.
Furthermore, the limitation “a test piece configured for the implementation of a method for evaluating an assembly by welding of parts made of thermoplastic materials” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “a test piece configured for the implementation of a method for evaluating an assembly by welding of parts made of thermoplastic materials” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Regarding claim 2, Covington discloses the perforation is a perforation that traverses all of the thickness of the perforated reference part (Figs. 3A-8A, holes 55, 56, 58, 59, 77, 78, 107, 108, 109, 130, 131, 167 and 168).
Regarding claim 4, Covington teaches the perforation is a perforation is circular cross-section (Figs. 3A-8A, holes 55, 56, 58, 59, 77, 78, 107, 108, 109, 130, 131, 167 and 168).
Regarding claim 5, Covington teaches the perforated reference part comprising at least two perforations that are aligned perpendicular to the welding direction (Figs. 3A-8A, holes 55, 56, 58, 59, 77, 78, 107, 108, 109, 130, 131, 167 and 168).
Regarding claim 6, Covington teaches the perforated reference part comprising at least two perforations that are aligned parallel to the welding direction (Figs. 3A-8A, holes 55, 56, 58, 59, 77, 78, 107, 108, 109, 130, 131, 167 and 168).
Regarding claims 7 and 17, Covington discloses the perforated reference part (layer 51 or layer 71 or layer 121) comprising at least one first section that is perforated (56, 77 or 130), one second section that is not perforated, and one third section that is perforated (55, 78 or 131), wherein the perforated sections respectively comprise at least one perforation and frame the non-perforated section (Figs. 3A, 4A and 6A).
Regarding claim 15, Covington teaches at least one other perforation which traverses part of a thickness of the piece (Figs. 3A-8A).
Regarding claim 16, Covington discloses the at least two separate parts are rigid parts (paragraph [0059]).
Regarding claim 18, Covington discloses a test piece (device) comprising at least two separate, rigid parts (Figs. 3A-8A, layers 51-53, 71-75, 101-105, 121-127, 161-165; paragraph [0059]) based on thermoplastic materials (paragraph [0059]) having surfaces to be welded that are at least partially placed opposite one another and respective free surfaces (Figs. 3A-8A; claims 1-2), wherein the parts are configured to overlap at least in part to define a weld interface region (Figs. 3A-8A; claims 1-2), wherein at least one of the parts is a perforated reference part (layers 51, 53, 71, 101,121, 161 and 162) comprising at least one perforation prior to welding (Figs. 3A-8A, holes 55, 56, 58, 59, 77, 78, 107, 108, 109, 130, 131, 167 and 168), and the perforation being positioned so as to open toward the weld interface region (Figs. 3A-8A).
The limitation “test piece” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “a test piece” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Furthermore, the limitations “to allow measurement of an internal temperature of the test piece at the weld interface region” and “being configured such that a heating element and a temperature sensor of a welding installation are movable relative to the parts in a welding direction during welding while the temperature sensor measures the internal temperature at the level of the perforation” are recitations of functional language. A recitation of the function 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. See MPEP 2114. If the prior art structure is capable of performing the function, then it meets the claim. As shown above, Covington clearly teaches all the structural limitations of the claimed test piece. Accordingly, the device (test piece) of Covington is capable of performing the functions recited in claim 18.
Claims 1, 2, 4-6, 15, 16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brozenick et al. (US 2004/0247828) [hereinafter Brozenick].
Regarding claim 1, Brozenick teaches a piece (article; Figs. 1-5) comprising at least two separate parts (support 20 and sheet 11) based on thermoplastic materials (paragraphs [0031] and [0040]) having surfaces to be welded that are at least partially placed opposite one another and respective free surfaces (Figs. 1-5; claim 1), wherein at least one of the parts (support 20) is a perforated reference part comprising at least one perforation (47) extending into an interior region of the perforated reference part prior to welding (Figs. 1-5; paragraph [0037]; claim 1), wherein the at least two parts overlap at least in part (Figs. 1-5, support 20 and sheet 11).
Claim 1 defines the product by how the product was made. The limitations “wherein the method comprises providing a welding installation comprising at least one heating element and at least one temperature sensor; providing heat by means of the heating element; measuring at least one internal temperature of the test piece by means of the temperature sensor at the level of the perforation; wherein the heating element and the temperature sensor move in a welding direction D relative to the parts to be welded during welding” are deemed process limitations. Thus, claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a piece comprising at least two separate parts based on thermoplastic materials having surfaces to be welded that are at least partially placed opposite one another and respective free surfaces, wherein at least one of the parts is a perforated reference part comprising at least one perforation extending into an interior region of the perforated reference part, wherein the at least two parts overlap at least in part. As shown above, Brozenick suggests such a product. The method of forming the product is not germane to the issue of patentability of the product itself. MPEP 2113.
Furthermore, the limitation “a test piece configured for the implementation of a method for evaluating an assembly by welding of parts made of thermoplastic materials” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “a test piece configured for the implementation of a method for evaluating an assembly by welding of parts made of thermoplastic materials” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Regarding claim 2, Brozenick discloses the perforation is a perforation (47) that traverses all of the thickness of the perforated reference part (Figs. 1-5, support 20).
Regarding claim 4, Brozenick teaches the perforation is a perforation with a square, rectangular, or circular cross-section (paragraph [0037]).
Regarding claim 5, Brozenick teaches the perforated reference part (support 20) comprising at least two perforations (47) that are aligned perpendicular to the welding direction (paragraph [0037]).
Regarding claim 6, Brozenick teaches the perforated reference part (support 20) comprising at least two perforations (47) that are aligned parallel to the welding direction (Figs. 1-5; paragraph [0037]).
Regarding claim 15, Brozenick teaches at least one other perforation which traverses part of a thickness of the piece (Fig. 4).
Regarding claim 16, Brozenick discloses the at least two separate parts are rigid parts (paragraph [0039]).
Regarding claim 18, Brozenick discloses a piece (article) comprising at least two separate, rigid parts (Figs. 1-5, support 20 and sheet 11; paragraph [0039]) based on thermoplastic materials (paragraphs [0031] and [0040]) having surfaces to be welded that are at least partially placed opposite one another and respective free surfaces (Figs. 1-5; claim 1), wherein the parts (support 20 and sheet 11) are configured to overlap at least in part to define a weld interface region (Figs. 1-5; claim 1), wherein at least one of the parts (support 20) is a perforated reference part comprising at least one perforation prior to welding (Figs. 1-5, perforation 47; paragraph [0037]), and the perforation (47) being positioned so as to open toward the weld interface region (Figs. 1-5).
The limitation “test piece” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “a test piece” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Furthermore, the limitations “to allow measurement of an internal temperature of the test piece at the weld interface region” and “being configured such that a heating element and a temperature sensor of a welding installation are movable relative to the parts in a welding direction during welding while the temperature sensor measures the internal temperature at the level of the perforation” are recitations of functional language. A recitation of the function 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. See MPEP 2114. If the prior art structure is capable of performing the function, then it meets the claim. As shown above, Brozenick clearly teaches all the structural limitations of the claimed piece. Accordingly, the article (piece) of Brozenick is capable of performing the functions recited in claim 18.
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.
Claims 7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Brozenick.
Brozenick teaches the claimed perforated reference part (support) having a plurality of perforations, wherein the perforations may have a wide range of shapes and sizes (paragraph [0037]), but fails to specifically teach the perforated reference part comprising at least one first section that is perforated, one second section that is not perforated, and one third section that is perforated, wherein the perforated sections respectively comprise at least one perforation and frame the non-perforated section. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the perforated reference part (support) in Brozenick to comprise at least one first section that is perforated, one second section that is not perforated, and one third section that is perforated, wherein the perforated sections respectively comprise at least one perforation and frame the non-perforated section, if so desired, in order to form the article and since such a modification would have involved a mere change in the shape of the perforations of the perforated part. A change in shape is generally recognized as being within the level of ordinary skill in the art. MPEP 2144.04.
Response to Arguments
Applicant’s arguments, filed 2/2/2026, with respect to claims 1, 2, 4-7 and 15-18 have been considered, but are moot in view of the new grounds of rejection and because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
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