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 .
Status of Claims
This office action is in reply to the preliminary amendment filed on August 1, 2024. Claims 1-10 have been amended. Claims 11-17 have been added. No further claims have been cancelled. Claims 1-17 are currently pending and have been fully examined.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 1, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
Therefore, the “planetary carrier pivotably connected to the operating shaft” (as in claim 1), must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Therefore, the “indexing device” (as in claims 9 and 16), must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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: “an embedding device configure to prevent rotational movement” in claims 7 and 14. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the embedding device” as being, “an adapter plate…and pins” (see paragraphs 20 and 68). Thus, in view of the specification, the limitation, “an embedding device”, is being interpreted as an adapter plate…and pins and/or equivalents thereof.
Such claim limitation(s) is/are: “an indexing device configured to indicate an angular stroke” in claims 9 and 16. However, claim limitations are read in view of the specification. In the instant case, the Specification in applicant’s PG-PUB describes “the indexing device” as being something that “indicate the angular stroke of the planetary gear when the operating shaft is rotated.” (see paragraph 76). Thus, in view of the specification, the limitation, “an indexing device”, is being interpreted as being anything that indicates an angular stroke of a planetary gear and/or equivalents thereof.
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 1-17 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. Any remaining claims are rejected based on their dependency to a rejected base claim.
Claim 1 discloses, “at least one satellite gear being carried by a planetary carrier pivotably connected to the operating shaft.” However, because the Specification and the Drawings fail to properly describe and label any such planetary carrier, it is unclear what element is pivotably connected to the operating shaft. Where is the planetary carrier shown in the Drawings? What numeral represents the planetary carrier? Where does the Specification describe such a planetary carrier? Further clarification is respectfully requested.
Claim 2 discloses, “a satellite carrier comprises, from the proximal end to the distal end, an upper plate and a lower plate”. However, it is unclear if the planetary carrier in claim 1 includes the satellite carrier in claim 2 of if they are different components because claim 1 previously required, “at least one satellite gear being carried by a planetary carrier”. It is also unclear how the satellite carrier comprises, from the proximal end to the distal end the upper plate and the lower plate. In other words, does the satellite carrier extend the entire length from the proximal end to the distal end? Does the upper plate and the lower plate extend the entire length from the proximal end to the distal end? In order to expedite prosecution, the examiner has interpreted the limitation above as disclosing, “a satellite carrier comprises, ”. However, further clarification is respectfully requested.
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 1-6, 11-13 and 17 are rejected As Best Understood under 35 U.S.C. 102(a)(1) as being anticipated by Takashi (JP 2010164115, translation included).
In reference to claim 1, As Best Understood, Takashi discloses an operating wrench (Figure 1) for a valve (31/33) disposed in an opening (Figure 5), the operating wrench comprising
a hollow operating shaft (4), which extends from a proximal end (i.e. upper end of 4) to a distal end (i.e. lower end of 4); and
an epicyclic gear train (5), arranged at the distal end of the operating shaft, and configured to impose an output torque on a valve arranged in an opening when an input torque is exerted on the operating shaft (see Abstract), the output torque being greater than the input torque (see Abstract), the epicyclic gear train being a parallel epicyclic gear train (see Figure 3) and comprising a planetary gear (5a), a crown gear (5b) and at least one satellite gear (5c), the at least one satellite gear being carried by a planetary carrier (under a first interpretation is formed from 6 or under a second interpretation is formed from 5e and 6) pivotably connected to the operating shaft (see following portion of translation; “The base shaft 4a of the handle shaft 4 is rotatably supported by the casing 6 and the carrier 5e by bearings 9a and 9b…The casing 6 is rotatably supported…The casing 6 is divided in the axial direction and fastened with bolts 6d. The base shaft 4a of the handle shaft 4 is rotatably supported by the casing 6 and the carrier 5e by bearings 9a and 9b, and the carrier 5e is supported by the bearing 9c.”), the planetary gear being connected in a fixed manner to the operating shaft (see following portion of translation, “sun gear 5a attached to a base shaft 4a of a handle shaft 4 as an input shaft”) and configured to mesh with the at least one satellite gear (see following portion of translation, “planetary gears 5c meshing with the provided internal gear 5b”).
In reference to claim 2, As Best Understood, Takashi discloses a satellite carrier (i.e. formed from 5e and 6 again because satellite gears 5c are contained therein, see Figure 3) comprises, 6) and a lower plate (5e, Figure 3), between which each satellite gear (5c) is pivotably mounted about a satellite shaft (5d), the satellite shaft being parallel to the operating shaft (Figure 3).
In reference to claim 3, Takashi discloses that the satellite shaft is fixedly connected to each of the upper plate and the lower plate (at least through the connection of parts therebetween, Figure 3).
In reference to claims 4 and 11, Takashi discloses further comprising an extension (2) having a non-circular cross section (i.e. rectangular, see following portion of translation, “shaft 2 having a rectangular cross section”), the extension configured to be mounted in a sliding connection (see following portion of translation, “Further, the rotation operation shaft 2…having a rectangular cross section so as to be slidable in the axial direction” Figure 3) with the lower plate so that rotation of the lower plate drives rotational movement of the extension about a longitudinal axis of the operating shaft (Figures 3-6).
In reference to claims 5 and 12, Takashi discloses that the lower plate comprises a central passage (not labeled but formed as the opening within 5e [Figure 3] that attaches to extension 2, see following portion of translation, “a carrier 5e attached to the outer diameter surface of the shaft 2”) having a cross section conforming to the cross section of the extension (see following portion of translation, “the carrier 5e having a rectangular cross section”).
In reference to claims 6 and 13, Takashi discloses further comprising a main passage (not labeled but formed as the opening that receives extension 2 therethrough) in the epicyclic gear train (Figure 3 and 4) and the operating shaft (4) coaxial with the central passage and the longitudinal axis of the operating shaft so as to allow the extension to slide (Figures 5 and 6).
In reference to claim 17, Takashi discloses further comprising a handle (at 3 or at 8) mechanically secured to the operating shaft (4) and extending in a direction substantially perpendicular to the operating shaft (Figure 1).
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 2, is also rejected under 35 U.S.C. 103 as being unpatentable over Takashi (JP 2010164115, translation included) in view of Beyert (WO 9803845, translation included).
In further reference to claim 2, assuming arguendo that Takashi lacks,
a satellite carrier comprises,
Beyert teaches that it is old and well known in the art at the time the invention was made to provide a satellite carrier (125) comprises, at 125 in Figure 4) and a lower plate (at 109 or 110), between which each satellite gear (127) is pivotably mounted about a satellite shaft (not labeled but formed as the vertical shaft in Figure 4), the satellite shaft being parallel to an operating shaft (112).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the carrier, of Takashi, with the known technique of providing a satellite carrier including the upper plate and the lower plate, as taught by Beyert, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively mounts the gears therein (“The planet gears 127, which mesh with a sun gear 128, which is part of the input shaft 112, are mounted in the planet gear cage 125.”).
Claims 7, 8, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Takashi (JP 2010164115, translation included) in view of Nuesle (DE 102008034811, translation included).
In reference to claims 7 and 14, Takashi discloses the claimed invention as previously mentioned above, but lacks,
an embedding device configured to prevent rotational movement of the crown gear when the operating wrench is engaged to operate a valve.
However, Nuesle teaches that it is old and well known in the art at the time the invention was made to provide a crown gear (12) including an embedding device (formed from adapter plate 11 and pins formed from 13 or from 21 or from 13 and 21, which meets the limitation of the embedding device, as previously interpreted under 35 U.S.C. 112(f), see section 8c above) configured to prevent rotational movement of the crown gear (see following portion of translation, “the measuring capsule locks, turns the counter key 11 continue until…by means of the extensions 21 engages an adapter or on a housing or cup and gets resistance.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the crown gear, of Takashi, with the known technique of providing the embedding device configured to prevent rotational movement of a crown gear, as taught by Nuesle, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that improves the operating stability of the wrench by providing “evenly distributed extensions 21 for engaging in cups and/or adapters of measuring capsules” thereby providing “offering an automatic counter function against adapters or over or under plaster arranged housing or cup in a mounting or dismounting of concentric water meters.”
In reference to claims 8 and 15, Nuesle discloses that embedding device comprises an adapter plate (11) configured/capable to be embedded against an opening housing a valve, and pins (formed from 13) mechanically secured to the crown gear (Figure 4) and configured to be embedded in apertures (not labeled but formed as the upper holes of 11 receiving pins 13 therein, Figure 3) provided in the adapter plate (Figures 3 and 4).
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Takashi (JP 2010164115, translation included) in view of Nuesle (DE 102008034811, translation included) and Beyert (WO 9803845, translation included).
In reference to claim 9, Takashi discloses the claimed invention as previously mentioned above, but lacks,
an indexing device configured to indicate an angular stroke of the planetary gear when the operating shaft is rotated.
However, Beyert teaches that it is old and well known in the art at the time the invention was made to provide an indexing device (formed from adapter traction ring 121 and adjustment ring 123, which meets the limitation of the indexing device, as previously interpreted under 35 U.S.C. 112(f), see section 8d above, because they indicate an angular stroke of planetary gear 128) configured to indicate an angular stroke of planetary gear (128) when an operating shaft (112) is rotated (Figure 3, see following portion of translation, “The marking 127 serves to hold the zero point of the angle scale 119 and later to display the subsequently generated angle of rotation on the scale.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the device, of Takashi, with the known technique of providing the indexing device, as taught by Beyert, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that serves to hold a zero point of the angle scale and later to display the subsequently generated angle of rotation on the scale thereby improving the accuracy of the measurement of the angle of rotation (see Abstract).
In reference to claim 10, Takashi discloses further comprising a handle (at 3 or at 8) mechanically secured to the operating shaft (4) and extending in a direction substantially perpendicular to the operating shaft (Figure 1).
Claim 16, is rejected under 35 U.S.C. 103 as being unpatentable over Takashi (JP 2010164115, translation included) in view of Beyert (WO 9803845, translation included).
In reference to claim 16, Takashi discloses the claimed invention as previously mentioned above, but lacks,
an indexing device configured to indicate an angular stroke of the planetary gear when the operating shaft is rotated.
However, Beyert teaches that it is old and well known in the art at the time the invention was made to provide an indexing device (formed from adapter traction ring 121 and adjustment ring 123, which meets the limitation of the indexing device, as previously interpreted under 35 U.S.C. 112(f), see section 8d above, because they indicate an angular stroke of planetary gear 128) configured to indicate an angular stroke of planetary gear (128) when an operating shaft (112) is rotated (Figure 3, see following portion of translation, “The marking 127 serves to hold the zero point of the angle scale 119 and later to display the subsequently generated angle of rotation on the scale.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the device, of Takashi, with the known technique of providing the indexing device, as taught by Beyert, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that serves to hold a zero point of the angle scale and later to display the subsequently generated angle of rotation on the scale thereby improving the accuracy of the measurement of the angle of rotation (see Abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Riedel et al. (2021/0381615) disclose an operating wrench (170) for a valve disposed in an opening, the operating wrench comprising a hollow operating shaft (196, paragraph 37); and an epicyclic gear train (172), the epicyclic gear train being a parallel epicyclic gear train and comprising a planetary gear (198), a crown gear (180) and at least one satellite gear (182), the at least one satellite gear being carried by a planetary carrier (184) pivotably connected to the operating shaft (Figure 13).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723
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