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 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:
“adjustment fixing mechanism” recited in claim 3
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.
The limitation “adjustment fixing mechanism” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“mechanism”).
(B) The generic placeholder is modified by functional language (“adjustment fixing” or ‘configured for adjustment fixing’ and “which is capable of suitably changing an arrangement distance between the at least a pair of pressing rollers in a short-side direction of the rail cover”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
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 – 4 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.
The preamble of claim 1 recites “the time of attaching a rail cover ...” The preamble is indefinite for several reasons. First, there is insufficient antecedent basis for “the time of attaching ...” Secondly, it is unclear as to whether Applicant intends “a rail cover” to refer to the “rail cover” previously recited in the preamble of the claim, or whether Applicant intends to set forth a second ‘rail cover’ which is separate and independent from the ‘rail cover’ previously set forth. For the purposes of the Office Action, Examiner will interpret the given recitation as “a time of attaching the rail cover ...”
Claim 1 further recites the limitation “... both ends of the flat surface portion ...” in the second paragraph of the body of the claim. There is insufficient antecedent basis for the limitation in the claim. This is because the claim does not previously set forth “ends” of the ‘flat surface portion.’ For the purposes of this Office Action, Examiner will interpret the limitation as “... opposing ends of the flat surface portion ...”
Claim 1 further recites the limitation “the assisting jig” in the third paragraph of the body of the claim. It is unclear as to whether Applicant intends the limitation to refer to the “attachment assisting jig” previously set forth in the claim, or whether Applicant intends to set forth an “assisting jig” which is separate and independent from the ‘attachment assisting jig’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “the attachment assisting jig.”
Claim 1 further recites the limitation “the time of adjusting a distance ...” third paragraph of the body of the claim. There is insufficient antecedent basis for the limitation in the claim.
Claim 1 further recites the limitation “... the pair of pressing rollers are brought into abutment against inner side surfaces of the pair of side wall portions, respectively, and are rotated in directions opposite to each other” in the last paragraph of the claim. Examiner notes that the preamble of the claim is directed towards “an attachment assisting jig for a rail cover,” wherein the ‘rail cover’ includes the ‘inner side surfaces of the pair of side wall portions.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require the steps of ‘bringing the pair of pressing rollers into abutment against the inner side surfaces of the pair of side wall portions of the rail cover’ and ‘rotating the pair of pressing rollers in a direction opposite to each other,’ such that the claim is directed towards ‘a method of operating an attachment assisting jig,’ or whether Applicant intends the limitation to recite functional language of the ‘pair of pressing rollers,’ such that the claim is directed towards the ‘attachment assisting jig’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... the pair of pressing rollers are configured to be brought into abutment against inner side surfaces of the pair of side wall portions, respectively, and are further configured to be rotated in directions opposite to each other.”
Claim 2 recites the limitation “... a side surface of the guide member is brought into abutment against at least any one of the inner side surfaces of the pair of side wall portions.” Examiner notes that the preamble of the claim is directed towards “an attachment assisting jig for a rail cover,” wherein the ‘rail cover’ includes the ‘inner side surfaces of the pair of side wall portions.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require the step of ‘bringing a side surface of the guide member into abutment against at least any one of the inner side surfaces of the pair of side wall portions of the rail cover,’ such that the claim is directed towards ‘a method of operating an attachment assisting jig,’ or whether Applicant intends the limitation to recite functional language of the ‘guide member,’ such that the claim is directed towards the ‘attachment assisting jig’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... a side surface of the guide member is configured to be brought into abutment against one of the inner side surfaces of the pair of side wall portions.”
Claim 4 recites the limitation “... the pair of guide rollers are brought into abutment against the inner side surfaces of the pair of side wall portions, respectively, and are rotated in direction opposite to each other.” Examiner notes that the preamble of the claim is directed towards “an attachment assisting jig for a rail cover,” wherein the ‘rail cover’ includes the ‘inner side surfaces of the pair of side wall portions.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require the steps of ‘bringing the pair of guide rollers into abutment against the inner side surfaces of the pair of side wall portions of the rail cover’ and ‘rotating the pair of guide rollers in directions opposite to each other,’ such that the claim is directed towards ‘a method of operating an attachment assisting jig,’ or whether Applicant intends the limitation to recite functional language of the ‘pair of guide rollers,’ such that the claim is directed towards the ‘attachment assisting jig’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... the pair of guide rollers are configured to be brought into abutment against the inner side surfaces of the pair of side wall portions, respectively, and are further configured to be rotated in directions opposite to each other.”
As explained above, the claim limitation “adjustment fixing mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. While the specification provides antecedent basis for the limitation and the claimed function of the limitation (paragraph 41), the specification does not teach sufficient structure of the limitation to perform the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As explained above, the limitation “adjustment fixing mechanism” invokes interpretation under 35 U.S.C. 112(f). As further explained above, the specification does not teach sufficient structure of the limitation to perform the claimed function. Therefore, the limitation is not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention.
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) 1 - 4 are rejected under 35 U.S.C. 103 as being unpatentable over Williams (U.S. Patent Number 9,140,301) in view of Monahan (U.S. Patent Number 6,254,274).
As to claim 1, Williams teaches an attachment assisting jig for a rail cover (abstract), wherein the assisting jig comprises: a jig main body that is configured to be pushed and pulled in a longitudinal direction of the rail cover (figures 1 – 3, element 18 being the ‘jig main body’; column 2, lines 40 – 43); and a pair of pressing rollers, which are arranged on a bottom surface of the jig main body so that peripheral surfaces of the pair of pressing rollers are configured to be brough into abutment against inner side surfaces of a pair of side wall portions of the rail cover, respectively, and are further configured to rotate in directions opposite to each other, and are configured to press the pair of side wall portions outward along with movement of the jig main body in the longitudinal direction of the rail cover (figures 1 – 5, opposing elements 26 being the ‘pair of pressing rollers’; column 2, line 57 – column 3, line 17 and column 3, line 50 – column 4, line 14). Examiner notes that this can be found because Williams expressly teaches the attachment assisting jig being adjusted so that the pair of pressing rollers provide a preload force onto side wall portions (figure 5, elements 26; column 3, lines 1 – 17 and column 3, line 50 – column 4, line 14).
However, while Williams teaches the attachment assisting jig being attached to, and carrying, large loads such as machine tools and mechanisms (column 1, lines 8 – 20 and column 2, lines 9 – 11), Williams does not teach how to attach the attachment assisting jig to the large loads. Monahan teaches an attachment assisting jig for a rail cover (abstract), wherein the assisting jig comprises: a jig main body that is configured to be pushed and pulled in a longitudinal direction of the rail cover (figure 2, element 52 being the ‘jig main body’; column 3, line 63 – column 4, line 6); and a pair of pressing rollers, which are arranged on a bottom surface of the jig main body so that peripheral surfaces of the pair of pressing rollers are configured to be brought into abutment against side surfaces of a pair of side wall portions of the rail cover, respectively, and are further configured to be rotated indirection opposite to each other (figure 2, opposing elements 60 being the ‘pair of pressing rollers’; column 3, line 65 – column 4, line 6). Monahan further teaches that an operating grip is provided on an upper surface of the jig main body (figure 2, element 78 being the ‘operating grip’; column 4, lines 28 – 44). It would have been obvious to one skilled in the art to provide the jig main body of Williams with the operating grip of Monahan, because Monahan teaches that the operating grip provides means for attaching the attachment assisting jig to a load (column 4, lines 28 – 44), as desired by Williams (column 1, lines 8 – 20 and column 2, lines 9 – 11).
Regarding the limitation defining the structure of the “rail cover” and the “track rail,” Examiner notes that each of these are recited functionally, such that the claimed “attachment assisting jig” is configured for use with the ‘rail cover’ and the ‘track rail.’ As explained above, Williams in view of Monahan makes obvious the structure of the ‘attachment assisting jig’ of claim 1. Therefore, there is a prima facie case of obviousness that the ‘attachment assisting jig’ of Williams in view of Monahan is configured for use with the ‘rail cover’ and ‘track rail’ recited by the claim. MPEP 2112.01.
As to claim 2, Williams further teaches a guide member provided on the bottom surface of the jig main body so that a side surface of the guide member is configured to be brought into abutment against one of the inner side surfaces of the pair of side wall portions (figures 1 – 4, opposing elements 24 being the ‘guide member’; column 2, line 57 – column 3, line 17).
As to claim 3, Williams further teaches that the jig main body is provided with an adjustment fixing mechanism which is capable of suitably changing an arrangement distance between the pair of pressing rollers in a sort-side direction of the rail cover (figures 5, elements 26; column 3, line 50 – column 4, line 14).
As to claim 4, Williams further teaches that the guide member is a pair of guide rollers arranged on the bottom surface of the jig main body so that peripheral surfaces of the pair of guide rollers are configured to be brought into abutment against the side wall portions, respectively, and are further configured to be rotated in directions opposite to each other (figures 1 – 4, opposing elements 24 being the ‘pair of guide rollers,’ see below; column 2, line 57 – column 3, line 17), and wherein an arrangement distance between the pair of pressing rollers is larger than a distance between the pair of guide rollers (figure 2, elements 26 and 24, see below).
PNG
media_image1.png
586
696
media_image1.png
Greyscale
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
Prosecution Insights