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:
movement mechanism (e.g. claims 1 and 5) - e.g. an electric motor (paragraph 15)
gripping mechanism (e.g. claims 1 and 5) - no/inadequate corresponding structure, see below
positioning mechanism (e.g. claims 1 and 5) - e.g. a six-axis robot (paragraph 17)
control unit (e.g. claim 1) - e.g. a CPU with memory (paragraph 19)
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 1-6 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 limitation “gripping mechanism” (claims 1 and 5) 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. Specifically, the claim recites that the gripping mechanism “brings a pair of gripping portions close to or away from each other along a direction orthogonal to the axis”. First, it is unclear if the a pair of gripping portions is part of the gripping mechanism or if the gripping mechanism is solely a separate mechanism for bringing them together. Second, the disclosure does not describe the mechanism by which the pair of gripping portions are brought close to or away from each other (e.g. paragraphs 16 and 29).
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.
Claim 1 recites “close to” in lines 9 and 13. The term “close” is relative and thus its scope is unclear. For examination purposes, “close to will be interpreted as --closer to--.
Claim 5 similarly recites “close to” in lines 10 and 15.
Claim 2 recites “the gripping mechanism grips an end portion of the washer in a long axis direction by the pair of gripping portions”, which reads like an active method step contrary to the claim being to an apparatus. For examination purposes, this will be interpreted as the gripping mechanism being configured to perform the claimed function.
Claim 3 recites “the gripping portion grips the washer by moving one of the pair of gripping portions in the direction orthogonal to the axis in a state where the other of the pair of gripping portions is fixed”, which reads like an active method step contrary to the claim being to an apparatus. For examination purposes, this will be interpreted as the gripping mechanism being configured to perform the claimed function.
Claim 4 recites “the holding portion holds the nut by suctioning the nut disposed at the tip portion”, which reads like an active method step contrary to the claim being to an apparatus. For examination purposes, this will be interpreted as the gripping mechanism being configured to perform the claimed function.
The remaining claims are rejected by virtue of dependency on claim 1 or 5.
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.
Claims 1 and 5 are 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 noted above, claim limitation “gripping mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but 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. Referring to MPEP 2181 IV., a means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description.
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 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Okada (U.S. Patent 4,675,967) in view of Sahakian et al. (U.S. PGPub 2022/0227438).
Claim 1: Okada discloses a fastening device (e.g. Figs. 3, 5) that inserts a washer (5) into a bolt (3) protruding from a member (1, 2) to be fastened and fastens a nut (4) to the bolt (Fig. 2), the device comprising: a nut holding mechanism that includes a holding portion (38a/b, 31) formed in a cylindrical shape (Figs. 5, 7) extending along an axis (vertical direction in Fig. 5) and holding the nut at a tip portion (tips of 31 - Fig. 8; column 4, lines 2-5), and a rotating portion (26) that rotates the holding portion around the axis (column 3, lines 9-13); a movement mechanism (motor 15) that is attached to the nut holding mechanism and is movable with respect to the nut holding mechanism along the axis (the motor moves relative to the nut holding mechanism in that portions 38/31 move up/down relative to motor 15 upon rotation via the threaded/splined transmission); a gripping mechanism (32/35, 24, 33) that is attached to the movement mechanism and brings a pair of gripping portions (32/35) close to or away from each other (via cylinders 24 and springs 33 - column 3, lines 52-53) along a direction orthogonal to the axis (horizontally in Fig. 5); a positioning mechanism (11 and associated structure of station 10, trestle 8, track 9) that positions the nut holding mechanism at a predetermined position in a three-dimensional space to have a predetermined posture (e.g. column 2, line 63 - column 3, line 4; column 3, line 67 - column 4, line 5); and a control unit (implied by “remote control” and “automatically movable” - e.g. column 1, lines 22-26; column 2 lines 67-68) that causes the movement mechanism and the gripping mechanism to bring the pair of gripping portions [closer] to each other in front of the tip portion along the axis to grip the washer in a state where the nut holding mechanism holds the nut (column 4, lines 48-55), causes the positioning mechanism to insert the bolt into the washer (column 5, lines 15-21), causes the movement mechanism to bring the nut in contact with the bolt in a state where the gripping mechanism grips the washer (column 5, lines 1-15), and causes the rotating portion to rotate the holding portion around the axis to fasten the nut to the bolt in a state where the nut is in contact with the bolt (column 4, lines 58-68). With regard to the aforementioned functioning of the device by the controller, it is understood the cited steps are for disassembly but would be performed in reverse order for assembly (column 5, lines 30-35).
Regarding the above, the positioning mechanism is not necessarily a six-axis robot per the interpretation under 112(f). However, it is known to articulate tools such as nut fasteners via six-axis robots as in Sahakian et al. (paragraph 42). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a six-axis robot as the positioning mechanism because it would have allowed the robot to move in the X, Y and Z planes as well as position itself using roll, pitch, and yaw movements (Id.). Additionally, because both Okada and Sahakian teach methods for positioning a fastening device in space, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one method for the other to achieve the predictable result of positioning the fastening device relative to the bolts as needed (MPEP 2143 I. B.).
The control unit does not necessarily comprise a CPU with memory per the interpretation under 112(f). However, this essentially describes the basis of a well-known computer, and the examiner takes Official Notice that controllers typically comprise computers with CPU and memory to electronically control a variety of automated apparatus. It thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a CPU with memory as a basic computer controller as well known in the art.
Claim 2: It is noted that a claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963). See also MPEP 2115. Thus, the limitation “the washer is formed in a substantially elliptical shape in a plan view” is non-limiting to the claimed device since it pertains to the article worked upon (the washer).
The gripping mechanism [is configured to grip] an end portion of the washer in a long axis direction by the pair of gripping portions (there is nothing to suggest the gripping portions of Okada would be incapable of doing so for such a washer), and the gripping portion has a protruding portion (e.g. 35) that prevents the end portion of the washer in the long axis direction from rotating in a rotation direction of the rotating portion on a downstream side of the rotation direction of the rotating portion when viewed in a plan view in a direction along the axis (the portions 35 could hypothetically serve this purpose depending on the washer).
Claim 5: Okada discloses a method of controlling a fastening device (Figs. 3 and 5) that inserts a washer (5) into a bolt (3) protruding from a member (1, 2) to be fastened and fastens a nut (4) to the bolt (Fig. 2), the fastening device comprising: a nut holding mechanism that includes a holding portion (38a/b, 31) formed in a cylindrical shape (Figs. 5, 7) extending along an axis (vertical direction in Fig. 5) and holding the nut at a tip portion (tips of 31 - Fig. 8; column 4, lines 2-5), and a rotating portion (26) that rotates the holding portion around the axis (column 3, lines 9-13); a movement mechanism (motor 15) that is attached to the nut holding mechanism and is movable with respect to the nut holding mechanism along the axis (the motor moves relative to the nut holding mechanism in that portions 38/31 move up/down relative to motor 15 upon rotation via the threaded/splined transmission); a gripping mechanism (32/35, 24, 33) that is attached to the movement mechanism and brings a pair of gripping portions (32/35) close to or away from each other (via cylinders 24 and springs 33 - column 3, lines 52-53) along a direction orthogonal to the axis (horizontally in Fig. 5); a positioning mechanism (11 and associated structure of station 10, trestle 8, track 9) that positions the nut holding mechanism at a predetermined position in a three-dimensional space to have a predetermined posture (e.g. column 2, line 63 - column 3, line 4; column 3, line 67 - column 4, line 5); the method comprising: a gripping step of causing the gripping mechanism to bring the pair of gripping portions [closer] to each other in front of the tip portion along the axis to grip the washer in a state where the nut holding mechanism holds the nut (column 4, lines 48-55); an insertion step of causing the positioning mechanism to insert the bolt into the washer (column 5, lines 15-21); and a fastening step of causing the movement mechanism to bring the nut in contact with the bolt in a state where the gripping mechanism grips the washer (column 5, lines 1-15), and causing the rotating portion to rotate the holding portion around the axis to fasten the nut to the bolt in a state where the nut is in contact with the bolt (column 4, lines 58-68). With regard to the aforementioned functioning of the device by the controller, it is understood the cited steps are for disassembly but would be performed in reverse order for assembly (column 5, lines 30-35).
Regarding the above, the positioning mechanism is not necessarily a six-axis robot per the interpretation under 112(f). However, it is known to articulate tools such as nut fasteners via six-axis robots as in Sahakian et al. (paragraph 42). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a six-axis robot as the positioning mechanism because it would have allowed the robot to move in the X, Y and Z planes as well as position itself using roll, pitch, and yaw movements (Id.). Additionally, because both Okada and Sahakian teach methods for positioning a fastening device in space, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one method for the other to achieve the predictable result of positioning the fastening device relative to the bolts as needed (MPEP 2143 I. B.).
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Okada in view of Sahakian et al. as applied to claims 1 and 5 above, and further in view of Labadie et al. (PGPub 2021/0213623).
Claim 3: Okada and Sahakian et al. teach a device substantially as claimed except for wherein the gripping portion grips the washer by moving one of the pair of gripping portions in the direction orthogonal to the axis in a state where the other of the pair of gripping portions is fixed. Okada instead moves both gripping portions. However, Labadie teaches that a gripping device may be operated such that one gripping portion (jaw) may be fixed as an alternative to both being movable (paragraph 13). Because both Okada and Labadie teach gripping devices using pairs of grippers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one for the other to achieve the predictable result of gripping an object (MPEP 2143 I. B.). One of ordinary skill in the art would have also recognized the functional equivalence of both versions in view of Labadie.
Claim 6: Okada and Sahakian et al. teach a method substantially as claimed except for wherein in the gripping step, the gripping mechanism is controlled such that the washer is gripped by moving one of the pair of gripping portions in the direction orthogonal to the axis in a state where the other of the pair of gripping portions is fixed. Okada instead moves both gripping portions. However, Labadie teaches that a gripping device may be operated such that one gripping portion (jaw) may be fixed as an alternative to both being movable (paragraph 13). Because both Okada and Labadie teach gripping devices using pairs of grippers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one for the other to achieve the predictable result of gripping an object (MPEP 2143 I. B.). One of ordinary skill in the art would have also recognized the functional equivalence of both versions in view of Labadie.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Okada in view of Sahakian et al. as applied to claim 1 above, and further in view of Motowaki (U.S. PGPub 2021/0154780).
Okada and Sahakian et al. teach a device substantially as claimed except for wherein the holding portion holds the nut by suctioning the nut disposed at the tip portion. However, Motowaki teaches a fastening device such as a nut runner wherein a holding portion holds the nut by suctioning the nut disposed at the tip portion (paragraphs 29, 48). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided this function in order to have allowed for the device to pick up and maintain fasteners.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent 3,406,414 discloses another apparatus for assembling nuts (22) and washers (24) to bolts (S). Nuts are fed through a tube 26 from hopper 28 and washers are fed by similar equipment 26a-36a. A crosshead 42 is vertically slidable on rods 40 by a piston cylinder 46/48. The device further comprises a nut running socket 54, drive shaft 56, and air motor 60 to fasten the nuts, and jaws 80 that pivot at 82, biased closed by springs 84, with a chamber 86 for a nut and a chamber 88 for a washer.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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, Sunil K. Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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