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 .
Drawings
The drawings are objected to because “plot (line) segment (38)” in Figure 17 is new matter.
See Specification objection below for details.
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.
Specification
The amendment filed July 8, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Paras [0038a] and [0098a] disclose “in an embodiment, just before the tool brakes through the extruded profile, the feed rate can be reduced to avoid breakouts as represented by plot segment 38 and plot segment 38 (in Figure 17) are new matter. The original disclosure, as set forth in original claims 7-10, that the feed rate can be represented by a graph.” Claim 9 set forth details to the feed rate increasing…flattening out…and increasing again until the cutting process is finished. There is no mention in the original disclosure to reducing the feed rate before the tool breaks through the extruded profile. In fact, the original disclosure states the feed rate increases again until a cutting process is completed. Also, what is a “breakout?” Per Merriam Webster Dictionary, a breakout is defined as “a violent or forceful break form a restraining condition or situation. Regarding Figure 17, there only appears to be a “break” in the graph along segment 34, not 38. What permits the breakout and how is it represented on the graph? Is there a change in the actuator, which changes the speed of the feed rate? Is there a break in the feed rate? Does the line segment (38) define a breakout or a decrease in the feed rate?
Applicant is required to cancel the new matter in the reply to this Office Action.
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 8-10 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.
Regarding claim 8, the phrase “the feed rate is represented by a straight line segment or a graduation of multiple straight line segments of the graph” is indefinite. The preamble is directed to a method, but the claims does not positively recite a (method) step.
Regarding claim 9, the phrase “wherein the feed rate initially increases…” is indefinite. The preamble is directed to a method, but the body of the claim does not positively recite a (method) step.
Further, regarding claim 9, the phrase “flattens out until the tool has reached a predetermined penetration depth” is indefinite. It is unclear what the scope of this term is with respect to the feed rate. What step permits the feed rate to “flatten out” until the tool reaches a predetermined penetration depth. What is the relationship between the feed rate and the predetermined penetration depth?
Regarding claim 10, the phrase “wherein the feed rate is dependent on a torque of the actuator” is indefinite. The preamble is directed to a method and the body of the claim does not positively recite a step.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “wherein the tool is connected to the tool carrier and can be aligned, with a plane lying at a right angle to the extrusion axis,” and the claim also recites “by an adjustment mechanism” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. In other words, is the “adjustment mechanism” a required feature? As currently written, the claim can be interpreted as “wherein the tool is connected to the tool carrier and can be aligned, with a plane lying at a right angle to the extrusion axis” or “wherein the tool is connected to the tool carrier and can be aligned, by an adjustment member, with a plane lying at a right angle to the extrusion axis.” Due to the narrower limitation in the broader limitation, it is unclear if the adjusting mechanism is merely exemplary or if the structure is required.
Claims 2-7 dependent from claim 1 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from a rejected parent claim.
Claim Rejections - 35 USC § 102
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 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 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP2431143 to Hackl.
In re claim 1, Hackl teaches an apparatus for cutting off plastic profiles which are extruded along an extrusion axis, the apparatus at least comprising:
a tool (12) located on a tool carrier (11);
a pivot arm (10) which the tool carrier (11) together with the tool (12) can be moved towards and away from the extrusion axis (8); and
a pivoting device (9) configured to pivot the pivot arm (10),
wherein the tool (12) is connected to the tool carrier (11) and can be aligned, by an adjustment mechanism (18), with a plane lying at a right angle to the extrusion axis (8, Para 0001).
Note, it has been interpreted the pivoting arm pivots with the pivoting device. Also, the claim has an “or” clause, and for the purposes of examiner, the limitations which have been examined precede the “or” clause.
In re claim 7, Hackl teaches a method for cutting off plastic profiles which are
extruded along an extrusion axis (8, Pg. 1, lines 6-10), the method comprising:
providing the apparatus according to claim 1;
controlling a pivoting of the pivoting device (9) with a controller (16), thereby influencing the a feed rate with which the tool (11) is fed radially onto the profile (19) to be cut off and is guided through it, the feed rate of the pivoting being represented by a graph.
Note, the controller (16) is a servomotor which controls the feed rate of the tool. It is further noted, the feed rate merely has to be capable of being represented by a graph. The graph does not impart any steps.
In re claim 8, as best understood, wherein the feed rate is a straight line segment.
As stated above, the graph does not impart any steps.
In re claim 9, as best understood, wherein the feed rate initially increases until the tool has reached an outer region of the profile, then flattens out until the tool has reached a predetermined penetration depth and then increases again until the cutting process is completed.
Note, it has been interpreted, the feed rate increases from the time the apparatus is at rest to the time it is up to cutting speed. Once the cutting speed is reached the tool will cut the plastic profile to a predetermined depth and the feed rate can be increased during cutting.
In re claim 10, as best understood, wherein the feed rate is dependent on a torque of the actuator.
Note, the actuator is in the “or” clause, so the limitations in claim 10 are not required for examination at this time.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 857,284 to Huber.
In re claim 1, Huber teaches an apparatus for cutting off plastic profiles which are extruded along an extrusion axis, the apparatus at least comprising:
a tool (3-3c) located on a tool carrier (4);
a pivot arm (a) which the tool carrier (3-3c) together with the tool (5-5c) can be moved towards and away from the extrusion axis (as shown in at least Figure 1); and
a pivoting device (9) configured to pivot the pivot arm (a),
wherein the tool (5-5c) is connected to the tool carrier (3-3c) and can be aligned, by an adjustment mechanism (6), with a plane lying at a right angle to the extrusion axis (as best shown in at least Figure 1).
In re claim 4, wherein the tool (5-5c) is secured in the tool carrier (4) by means of
a quick-clamping device (11).
In re claim 5, wherein the quick-clamping device (11) is an eccentric (as shown in at least Figure 1).
Per Merriam Webster Dictionary, term eccentric is defined as “not following a perfectly circular path; located internally somewhere other than at a geometric center.” The quick clamping device satisfies both definitions of the BRI of the term “eccentric.”
In re claim 6, wherein the quick-clamping device (11) is a bolt connection (Pg. 1, lines 65-68).
Per Merriam Webster Dictionary, the term bolt is defined as “a metal rod or pin for fastening objects together that usually has a head at one end and a screw thread at the other and is secured by a nut.” Per the BRI of the term bolt, the pin of Huber is a bolt.
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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Hackl in view of Huber.
In re claim 2, Hackl teaches a device (see Annotated Figure 1) having a pivot arm (10) mounted thereon with a tool carrier (9) and a tool (11) arranged about the extrusion axis (as shown in at least Figure 1).
In re claim 3, comprising an apparatus for detecting the tool (5) is.
Hackl teaches a device, but does not teach multiple pivoting devices.
Huber teaches a device having multiple pivoting devices (see Annotated Figure 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide Hackl with multiple pivoting devices as taught by Huber to provide cutters at radially different distances for cutting at a greater distance than the preceding cutter in order to accommodate rod flare and/or a tube having a greater diameter at an end (Pg. 1, lines 9-19, 91-95). Modifying Hackl to have multiple pivoting device is an obvious design choice and a mere duplication of working parts. The court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Response to Arguments
The drawing and claims objections in the Office Action mailed April 21, 2026 have been obviated by the amendments filed July 8, 2026.
Applicant argues the Office Action must be mistaken in alleging that it recites a range and especially in that the claim recites both a broader and narrower range or limitation. Applicant argues it is unclear which features is allege to correspond with a range.
A range is not recited in claim 1, which presents a broad limitation followed by a narrower limitation. The indefiniteness arises because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. In this instance, the narrower limitation is “an adjusting mechanism.” As written, it is unclear if the adjusting mechanism is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The claim can be interpreted as “wherein the tool is connected to the tool carrier and can be aligned, with a plane lying at a right angle to the extrusion axis” or “wherein the tool is connected to the tool carrier and can be aligned, by an adjustment member, with a plane lying at a right angle to the extrusion axis.” The varying interpretations raises ambiguity, since it is unclear what structure, if any, is imparted by the narrower limitation (to the adjusting mechanism).
The 112, second paragraph rejections to claims 8 and 9 have been maintained for not positively reciting a step within a method claim. This can be overcome, by reciting in Claim 8, “graphing the feed rate by a straight line segment or a graduation of multiple straight line segment of the graph.” Claim 9 should recite “increasing the feed rate until; the tool has reached an outer region of the profile…” or similar language.
The Examiner further poses the question of can graphing be performed mentally or is it performed by a program?
Applicant's arguments filed July 8, 2026 have been fully considered but they are not persuasive. Applicant argues the prior art to Hackl or Huber do not teach i) an adjusting mechanism by which the tool can be adjusted with a plane laying at a right angle to the extrusion axis and ii) a cycloidal gear which is directly connected to an actuator. Applicant argues the specification states the cycloidal gear, which is associated with the pivoting device, is responsible for moving the tool radially with respect to the extrusion axis.
As written, the claim contains an “or” clause, and the structure preceding the “or” limitation has been examined. The structure following the “or” clause is directed to the structure of the tool carrier and the pivoting arm, in which the pivoting arm is mounted on the pivoting device which comprises a cycloidal gear. If it is Applicant’s intentions to claim the combination of the tool, tool carrier, adjustment mechanism, pivoting arm, pivoting device, and cycloidal gear, it is suggested Applicant delete the “or” limitation. The subject matter for the combination of elements appears to be set forth in at least Para [0035].
Applicant argues the combination of a nut and threaded spindle of Heckl, as identified as the adjustment mechanism, is not the same as an adjustment mechanism by which the “tool carrier can be aligned with the plane lying at a right angle to the extrusion axis.” Applicant further states, the threaded spindle moves the nut tangentially or radially with respect to the extrusion axis.
The phrase “tool carrier can be aligned with the plane lying at a right angle to the extrusion axis” discloses function and does not impart structure to the adjusting mechanism. In other words, the claim has not set forth any structural limitations defining the adjusting mechanism. An analysis of the claim will be set forth below:
The limitation “the tool is connected to the tool carrier” is a positive recitation which requires the structure of the tool and the tool carrier.
The limitation “and can be aligned” is an intended use limitation.
The limitation “an adjustment mechanism” is currently under 112, second and it is unclear if the structure of the adjustment member is required by the scope of the claims. Assuming the adjusting mechanism is positively recited, Heckl teaches an adjusting mechanism (18) which permits movement of the tool and the tool carrier to align with the extrusion axis (Para 0001). The BRI of the term “adjustment” as defined by Merriam Webster Dictionary means “the act or process of adjusting.” The term “adjusting” is defined as “to bring to a more satisfactory state.” The BRI of the term “mechanism” per Merriam Webster Dictionary is defined as “a piece of machinery.” Per the BRI of the term “adjusting mechanism” the structures identified in Heckl teach and suggest the claim limitation.
Applicant argues Huber describes “an improvement in a cutting tool for rods and tubes, and in particular, describes an apparatus having a series of two or more cutters and means for simultaneously shifting said cutters radially different distances.” Applicant argues Huber does not describe an adjusting mechanism that moves the plane of the cutting tool, which is at a right angle to the extrusion axis, axially along the extrusion axis; therefore, Huber does not teach or suggest an adjustment mechanism by which the tool can be aligned…with a plane lying at a right angle to the extrusion axis.
The phrase “tool carrier can be aligned with the plane lying at a right angle to the extrusion axis” discloses function and does not impart structure to the adjusting mechanism. In other words, the claim has not set forth any structural limitations defining the adjusting mechanism. An analysis of the claim will be set forth below:
The limitation “the tool is connected to the tool carrier” is a positive recitation which requires the structure of the tool and the tool carrier.
The limitation “and can be aligned” is an intended use limitation.
The limitation “an adjustment mechanism” is currently under 112, second and it is unclear if the structure of the adjustment member is required by the scope of the claims. Assuming the adjusting mechanism is positively recited, Huber teaches an adjusting mechanism (6) which permits movement of the tool and the tool carrier to align with the extrusion axis. Huber teaches on Pg. 1, lines 43-47, that “provision is made for adjusting the cutters in the blocks, as for example by screws 6, which will shift the cutters longitudinally.” Figure 1 discloses the adjusting mechanism of Huber aligns a tool that is connected with tool carrier with a plane lying at a right angle to an axis.
Applicant’s arguments to the pivoting device comprising at least one cycloidal gear are moot, since this limitation is disclosed in the “or” clause which has not been examined. As set forth above, if it is Applicant’s intent to recite the combination of the tool, tool carrier, adjusting mechanism, pivoting device and cycloidal gear the “or” clause should be deleted from the claim limitation.
Applicant does not present any new arguments with respect to claims 2-3.
Conclusion
THIS ACTION IS MADE FINAL. 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 JENNIFER S MATTHEWS whose telephone number is (571)270-5843. The examiner can normally be reached Monday-Thursday 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER S MATTHEWS/Primary Examiner, Art Unit 3724
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