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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5, drawn to a system for mounting a shoe to a conduit bender.
II. Claims 6-14, drawn to a roller support assembly tool and method of using.
The inventions are independent or distinct, each from the other because:
Inventions I and II are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together and they have different designs, modes of operation, and effects (MPEP § 802.01 and § 806.06). In the instant case, the different inventions relate to distinct features of a bending device. That is, Group I is directed to a system for mounting a shoe to a conduit bender which requires pins on a shoe to interact with a sprocket on the bending device. Group II is directed to a roller support assembly and method of using, which while being located on the same device, is distinct from the shoe, pins, or sprocket as the roller support assembly does not interact with or depend on them. Moreover, the roller support assembly may be practiced entirely separately from the system for mounting a shoe. Moreover, each may be applicable to devices which do not rely on the other.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, paragraph A.
In the present case, reasons (b) and (d) apply given the explanation relating to divergent subject matter above.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Attorney Jodi Hartman on 8 June 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Current Tools (“Operating, Maintenance, Safety and Parts Manual” for “77 Series Electric Bender with Single Shoe Groups,” NPL U) in view of Greenlee (Instruction Manual for “555C Electric Bender Classic,” NPL V).
As to claim 1, Current Tools teaches a system for mounting a shoe to a conduit bender (as shown on Page 10, the bending shoe is mounted to the main drive sprocket via the drive studs), the system comprising at least one [component] comprising a flared portion (as shown in Fig 10b, the drive studs each have a flared portion. Here, the term “flared portion” is given the broadest reasonable interpretation of a portion of the component which has a larger diameter than other portions of the component. The flared portion is identified in Examiner’s, zoomed, rotated, annotated Fig 10b, below).
PNG
media_image1.png
394
710
media_image1.png
Greyscale
PNG
media_image2.png
832
640
media_image2.png
Greyscale
Current Tools does not teach the component having a flared portion is a bolt. Rather, the component is described as a “drive stud.”
However, in the field of electric benders, and mechanical product design more broadly, it was known at the time the invention was effectively filed to provide for drive studs useful for connecting bender shoes to sprockets as bolts. See Greenlee which teaches a similar shoe having drive studs, 3 in the Figure below, as found on Page 41.
PNG
media_image3.png
334
290
media_image3.png
Greyscale
PNG
media_image4.png
259
309
media_image4.png
Greyscale
As shown in the Figure, the drive studs are bolts, as they have a head portion, a straight shank portion, and a threaded portion.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have formed the drive studs of Current Tools as bolts in the manner of Greenlee. Such a person would have been motivated to do so in order to be able to easily change the drive studs, in the case of maintenance. By using a bolt (as opposed to being welded, or with a different connection), the drive studs can more easily be changed using normal bolt-driving tools.
As to claim 2, Current Tools in view of Greenlee teaches the system of claim 1, wherein the at least one bolt further comprises a head, a straight shank portion, and a threaded portion (as shown in Greenlee’s illustration of Page 41 (shown zoomed, above), the drive studs 3 have each of the claimed portions).
As to claim 3, Current Tools in view of Greenlee teaches the system of claim 2, wherein the at least one bolt is secured to the shoe via the threaded portion (as illustrated by Greenlee on page 41, the drive studs are assembled to the shoe threaded-end first. It would have been within the understanding of a person having ordinary technical skill that the drive stud is therefore secured to the shoe via the threaded portion.).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Current Tools (“Operating, Maintenance, Safety and Parts Manual” for “77 Series Electric Bender with Single Shoe Groups,” NPL U) in view of Greenlee (Instruction Manual for “555C Electric Bender Classic,” NPL V) as applied to claim 1, and further in view of practicalmachinist (“Chamfering 101,” NPL W)
As to claim 4, Current Tools in view of Greenlee teaches the system of claim 1, further comprising a drive sprocket (Current Tools Fig 10b teaches a “main drive sprocket”). Current Tools nor Greenlee teaches: the drive sprocket comprises at least one countersunk hole for receiving the at least one bolt.
Rather, Current Tools’ drive sprocket is illustrated as having through holes, but no countersunk portion.
However, at the time the invention was effectively filed, it was well understood that through holes should have chamfers on them to aid in the installation or assembly of components entering the hole. See practicalmachinist which teaches “Chamfer holes [are] most commonly created so that a certain assembly component can be inserted into the hole.” The main sprocket of Current Tools has holes intended to receive the drive studs of the shoe.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided for chamfers at the edge of the holes of the main sprocket which face the drive studs in order to make assembly of the drive studs into the holes easier. Assembly is made easier as the chamfer surface is sloped and thus helps guide a component (drive stud) into the hole.
As to claim 5, Current Tools in view of Greenlee teaches the system of claim 4, wherein the at least one countersunk hole comprises a straight portion and a chamfered portion (as illustrated at practicalmachinist page 2, a countersunk hole has a chamfered portion and a straight portion.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please note that the independent claim is directed to a bolt on a conduit bender, but does not specify that the bolt is useful for mounting a shoe. Thus, any bolt having a flared portion (for example, a hex head) located on a conduit bender would meet the claimed bolt.
There are bolts present in Luikart (5,499,521), see Fig 6 item 80; Evenson (4,180,997), see Fig 8 item 22; Pearson (3,921,424), bolts 57, 63; Plummer (10,449,587), see bolt 524.
Note also that the flared portion and the countersunk portion are not claimed to cooperate in any way. Moreover, the flared portion’s taper (such as it is described in the specification, but not claimed) and the countersink are not claimed to extend in any particular direction relative to each other.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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.
/JACOB J CIGNA/Primary Examiner, Art Unit 3726 9 June 2026
Prosecution Insights