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 Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites in brackets “[Possible European Claim: Claim 1:….]” Words and/or phrases in brackets are not considered part of the claim and should be deleted.
Appropriate correction is required.
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 4-5 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.
Claims 4 and 5 recites: “wherein the computer downloads the at least one of the current data, crimp completion determinations and error determinations stored in the memory… wherein the computer generates a report based on the at least one of the current data, crimp completion determinations and error determinations.” Wherein statements are used to further define previously set forth elements. In this case, a wherein statement is used to further define an element that was not previously, positively set forth, which makes it unclear if the recited element is required by the claimed apparatus. Claim 3 recites “a computer” when further defining the crimping tool’s capabilities but does not recite that a computer is part of the claimed device of a crimping tool.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,108,205.
Claims 1-2 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,170,432.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences which exist between the claims would be obvious to one having ordinary skill in the art upon review of the accompanying claims and disclosure.
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 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barezzani (WO 2016005838 A1).
With regards to claim 1, Barezzani discloses a crimping tool (figure 7, element 1) comprising:
a housing (2),
a motor (figure 11, element 6) disposed within the housing (paragraph 0017, i.e., “the housing 2 houses an electric motor 6”),
a switch (figure 7, element 7) connected to the motor for activating the motor (figure 11 and paragraph 0017, i.e. the switch (7) control the motor through a control circuit (9) and battery (5)),
a pump driven by the motor (figure 11, i.e. a hydraulic pump (11) driven by the motor (6)),
a piston driven by the pump (figure 11, i.e. a piston (12) driven by the pump (11)),
an indenter (figure 7A, i.e. a jaw (14’) create dents in a workpiece) operably connected to the piston (figures 11),
a tool head connected to the housing (figure 7 and page 5, lines 1-3, i.e. a compression head where the jaws are located),
wherein a workpiece can be disposed between the tool head and the indenter (figure 7A, i.e. a workpiece is crimped using an indenter in the form of a jaw (14’)),
a current sensor (figure 11, element 23 and paragraph 0051) connected to the motor for sensing current flowing through the motor (figure 11, i.e. the current sensor (23) is connected to the motor via the control circuit (9); paragraph 0031, i.e. the current sensor reads the current drawn by the motor (6)),
a processor (paragraph 0054, i.e. the control circuit (9) contains a processor in the form of a CPU) configured to receive current data from the current sensor (paragraph 0054, i.e. the control circuit (9) with the CPU receives signals from the current sensor (23)),
the processor is configured to analyze the current data (paragraph 0054, i.e. the control circuit (9) with the CPU processes the signals from the current sensor (23)) to determine at least one of completion of a crimping operation and an error condition (paragraph 0056, i.e. the control circuit (9) with the CPU determines and displays a confirmation of the outcome of the compression process, where the confirmation of a crimping outcome includes at least the indication of a successful and unsuccessful crimping of the workpiece; unsuccessful crimping is a form of an error), and
a display (figure 11, element 18) connected to the processor for indicating at least one of completion of a crimping operation and an error condition (paragraph 0056, i.e. a confirmation of the outcome of the compression process is displayed, where the outcome of compression processes include the successful or unsuccessful crimping of the workpiece).
With regards to claim 6, Barezzani further discloses the crimping tool further comprising a battery (figure 7, element 5) pack attachable to the housing (2) for providing power to the motor (paragraph 0017, i.e. the battery (5) powers the motor (6)).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Barezzani in view of Miyamoto et al. (hereinafter “Miyamoto”) (US 20030079513 A1).
With regards to claim 2, Barezzani discloses the tool further comprising a memory connected to the processor (paragraph 0054, i.e. the control circuit (9) that includes the process (CPU) also includes an internal memory) for processing at least one of the current data, crimp completion determinations and error determinations (paragraphs 0054 and 0056). Barezzani does not explicitly disclose the memory storing the data. However, in the same field of endeavor, Miyamoto teaches a crimping tool (figure 9) having a memory that stores the normal or abnormal state of the crimping operations, in order to prevent future abnormal crimping operations (paragraph 0071, i.e. a normal crimping operation is a completion of a crimping operation, and an abnormal crimping operation is an error condition). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to modify the memory of Barezzani’s crimping tool to store the crimping operation outcomes as taught by Miyamoto, in order to prevent future abnormal crimping operations (paragraph 0071).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Barezzani in view of Miyamoto, and further in view of Bungter et al. (hereinafter “Bungter”) (US 20160016222 A1).
With regards to claims 3 and 4, the combination of Barezzani and Miyamoto teaches the invention substantially as claimed, except for the crimping tool being capable of connecting to a computer, but Barezzani recognizes that the crimping tool is capable of connecting to an external memory to upload saved data (paragraph 0054). However, in the same field of endeavor, Bungter teaches a pressing tool (paragraph 0001, i.e. the pressing tool also performs crimping) having an internal memory that stores current data (paragraphs 0009), crimping processes completion and error data (paragraphs 0006, 0027), where the captured and stored data are transferred to a computer in order to analyze and read the data at a later time (paragraphs 0019, 0032, and 0033). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to modify the crimping tool of Barezzani to be capable of transferring saved data as taught by Bungter, in order to analyze and read the data at a later time (paragraph 0019).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and further show the state of the art: US Patent 5,657,417.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA M EKIERT whose telephone number is (571)272-1901. The examiner can normally be reached Monday-Friday 8AM-4:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Templeton can be reached at 571-270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TERESA M EKIERT/Primary Examiner, Art Unit 3725
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