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 .
Response to Amendment
Applicant’s amendments to the claims filed October 14, 2025, has been entered. Claims 1-2, 12, and 19 are currently amended. Claims 3, 8-11, 16 and 17 are cancelled. Claims 20-22 are new. Claims 1-2, 4-7, 12-15, and 19-22 are pending and under examination. Applicant’s arguments have been considered and found unpersuasive.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 – 2, 5 – 7, 10, 12 – 15, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over the non-patent literature of Hamilton Form Company (“Power Units and Carts”; “Hamilton” – of record), in view of Whalen et al. (US 2024/0229482 A9 – of record), and the non-patent literature of Shade Aide (SHADE AIDE® HMI Sun Protector – of record).
Regarding claim 1. Hamilton teaches a pre-tensioning machine (Hamilton’s PU35/PU46 Power Unit) comprising:
a body structure (see the annotated copy of Hamilton figure below);
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In the above annotated figure, the annotations were added by the Examiner to facilitate the discussion of Hamilton. In the above figure, BS shows the body structure of Hamilton’s pre-tensioning machine, and HC is a hydraulic cylinder mounted external to the body structure on a side of the body structure, and contained within a stanchion (see the above figure).
Hamilton does not explicitly disclose that the hydraulic cylinder is fluidly coupled to a hydraulic circuit that is mounted internally in the body structure.
Nonetheless, Hamilton discloses that the PU35/PU46 Power Units can be setup for 1⁄2-inch (35 kips) or .6-inch (46 kips) stressing capability and are coupled with a 10 HP – 3 PH electric motor powers an energy saving variable displacement, pressure compensated, pump that reduces heat build-up, and with a fully programable digital monitor allowing tracking of initial and final pressures. (Hamilton page 1, first paragraph).
Additionally, hydraulic cylinders fluidly coupled to a hydraulic circuit are well known in the art, for example, in the same field of endeavor of pre-tensioning machines, Whalen et al. teaches a pre-tensioning machine (“cable tensioning unit 100,” see FIG. 1 and [0025]) comprising a body structure (e.g., “unit housing 102”, FIG. 1), a hydraulic cylinder (see [0050] “one or more hydraulic cylinder on the hydraulic jack 101”) fluidly coupled to a hydraulic circuit (e.g., [0027] “the unit housing 102 further includes a hydraulic line reel 301 for retracting one or more hydraulic lines. In some embodiments, the unit housing 102 encloses one or more hydraulic line couplings 302 configured to connect various hydraulic system components,” see FIG. 3, and [0048] “hydraulic hose connections 1201,” see FIG. 12); a hydraulic pump fluidly coupled to the hydraulic circuit and mounted internally in the body structure (see [0026] “within the unit housing 102 resides one or more of a retractable power line reel 201, a hydraulic pump with electric motor 202, a hydraulic tank 203, and a cooling fan 204”; see [0029] “the tensioner unit 100 includes one or more electrical connections and one or more hydraulic connections configured to interface with a variety of tensioner components.”); Whalen et al. further discloses that the hydraulic jack is removably coupled to a top portion of the unit housing, and that the controller could be configured to control, monitor, and/or record pull information [0004].
Whalen et al. further discloses the pre-tensioning machine comprises a tensioner unit control panel 600, the control panel 600 includes one or more of a hydraulic actuator 601, start button 602, stop button 603, initial tension actuator 604, final tension actuator 605, emergency stop 606, auxiliary actuator 607, and controller interface 608, the controller 303 is configured to monitor and/or record pull data for tracking and archiving purposes. In some embodiments, the data can be transferred through the wireless connection or through one or more data ports. FIG. 7 shows data ports in the form of USB ports according to some embodiments. In some embodiments, the control panel 600 includes an upload USB port 701 and/or a download USB port 702. [0030].
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the hydraulic cylinder in the pre-tensioning machine of Hamilton to be fluidly coupled to a hydraulic circuit that is mounted internally in the body structure, as taught by Whalen et al., for the purpose of providing the pre-tensioning machine of Hamilton with one or more hydraulic connections configured to interface with a variety of tensioner components such as, among others, a hydraulic pump with electric motor, and a hydraulic tank, as taught by Whalen et al. [0026 – 0029], since one of ordinary skill in the art could have applied the known hydraulic circuit system in the same way to the known hydraulic cylinder in the pre-tensioning machine of Hamilton, and the results of the substitution would have been predictable e.g., create hydraulic connections configured to interface with a variety of tensioner components, as taught by Whalen et al. [0029]. See MPEP 2143 (I)(C).
As to the amended limitation “a human to machine interface (HMI) display, comprising a control panel, that is located externally on the body structure and that is configured for one or more of: set point inputs, force and load display and step by step operation of the pre-tensioning machine.”
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Hamilton teaches a human to machine interface (HMI), see the annotated copy of Hamilton’s figure below:
Furthermore, Whalen et al. discloses a tensioner unit control panel 600 comprising an HMI display (controller interface 608 (HMI); FIG. 6; [0030-0032]), that can be configured for one or more of: set point inputs (e.g., “target data” [0035]), force and load display and step by step operation of the pre-tensioning machine (see Whalen et al. [0030-0042]).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the pre-tensioning machine of Hamilton/Whalen with a control panel (e.g., Whalen et al. 600, [0030]) configured for one or more of: set point inputs, force and load display and step by step operation of the pre-tensioning machine (Whalen et al. [0030]-[0042]), as taught and suggested by Whalen et al., for the purpose of providing the pre-tensioning machine with the tensioner unit control panel 600 of Whalen et al. comprising a controller 303 which is configured to monitor and/or record pull data for tracking and archiving purposes, so that the data can be transferred through the wireless connection or through one or more data ports, e.g., an upload USB port 701 and/or a download USB port 702, as taught by Whalen et al. [0030]. See MPEP 2143 (I)(G).
As to the amended limitation “a retractable sun-shade surrounding the HMI,” Hamilton/Whalen does not disclose a retractable sun-shade surrounding the HMI.
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Nonetheless, Hamilton discloses a lid/cover over the HMI display (see the annotated copy of Hamilton’s figure below:
In the above annotated figure the annotations were added by the examiner to facilitate the discussion of Hamilton. In the above figure, shown is a lid/cover capable of covering the control panel comprising the HMI of Hamilton’s pre-tensioning machine when the lid/cover hinges from an open position to a closed position (construing Hamilton’s lid/cover under the broadest reasonable interpretation, said lid/cover action is interpreted as being analogous to “retractable”).
Furthermore, and/or in the alternative, retractable sun-shade elements for displays such as an “HMI” are well known in the prior art. For example, Shade Aide teaches a size/fit customizable HMI Sun Protector that collapses [analogous to the claimed “retractable sun-shade surrounding the HMI”], when not in use and is fully lockable; capable of protecting the HMI display from the harmful effects of constant UV ray exposure, “saving your maintenance budget from replacement HMI costs due to excessive sun exposure”; allowing the user to view the display “no matter how bright the sun” (Shade Aide, pages 1 – 3). See image below:
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Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the retractable lid/cover (as taught by Hamilton’s figure above) in the pre-tensioning machine of Hamilton/Whalen with a retractable sun-shade surrounding the HMI, as taught by Shade Aide, and the results would have been predictable to one of ordinary skill in the art, one of ordinary skill in the art could have been motivated to pursue the modification for the purpose of e.g., protecting the HMI display from UV ray exposure and allowing the user to view the display under bright sun conditions while operating the machine on the field, as taught by Shade Aide (See MPEP 2143(I)(G)), since Hamilton’s lid/cover, when in the open position does not provide shade protection to the HMI. See MPEP 2143(I)(C).
Regarding claim 2. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 1 further comprising: a plurality of wheels mounted on the body structure (see Hamilton’s annotated figures in the discussion of claim 1 above, and Whalen et al. [0026] tires 205);
an extended nose design (see the annotated copy of Hamilton’s figures below), in the below figure, EN is an extended nose design mounted on the end of the stanchion opposite a stressing ram (Whalen et al. also discloses an extended nose design e.g., Whalen et al. [0047] cone shaped nose 1101, FIG. 11; [0049] cone shaped nose 1301, and removable strand guide 1303, mounted on the end of the stanchion [Whalen et al. 402] opposite the stressing ram [Whalen et al. 403] see FIG. 14).
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Regarding claim 5. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 2, wherein the extended nose design comprise a replaceable nose piece (e.g., see Whalen’s [0049] removable strand guide 1303).
Regarding claim 6. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 1, except for specifically disclosing, wherein the machine is configured to accommodate about a 2-inch centerline measured from chuck to chuck.
Nonetheless, Whalen et al. discloses the pre-tensioning machine is configured to accommodate chucks, e.g., a cable chuck yoke 404, removable cable chuck 405/407 capable of sliding over the cable to a desired position (see Whalen et al. at [0028]).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify Hamilton/Whalen/ShadeAide’s pre-tensioning machine by scaling the chuck capacity as needed, and the modification would have not performed differently (e.g., the machine will be capable of pre-tensioning as designed for), since such a modification would involve only a mere change in size of a component. Scaling up or down of an element which merely requires a change in size is generally considered as being within the ordinary skill in the art. See MPEP § 2144.04(IV)(A):
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 7. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 4, except for specifically disclosing, wherein the hydraulic pump (e.g., see Whalen’s [0026]) has a working pressure of at least about 3000 PSI and is one of pressure-compensated or variable volume pump.
Nonetheless, Hamilton teaches the pre-tensioning machine (power unit cart PU35/PU46) is “designed for high volume, high speed, pre-stressing [analogous to pre-tensioning] operations,” the power unit is available with “an energy saving variable displacement [analogous to the claimed “variable volume”], pressure compensated, pump that reduces heat build-up” (Hamilton first figure description, page 1, first paragraph)
As to the limitation, “the hydraulic pump has a working pressure of at least about 3000 PSI.” The examiner notes that the limitation is directed to the intended use and manner of operating the pre-tensioning machine, Applicant is respectfully reminded that, as per MPEP 2114 (II), the manner of operating the device does not differentiate apparatus claim from the prior art:
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
In this case, since the prior art (Hamilton/Whalen) discloses the use of a pressure-compensated and variable volume hydraulic pump, and the pre-tensioning capacity (e.g., strand pulling process, see Whalen et al. at [0033 – 0037]) of the machine is a variable that can be modified, among others, by adjusting said working pressure of the hydraulic pump, with said pre-tensioning capacity increasing as the working pressure of the hydraulic pump is increased, the precise working pressure of the hydraulic pump would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was effectively filed. As such, without showing unexpected results, the claimed hydraulic pump working pressure cannot be considered critical.
Accordingly, one of ordinary skill in the art at time the invention was effectively filed would have optimized, by routine experimentation, the thickness of the hydraulic pump working pressure in the pre-tensioning machine of Hamilton/Whalen to obtain the desired pre-tensioning capacity of the machine (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). MPEP § 2144.05 (II).
Regarding claim 12, claim 13, and claim 14. Applicant is respectfully reminded that, as per MPEP 2114 (II), the manner of operating the device does not differentiate apparatus claim from the prior art:
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 12. Nonetheless, Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 1, further comprising a capability for data logging to store preset jobs (e.g., Whalen et al. [0030, 0033-0035, 0040-0044]) – analogous to the intended use (data logging) of said apparatus.
Regarding claim 13. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 12, wherein the data logging stores final load and elongation parameters achieved for every pull within each job (Whalen et al. [0007, 0030-0037]).
Regarding claim 14. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 13, wherein job reports are capable of being saved in a pdf format and are configured to be downloadable wirelessly or via USB port (e.g., Whalen et al. [0030, 0032, 0035, 0045-0046]).
Regarding claim 15. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 2, wherein the plurality of wheels comprise three tires (see Whalen et al. FIG. 1, [0026]).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to rearrange the plurality of wheels in the pre-tensioning machine of Hamilton from four tires to three tires (e.g., the selection between 3 or 4 wheels would be a matter of "design choice" within the skill set of one having ordinary skill in the art), as taught by Whalen et al., since it have been held that a mere rearrangement of element without modification of the operation of the device involves only routine skill in the art. One would have been motivated to rearrange the tires to comprise a three tires arrangement, as taught by Whalen et al., for the purpose of reducing the number of parts of the pre-tensioning machine and therefore a reduction in materials cost, for example. See MPEP § 2144.04 (VI) (C):
It has generally been recognized that to shift location of parts when the operation of the device is not otherwise changed is within the level of ordinary skill in the art, In re Japikse, 86 USPQ 70; In re Gazda, 104 USPQ 400. In re Japikse, 181 F.2d 1019,86 USPQ 70 (CCPA 1950) Shifting the location of an element would not have modified the operation of device. In re Kuhle, 526 F.2d 553, 188 USPQ7 (CCPA 1975) The particular placement of an element was held to be obvious.
Regarding claim 18. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 2, further comprising: a yoke (Whalen et al. [0028]), and a trailer hitch mounted on the body structure (see Hamilton’s annotated figure below): Hamilton teaches the use of a trailer hitch on the pre-tensioning machine (see below annotated copy of Hamilton figures):
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Regarding claim 20. Applicant is respectfully reminded that, as per MPEP 2114 (II), the manner of operating the device does not differentiate apparatus claim from the prior art:
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Nonetheless, Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 1, wherein the pre-tensioning machine is configured for applying stress to a single strand or multi-strand tendon as part of concrete pre-tensioning (see Whalen et al. [0041]).
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hamilton in view of Whalen et al., and Shade Aide, as applied to claim 1 above, and further in view of the none-patent literature of Sun Hydraulics (“Increase productivity and reduce cycle times, all without sacrificing control and precision” 2022; “Sun”; of record), and the non-patent literature of Hydraulic Schematic Troubleshooting (“Decompression Circuit,” 2019; NPL_3; of record).
Regarding claim 4. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 1, further comprising: the hydraulic circuit comprising a hydraulic pump (see the discussion of claim 1 above), except for specifically disclosing, a regen valve and an automatic decompression circuit.
Nonetheless, Hamilton teaches that the pre-tensioning machine comprises a 10 HP – 3 PH electric motor powers an energy saving variable displacement, pressure compensated, pump that reduces heat build-up, and that the fully programable digital monitor allows easy tracking of initial and final pressures. (Hamilton page 1, paragraph 1).
Whalen et al. discloses that in some embodiments the controller 303 is configured to display a warning message indicating excess friction or wrong strand if the if the tensioning is moving slower or faster than preset tolerances (hence, precise control of the speed is required).
In the same field of endeavor of hydraulics circuits systems, Sun teaches that in hydraulic circuits, regenerative circuits divert the oil from the rod end of a cylinder back to the bore end, instead of channeling the fluid to a tank, allowing for a faster speed and reduced force. For example, providing equal extend and retract speeds when using a cylinder with a 2:1 area ratio between piston and rod (Sun Hydraulics page 1, paragraphs 1 – 2). Sun discloses that it’s “regen solutions are ideal for compacting machines as well as presses and machine tool applications when speed and/or force control is required.” (Sun page 2, “How to utilize these solutions,” second paragraph).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify Hamilton/Whalen/ShadeAide’s pre-tensioning machine hydraulic circuit with a regen valve, as taught by Sun, and the results would have been predictable to one of ordinary skill in the art, e.g., for the purpose of improving speed and/or force control of the pre-tensioning machine operation, as taught by Sun. MPEP 2143(I)(C).
As to the limitation “an automatic decompression circuit.”
In the same field of endeavor of hydraulic circuits systems, NPL_3 discloses the use of decompression circuits to avoid the generation of shock waves in hydraulic circuits when releasing the compressed working fluid instantly back to a reservoir (“Decompression Circuit” NPL_3 page 1, first paragraph).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify Hamilton/Whalen/ShadeAide/Sun’s pre-tensioning machine hydraulic circuit with an automatic decompression circuit, as taught by NPL_3, and the results would have been predictable to one of ordinary skill in the art, e.g., avoid the generation of shock waves in hydraulic circuits when releasing the compressed working fluid instantly back to a reservoir, as taught by NPL_3. MPEP 2143(I)(C).
As to the decompression circuit being “automatic,” automating the decompression circuit in the pre-tensioning machine of Hamilton/Whalen/ShadeAide/Sun/NPL_3 would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed, since it have been held that broadly providing a mechanical or automatic means to replace manual activity which accomplishes the same result involves only routine skill in the art. MPEP § 2144.04 (III):
In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.
Claim(s) 19, and 21 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over the non-patent literature of Hamilton Form Company (“Power Units and Carts”; “Hamilton” – of record), in view of Whalen et al. (US 2024/0229482 A9 – of record), and the non-patent literature of Shade Aide (SHADE AIDE® HMI Sun Protector – of record), as applied to claim 18 above, as evidenced by BACCEGA et al. (IT-1302481-B1).
Note: The prior art of BACCEGA et al. is introduced as evidentiary reference of prior art pre-tensioning devices comprising control panels arranged at different locations on the machine structure. Therefore, it does not change/modifies the rejection over Hamilton/Whalen/ShadeAide as previously presented, since the added discussion of the prior art in view of the evidentiary reference of BACCEGA et al. does not changes the thrust of the rejection, as the rejection does not rely on any teaching from BACCEGA et al.
Regarding claim 19. Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 18, wherein the control panel is located externally on the body structure (e.g., see Hamilton’s annotated figure in the discussion of claim 1 at point 9 above), except for opposite the yoke and trailer hitch.
Nonetheless, rearranging the control panel would have been obvious to a PHOSITA, since it would not modify the operation of the machine (e.g., the rearrangement of the control panel to be opposite the yoke and trailer hitch would have been a matter of design choice, and such would have involved well known changes within the skillset of an artisan in the art e.g., wiring rearrangement that would have not change or modify in any significant way the operation of the machine and the result of the rearrangement would have been predictable with no unobvious or unexpected results i.e., the machine of the prior art would have provided a pre-tensioning function within the parameters set on the control panel by an operator regardless to where in the machine the control panel is rearrange). See MPEP § 2144.04 (VI) (C):
In re Japikse, 181 F.2d 1019,86 USPQ 70 (CCPA 1950) “Shifting the location of an element would not have modified the operation of device.” In re Kuhle, 526 F.2d 553, 188 USPQ7 (CCPA 1975) “The particular placement of an element was held to be obvious.”
Furthermore, pre-tensioning machines with control panel arranged in other locations on the machine body structure are well known in the prior art. For example, evidentiary reference BACCEGA et al. discloses a pre-tensioning machine 5 comprising a control panel 54 with an arrangement different (see BACCEGA et al. FIG. 2) from that of Hamilton/Whalen. BACCEGA et al. discloses that the pre-tensioning machine allows to detect and archive electronically the values of the actual prestress applied to the prestressed and post-tensioned reinforced concrete products, allows to keep constantly under control the stringing of the strands, ensuring compliance with the data of project set up, control, registration and archiving of the measured values and thus ensuring a complete response to the qualitative needs of the production of products in prestressed and post-tensioned reinforced concrete (Abstract).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the pre-tensioning machine of Hamilton/Whalen/ShadeAide by rearranging the control panel to a different position on the body structure of the machine, as evidenced by BACCEGA et al., e.g., opposite the yoke and trailer hitch, since it have been held that a mere rearrangement of element without modification of the operation of the device involves only routine skill in the art. MPEP § 2144.04 (VI) (C):
It has generally been recognized that to shift location of parts when the operation of the device is not otherwise changed is within the level of ordinary skill in the art, In re Japikse, 86 USPQ 70; In re Gazda, 104 USPQ 400.
Regarding claim 21, the examiner notes that claim 21 differs from claim 1 by having the limitations of claims 18 and claim 19 incorporated into claim 21 (i.e., a yoke and a trailer hitch mounted on the body structure, and the control panel mounted opposite the yoke and trailer hitch). Therefore, claim 21 is rejected as obvious over Hamilton/Whalen/ShadeAide over the same bases of rejection as discussed in claim 18 and claim 19 above, as evidenced by BACCEGA.
Regarding claim 22. As previously indicated, Applicant is respectfully reminded that, as per MPEP 2114 (II), the manner of operating the device does not differentiate apparatus claim from the prior art. Nonetheless, Hamilton/Whalen/ShadeAide teaches the pre-tensioning machine of claim 21, wherein the pre-tensioning machine is configured for applying stress to a single strand or multi-strand tendon as part of concrete pre- tensioning (see Whalen et al. [0041]).
Response to Arguments
Applicant's arguments filed October 14, 2025, have been fully considered but they are not persuasive.
In response to applicant's argument that the modification of Hamilton with the hydraulic circuit of Whalen et al. is based in hindsight and lacks any underlying technical reasoning supporting the combination (Remarks pages 4 – 8), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the prior art of both Hamilton and Whalen et al. are directed to virtually identical devices both in structures and function, i.e., pre-tensioning devices, both comprising analogous hydraulic circuits and the modification encompasses a mere rearrangement of the hydraulic system (which Hamilton’s machine does indeed comprises however is silent to the placement), within the pre-tensioning machine structure and which rearrangement would have not modified the operation of the device. MPEP § 2144.04 (VI) (C): In re Japikse, 181 F.2d 1019,86 USPQ 70 (CCPA 1950) “Shifting the location of an element would not have modified the operation of device.” In re Kuhle, 526 F.2d 553, 188 USPQ7 (CCPA 1975) “The particular placement of an element was held to be obvious.”
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning (Remarks pages 6-7), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Therefore, Applicant’s arguments are unpersuasive. Absent persuasive evidence or arguments, the examiner submits the claims would need to be further amended to overcome the prima facie case.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
EP-1691009-A1: see Figs. 1, 4, 6-7 showing a pre-tensioning machine comprising a control panel mounted on the body structure at a non-lateral position similar to the claimed pre-tensioning machine.
WO 2015158329 A1: see FIG. 1 showing a pre-tensioning machine 1 comprising a control panel 8 mounted on the body structure at a non-lateral position similar to the claimed pre-tensioning machine.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDGAREDMANUEL TROCHE whose telephone number is (571)272-9766. The examiner can normally be reached M-F 7:30-5:30.
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.
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/EDGAREDMANUEL TROCHE/Examiner, Art Unit 1744
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742