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: “a plurality of clamping portions configured to” in claim 1.
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 2-4 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 2 recites the limitation “the clamping portions”. There is insufficient antecedent basis for this limitation in the claim. For the purposes of this examination, this limitation will be interpreted as “one of the plurality of clamping portions”
Claim 3 recites “the clamping portion” while claim 2 recites “the clamping portions”. It is unclear if the clamping portion of claim 3 is one of those in claim 2 or not. For the purposes of this examination, this limitation will be interpreted as “the one of the plurality of clamping portions”.
Claim 4 recites “the clamping portion” while claim 1 recites “a plurality of clamping portions”. It is unclear if the clamping portion of claim 4 is one of those in claim 1, if the fixed-side clamping portion and movable-side clamping portions are of the plurality, or if this “clamping portion” is something else altogether. For the purposes of this examination, this limitation will be interpreted as “the plurality of clamping portions”.
Claim 4 recites the limitation “the pad member”. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 2 are rejected under 35 U.S.C. 102a1 as being anticipated by JP S56-80889-U.
Regarding claim 1, ‘889 discloses:
A clamp device [pipe clamp; figure 2] configured to clamp outer circumferential surfaces of a pair of pipe members while having end surfaces of the pair of pipe members to be welded facing each other [figures 1 and 2], the clamp device comprising:
a plurality of clamping portions [angle (3)] configured to clamp the outer circumferential surfaces of the pair of pipe members [see figures 1 and 3]; and
a projecting piece [gap plate (2)] that is provided on at least one of the clamping portions and that is inserted between the end surfaces of the pair of pipe members.
Regarding claim 2, ‘889 discloses:
wherein the clamping portions have a flat surface [angles (3) have flat surfaces] configured to abut the outer circumferential surface of the pair of pipe members, and the projecting piece is provided so as to protrude from the flat surface [see figure 2].
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Penny (US 5,135,209) in view of JP S56-80889-U.
Regarding claim 1, Penny teaches:
A clamp device [pipe clamp apparatus; figures 1, 6A, 14, and 15] configured to clamp outer circumferential surfaces of a pair of pipe members while having end surfaces of the pair of pipe members to be welded facing each other [figure 14], the clamp device comprising:
a plurality of clamping portions [socket (38) and V-shaped brackets (24, 31) each comprising recesses (29, 30 and 36, 37); figures 6A, and 15 and 4:62-68] configured to clamp the outer circumferential surfaces of the pair of pipe members [figure 14].
Penny does not teach:
a projecting piece that is provided on at least one of the clamping portions and that is inserted between the end surfaces of the pair of pipe members.
Note that the recesses are aligned relative to one another when secured together to provide access to a pipe joint positioned within the recesses for a machining procedure and the like; abstract.
‘889 teaches a pipe clamp wherein angle (3) comprises gap plate (2) in order to set the root gap between pipes; description.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the ‘889 gap plate onto the V-shaped brackets in order to be able to set the root gap between pipes prior to tack welding
Regarding claim 2, Penny teaches:
wherein the clamping portions have a flat surface [plates (25, 26 and 32, 33) have flat surfaces] configured to abut the outer circumferential surface of the pair of pipe members [see figure 14], and the projecting piece is provided so as to protrude from the flat surface [this is addressed by the incorporation of gap plate (2) in the rejection of claim 1].
Regarding claim 3, Penny teaches:
wherein the clamping portion comprises:
a support member [socket (38)]; and
a pair of pad members [plates (25, 26 and 32, 33)] that are swingably supported by the support member [socket (38) swivels on swivel connection (23b)], each of the pair of pad members having the flat surface [plates (25, 26 and 32, 33) have flat surfaces], and
wherein each of the flat surfaces of the pair of pad members receives a pressing load and abuts the outer circumferential surfaces of the pair of pipe members [see figure 14].
Regarding claim 4, Penny teaches:
wherein the clamping portion is constituted by:
a fixed-side clamping portion [V-shaped bracket (24) is fixed to first leg (13) via threaded rod (23) or slotted connection (39)]; and
a movable-side clamping portion [V-shaped bracket (31) is fixed to second leg (14) via threaded rod (20) so as to move] that approaches or moves away with respect to the fixed-side clamping portion.
Penny does not teach:
the projecting piece is provided only on the pad member of the fixed-side clamping portion.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to place the gap plate only onto one of the V-shaped brackets in order to avoid having complications due to the need for perfect alignment if both brackets have the gap plate, reduce manufacturing cost, or one is not worried about distortion due to the heat of tack welding due to the size of the pipes. As for specifically picking the fixed-side clamping portion, there are only two options so either is as viable as the other, minus any unexpected results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure; see PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS J GAMINO whose telephone number is (571)270-5826. The examiner can normally be reached M-F 9-6.
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, Keith Walker can be reached at 5712723458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARLOS J GAMINO/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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