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:
Claim 4: “a mobile computing device configured to selectively enable operation of the program controller”
Claim 5: “an adjustment mechanism configured to enable adjustment of the position of the bearing wheel…”
Claim 7: “a quick release mechanism configured to facilitate selective coupling of the bender shoe to the output shaft”
Claim 9: “an automatic feed mechanism configured to advance the section of conduit relative to the bender shoe from an initial position to a bend position.”
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 § 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.
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.
Claims 2-9 are rejected under 35 U.S.C. 103 as being unpatentable over Oda et al. (hereafter “Oda”)(US 6,026,668) in view of Plummer et al. (hereafter “Plummer”) (US Patent 9,849,494).
With regards to claim 2, Oda discloses a portable conduit bending apparatus comprising:
a driver (motor 1) configured to rotate a driven shaft at a first rotational output;
a reductive gear set (3a-3g) operably coupled to the driven shaft and to an output shaft (4), the reductive gear set configured to reduce the first rotational output to a second rotational output at the output shaft;
a housing (6) defining an interior cavity configured to house the reductive gear set, the housing being configured for transport with a handgrip (handle 7);
a bender shoe (12) couplable to the output shaft, the bender shoe defining an arcuate channel shaped to receive a section of conduit;
a bearing wheel (19) disposed adjacent the bender shoe and configured to support the section of conduit during bending;
Oda discloses the invention substantially as claimed except for a programmable controller in communication with the driver, the programmable controller configured to operate the driver according to a set of defined bend specifications, and further configured to enable configuration, control, sensing, and display of conduit bending operations ;a user interface in communication with the programmable controller and configured to enable a user to define the set of bend specifications; a sensor configured to sense an angular position of the bender shoe relative to the housing; and a display configured to display a digital readout of the angular position the bender shoe. Plummer is relied upon to teach a bending tool (200) a programmable controller (25) in communication with the driver (250), the programmable controller configured to operate the driver according to a set of defined bend specifications, and further configured to enable configuration, control, sensing, and display of conduit bending operations; a user interface in communication with the programmable controller and configured to enable a user to define the set of bend specifications [Column 5, lines 50-60; Column 6, lines 40-60 and Column 30, lines 40-50]; a sensor (320) configured to sense an angular position of the bender shoe relative to the housing; and a display configured to display a digital readout of the angular position the bender shoe [Column 7, lines 15-20]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide Oda’s bending tool with programmable controller and remote user interface because combining prior art elements according to known methods to yield predictable results require only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
The combination of Oda and Plummer discloses the invention substantially as claimed except for wherein the driver is battery powered. It is considered to be well-known that handheld bending tool are battery powered. It would have been obvious for one of ordinary skill in the art to provide Oda’s tool to be battery powered, since it would have been obvious to try this technique when choosing from a finite number of identified, predictable solutions for powering a hand tool, with a reasonable expectation of success. SR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP 2143(I)(E).
With regards to claim 3, Plummer teaches wherein the set of defined bend specifications (1011) includes a desired bend angle for a bend in the section of conduit.
With regards to claim 4, Plummer teaches further comprising a mobile computing device wirelessly coupleable to the programmable controller, the mobile computing device configured to selectively enable operation of the programmable controller [Column 30, lines 40-50].
With regards to claim 5, Oda discloses wherein the bearing wheel includes an adjustment mechanism (27) configured to enable adjustment of the position of the bearing wheel relative to the housing or the bender shoe by manipulating a locking device and manually positioning the bearing wheel.
With regards to claim 6, Oda discloses wherein the housing includes a set of bearing wheel markings (20 and 21) configured to indicate positions of the bearing wheel for different conduit diameters [Column 7, lines 1-25].
With regards to claim 7, Oda discloses a quick release mechanism (10, 11a) configured to facilitate selective coupling of the bender shoe to the output shaft. Oda discloses the invention substantially as claimed except for wherein the output shaft includes a polygonal cross-section. It is considered to be well-known that an output shaft can have a polygonal cross-section or cylindrical cross-section. It would have been obvious for one of ordinary skill in the art to have Oda’s shaft with a polygonal cross-section, since it would have been obvious to try this technique when choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. SR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP 2143(I)(E).
With regards to claim 8, Oda discloses wherein the driver is configured to receive actuation input from at least one of a trigger or activation button (9) mounted on the housing.
With regards to claim 9, Plummer teaches further comprising an automatic feed mechanism configured to advance the section of conduit relative to the bender shoe from an initial position to a bend position [Column 21, lines 5-30].
Conclusion
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.
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, 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.
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.
/TERESA M EKIERT/Primary Examiner, Art Unit 3725
Prosecution Insights