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 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.
Claim 27 and 40 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.
With regards to claim 27, the claim states “wherein movement of the handle with respect to the frame advances the ratcheting mechanism”, this renders the claim indefinite since claim 26, from which claim 27 depends, sets forth an option of a ratcheting mechanism or a motorized mechanism, therefore it is unclear if the limitation in claim 27 is intending to further define the ratcheting mechanism as being selected, in which case it fails to positively recite this selection, or if it is intending to still refer to both options of claim 26. Clarification and/or correction is required.
With regards to claim 40, the claim states “the plurality of die heads comprises a pipe receiving recess”, it is unclear if the limitation is intending to set forth that the pipe receiving recess is formed by the combination of the plurality of die heads or if it is intending to set forth that each of the plurality of die heads comprises a pipe receiving recess. For examination purposes the limitation is being interpreted as setting forth each of the plurality of die heads comprises a pipe receiving recess.
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 21-29, 31-32, 34-37 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,214,411.
With regards to claim 21, although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 21 are to be found in claim 1. The difference between claim 21 of the application and claim 1 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 1 of the patent is in effect a species of the generic invention of claim 21. it has been held that the generic invention is anticipated by the species [see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993)]. Since claim 21 is anticipated by claim 1 of the patent, it is not patentably distinct from claim 1.
With regards to claim 22, all of the claimed subject matter of claim 22 can be found in claim 1 of the patent.
With regards to claim 23, all of the claimed subject matter of claim 23 can be found in claim 11 (as it encompasses claims 10, 9, 8, 7, 6, 5, 4, 3, 2, 1) of the patent.
With regards to claim 24, all of the claimed subject matter of claim 24 can be found in claim 1 of the patent.
With regards to claim 25, all of the claimed subject matter of claim 25 can be found in claim 10 (as it encompasses claims 9, 8, 7, 6, 5, 4, 3, 2, 1) of the patent.
With regards to claim 26, all of the claimed subject matter of claim 26 can be found in claim 1 of the patent.
With regards to claim 27, all of the claimed subject matter of claim 27 can be found in claim 17 (as it encompasses claims 16, 15, 14, 13, 12, 11, 10, 9, 8, 7, 6, 5, 4, 3, 2, 1) of the patent.
With regards to claim 28, all of the claimed subject matter of claim 28 can be found in claim 1 of the patent.
With regards to claim 29, all of the claimed subject matter of claim 29 can be found in claim 1 of the patent.
With regards to claim 31, all of the claimed subject matter of claim 31 can be found in claim 2 (as it encompasses claim 1) of the patent.
With regards to claim 32, all of the claimed subject matter of claim 32 can be found in claim 1 of the patent.
With regards to claim 34, all of the claimed subject matter of claim 34 can be found in claim 1 of the patent.
With regards to claim 35, all of the claimed subject matter of claim 35 can be found in claim 18 (as it encompasses claims 17, 16, 15, 14, 13, 12, 11, 10, 9, 8, 7, 6, 5, 4, 3, 2, 1) of the patent.
With regards to claim 36, all of the claimed subject matter of claim 35 can be found in claim 18 (as it encompasses claims 18, 17, 16, 15, 14, 13, 12, 11, 10, 9, 8, 7, 6, 5, 4, 3, 2, 1) of the patent.
With regards to claim 37, all of the claimed subject matter of claim 37 can be found in claim 1 of the patent.
With regards to claim 40, all of the claimed subject matter of claim 40 can be found in claim 1 of the patent.
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.
Claim(s) 21-28, 33 and 38-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chiu (5,761,950).
In reference to claim 21, Chiu discloses a tubing bender device comprising
a frame (10) comprising a handle (15) and a mechanism (16), wherein the mechanism is engaged to a slide rod (14) and the handle [see col. 3 lines 5-9],
a cross bow bar support (30) releasably engages to the frame, the cross bow bar support comprising a plurality of die heads (33) releasably engaged to the cross bow bar support, wherein the cross bow bar support comprises a first side and a second side, wherein one of the plurality of die heads is releasably engaged to the first side and wherein another of the plurality of die heads is releasably engaged to the second side [see figure 1; col. 2 lines 48-60],
a first support bracket (20) releasably engaged to the cross bow bar support, the first support bracket comprising a first vertical receiving aperture, wherein the slide rod is releasably engaged to the first vertical receiving aperture,
a second support bracket (40) releasably engaged to the frame (10) [see figure 3], and
a bending mandrel (50) releasably engaged to the second support bracket [see figure 2; col. 2 lines 34-38].
In reference to claim 22, Chiu further discloses the bending mandrel (50) is releasably engaged to the second support bracket, movement of the slide rod moves the cross bow bar support (30) via the first support bracket (20) and in relation to the bending mandrel [see col. 3 lines 51-57; figure 4].
In reference to claim 23, the bending mandrel (50) comprises a pipe receiving channel (52), wherein the pipe receiving channel of the bending mandrel is positioned in a direction facing the slide rod (14), as seen in figure 1 [see col. 2 lines 34-36].
In reference to claim 24, Chiu further discloses when the bending mandrel (50) is releasably engaged to the slide rod (14), movement of the slide rod moves the bending mandrel in relation to the cross bow bar support [see figure 6; col. 4 lines 21-36].
In reference to claim 25, the bending mandrel (50) comprises a pipe receiving channel, wherein the pipe receiving channel of the bending mandrel is positioned in a direction facing away from the slide rod, as seen in figure 6.
In reference to claim 26, Chiu further discloses the mechanism comprises a ratcheting mechanism [see col. 3 lines 5-9; figure 3].
In reference to claim 27, the movement of the handle (15) with respect to the frame advances the ratcheting mechanism that moves the slide rod [see col. 3 lines 5-9].
In reference to claim 28, the plurality of die heads (33) have a degree of revolution relative to the cross bow bar support [see col. 2 lines 57-66; die heads are mounted via a bolt and can be rotated relative to the bar support to change the cavity in use].
In reference to claim 33, Chiu further discloses the plurality of die heads (33) shape a mid-plane with the bending mandrel, as seen in figure 1.
In reference to claim 38, the cross bow bar support (30) is located perpendicularly with respect to the frame, as seen in figure 1.
In reference to claim 39, the first side and the second side of the cross bow bar support are separated by a recessed bridge. as seen in figure 1.
In reference to claim 40, each of the plurality of die heads (33) comprises a pipe receiving recess (332), as seen in figure 1.
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.
Claim(s) 29-32, 34, and 36-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chiu in view of Houle et al (US 9,144,835).
In reference to claim 29, Chiu discloses the invention substantially as claimed except for wherein the device further comprises a plurality of repositionable die heads having a degree of freedom relative to the bar support.
However, Houle et al teaches of the tubing bender device having a cross bow support bar (60) including a plurality of die heads (80a, 80b) and a plurality of repositionable die heads (70a, 70b) that are rotatable relative to the cross bow support bar (60) for the purpose of being able to accommodate various tubing sizes for bending [see col. 5 lines 12-50; figure 1].
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the bender device of Chiu to further include a plurality of repositionable die heads, as taught by Houle et al, in order to allow for the bending of various tubing sizes in a single device.
In reference to claim 30, Houle et al further teaches the plurality of die heads (80a, 80b) are located on a bottom side of the cross bow bar support and the plurality of repositionable (70a, 70b) are located on a top side of the cross bow bar support, as seen in figure 1.
In reference to claim 31, Houle et al further teaches the plurality of repositionable die heads are rotatable about an axis [see col. 5 lines 21-23].
In reference to claim 32, the plurality of repositionable die heads, when in a non-operative position are located in a different plane than a plane established by the bending mandrel and plurality of die heads.
In reference to claim 34, Chiu discloses an embodiment wherein the tubing bender device has a first bending configuration for bending a pipe in a first bending direction [see figure 1], and discloses a second embodiment wherein the tubing bender deice has a second bending configuration for bending the pipe in a second bending direction opposite the first bending direction [see figure 6].
Chiu discloses the invention substantially as claimed except for wherein a single tubing bender device has the first and second bending configurations.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the first bending configuration of the figure 1 embodiment and the second bending configuration of the figure 6 embodiment since the cross bow bar support and bending mandrel are releasably engaged with the frame and the mere reversal of the essential working parts of a device involves only routine skill in the art [see In re Einstein, 8 USPQ 167].
In reference to claim 36, the plurality of die heads extend upwardly from the cross bow bar support in the first bending configuration.
In reference to claim 37, the mechanism comprises a ratcheting mechanism [see col. 3 lines 5-9].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725
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