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 13 is objected to because of the following informalities: “first stationary tub” is used instead of “stationary first tub” in line 13. Appropriate correction is required.
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: “control unit” in claims 5-6 and 9.
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 5-6, 9, and 13-14 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 13 recites the limitation “the first stationary tub is configured to rotate” in line 13. It is unclear how a tub is intended to be both stationary and configured to rotate during its operation. Appropriate correction is required.
Claim limitation “control unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed function. In particular, the specification merely states that the claimed function of controlling is located anywhere on the cutting line or remotely. There is no disclosure of any particular structure, either explicitly or inherently, to perform the controlling. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5-6 and 9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As described above, the disclosure does not provide adequate structure to perform the claimed function of the control unit. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
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.
Claim(s) 1 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taylor et al. (US 20180311714 A1, hereinafter ‘Taylor’).
Regarding claim 1, Taylor teaches an automated system 10 for manufacturing post-tension tendons T, comprising: (a) a catapuller 42 configured to introduce a first pre-determined length of a first tendon Ta into a first tub 18a (Fig 1, [0041]); (b) a shear 38 configured to cut the first tendon Ta when the first tendon meets the first pre-determined length ([0032]); (c) a second tub 18b operatively connected to the catapuller 42 wherein the catapuller is configured to introduce a second pre-determined length of a second tendon Tb into the second tub 18b after the first tendon Ta is cut ([0049]) and wherein the shear 38 is configured to cut the second tendon Tb when the second tendon meets the second pre-determined length ([0049]); a tub selector 22 located after the catapuller 42 wherein the tub selector moves such that the second tendon Tb is introduced to the second tub 18b after the first tendon T-a has been introduced into the first tub 18a ([0036]); and wherein the first tub 18a is configured to rotate to coil the first tendon Ta to form a coiled first tendon bundle in the predefined bundle diameter ([0041]) and wherein the second tub 18b is configured to coil the second tendon Tb to form a coiled second tendon bundle in the predefined bundle diameter ([0049]) and wherein the coiled first tendon bundle, the coiled second tendon bundle, or both is tied by an auto tying machine ([0031]).
Regarding claim 9, Taylor teaches the automated system for manufacturing post-tension tendons of claim 1, further comprising a control unit ([0038]) operably connected to the catapuller 42, the shear 38, and to the first and second tubs 18a,18b.
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) 2-3 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Taylor.
Regarding claims 2-3, Taylor teaches the automated system for manufacturing post-tension tendons of claim 1. Additionally, Taylor is capable of cutting the first tendon and the second tendon so that the lengths are either the same or different lengths. However, if applicant does not agree that Taylor anticipates the lengths of the first tendon and the second tendon being either the same or different, it would have been obvious to one having skill in the art at the time of the invention to utilize the tension manufacturing system of Taylor to produce tendon bundles of the same lengths and of different lengths in order to reduce waste when different lengths of tendons are need and/or as ‘obvious to try’ – choosing from a finite number of potential solutions for the lengths of tendon bundles leading to a predictable solution with a reasonable expectation of success (providing the correct length of tendon for the specific job being catered to). KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
Claim(s) 4-6 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor as applied to claim 1 above, and further in view of Hinderer et al. (US 20090010739 A1, hereinafter ‘Hinderer’).
Regarding claims 4-6, Taylor teaches the automated system for manufacturing post-tension tendons of claim 1. Taylor also teaches a seater station configured to fasten an anchor to at least one end of the first tendon, the second tendon or both ([0031]), wherein the seater station is operably connected to a control unit ([0040]). Taylor does not explicitly disclose a movable seater station, wherein said seater station is configured to move between the first tub and the second tub upon receipt of a command from the control unit.
However, Hinderer teaches movable modules 14 set on carts 16 that are able to move between the different stations on the machine system 18 ([0050]).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Taylor to incorporate the cart system of the modular processing station as disclosed by Hinderer in order for the operator to set the now movable seater station at the appropriate station based on the command given by the control unit, allowing for flexibility in the flow of material (Hinderer, [0035]).
Regarding claim 13, Taylor teaches an automated system 10 for manufacturing post-tension tendons T, comprising: (a) a catapuller 42 configured to introduce a first pre-determined length of a first tendon Ta into a stationary first tub 18a (Fig 1, [0041], the tub is stationary in its location when the tendon is being introduced to it); (b) a shear 38 configured to cut the first tendon Ta when the first tendon meets the first pre-determined length ([0032]); (c) a stationary second tub 18b (the tub is stationary in its location when the tendon is being introduced to it) operatively connected to the catapuller 42 wherein the catapuller is configured to introduce a second pre-determined length of a second tendon Tb into the stationary second tub 18b after the first tendon Ta is cut ([0049]) and wherein the shear 38 is configured to cut the second tendon Tb when the second tendon meets the second pre-determined length ([0049]); a tub selector 22 located after the catapuller 42 wherein the tub selector moves such that the second tendon Tb is introduced to the stationary second tub 18b after the first tendon T-a has been introduced into the stationary first tub 18a ([0036]); and wherein the first stationary tub 18a is configured to rotate to coil the first tendon Ta to form a coiled first tendon bundle in the predefined bundle diameter ([0041]) and wherein the stationary second tub 18b is configured to coil the second tendon Tb to form a coiled second tendon bundle in the predefined bundle diameter ([0049]) and wherein the coiled first tendon bundle, the coiled second tendon bundle, or both is tied by an auto tying machine ([0031]); wherein the automated system further comprises a seater station configured to fasten an anchor to at least one end of the first tendon, the second tendon or both ([0031]), wherein the seater station is operably connected to a control unit ([0040]).
Taylor does not explicitly disclose a movable seater station, wherein said seater station is configured to move between the stationary first tub and the stationary second tub upon receipt of a command from the control unit.
However, Hinderer teaches movable modules 14 set on carts 16 that are able to move between the different stations on the machine system 18 ([0050]).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Taylor to incorporate the cart system of the modular processing station as disclosed by Hinderer in order for the operator to set the now movable seater station at the appropriate station based on the command given by the control unit, allowing for flexibility in the flow of material (Hinderer, [0035]).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor in view of Hinderer as applied to claim 13 above, and further in view of Tsukamoto (US 4293103 A).
Regarding claim 14, Taylor as previously modified teaches the automated system for manufacturing post-tension tendons of claim 13. Taylor does not explicitly disclose a manipulator configured to move between the stationary first tub and the stationary second tub to hang the coiled tendon bundles.
However, Tsukamoto teaches a manipulator (crane shown in Fig 1) configured to move and hang the tied first and second coiled tendon bundles (Fig 1 shows the crane with a bundle hanging), wherein said manipulator is configured to move between the first tub and the second tub (Col 2 lines 60-67, Fig 1, the crane is moving between the supply stands).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Taylor as previously modified to incorporate the crane as disclosed by Tsukamoto to more efficiently move the completed bundles to storage after processing is completed, as would be a benefit readily understood by one having ordinary skill in the art.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor as applied to claim 1 above, and further in view of Tsukamoto (US 4293103 A).
Regarding claims 7-8, Taylor teaches the automated system for manufacturing post-tension tendons of claim 1. Taylor does not explicitly disclose a manipulator configured to move and hang the tied first and second coiled tendon bundles, wherein said manipulator is configured to move between the first tub and the second tub.
However, Tsukamoto teaches a manipulator (crane shown in Fig 1) configured to move and hang the tied first and second coiled tendon bundles (Fig 1 shows the crane with a bundle hanging), wherein said manipulator is configured to move between the first tub and the second tub (Col 2 lines 60-67, Fig 1, the crane is moving between the supply stands).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify Taylor to incorporate the crane as disclosed by Tsukamoto to more efficiently move the completed bundles to storage after processing is completed, as would be a benefit readily understood by one having ordinary skill in the art.
Response to Arguments
Applicant's arguments filed 09/24/2025 have been fully considered but they are not persuasive. Applicant argues that the specification adequately describes “control unit” and that Taylor does not disclose stationary tubs. These arguments are respectfully traversed.
First, Applicant argues on pages 8-9 of the remarks that the specification adequately describes “control unit” to satisfy the requirements of the interpretation of the phrase under 35 U.S.C. 112(f) because one of ordinary skill in the art would understand from the disclosure what the necessary components of this control unit are. However, as would be recognized by one of ordinary skill in the art, there are many different potential components and functions that could be applied to a “control unit” and effect the controlling of the system. While this argument presents one type of control unit, this is not the only possible control unit that can be used, and the invocation of 35 U.S.C. 112(f) requires that the disclosure includes what specific control unit is being considered to be the “control unit” to perform the function of the 35 U.S.C. 112(f)-invoking limitation. One consideration would be amending the limitation to recite the control unit in a manner that does not invoke 35 U.S.C. 112(f), such as utilizing the term “controller” rather than “control unit”.
Finally, Applicant argues on pages 9-10 that Taylor does not disclose stationary tubs. Regarding claim 1, the amended language does not add anything to indicate that the tubs are intended to be stationary at any point, so the argument is moot. Regarding claim 13, the amended language describes the first tub and the second tub as stationary by naming them “stationary first tub” and “stationary second tub”. However, the limitations do not describe the manner in which the tubs are meant to be stationary. Taylor does disclose that the tubs move by rotating via the index selector, and then are in a stationary position when one of the tubs is receiving the tendon, as described above.
Accordingly, the rejections are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC DANIEL WHITMIRE whose telephone number is (703)756-4729. The examiner can normally be reached 8 AM - 4 PM.
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/ERIC DANIEL WHITMIRE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722