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 1: “an energization heating section that energizes and heats the metal material”
Claim 1: “a processing section that processes the heated metal material”
Claim 3: “fluid supply unit that supplies a high-pressure fluid”
Claim 7: “forming apparatus that forms”
Claim 8: “a high-temperature heating section that heats the metal material”
Claim 9: “a transfer section that transfers the metal material”
Claim 10: “extrusion portion…extrudes the metal material”
Claim 12: “positioning portion for restricting movement”
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 1-13 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 1 recites: “wherein rollers of the roller transport section are disposed from the energization heating section to an inside of the processing section.” Wherein statements are used to further define previously set forth elements. In this case, a wherein statement is used to further define an element that was not previously, positively set forth, which makes it unclear if the recited element is required by the claimed apparatus.
Claim 5 recites: “wherein the roller transport section includes a plurality of rollers” – it is unclear if these rollers are meant to refer to the rollers set forth in claim 1 or if additional rollers are required.
Claim 11 recites: “wherein a center line of the metal material when being transported by the roller transport section is parallel to and coincides with a reference axis of the metal material when the metal material is installed in the processing section, and a reference axis of the extrusion portion of the transfer section coincides with a reference axis of the energization heating section. Wherein statements are used to further define previously set forth elements. In this case, a wherein statement is used to further define an element (the metal material is not a positively recited element of the system) that was not previously, positively set forth, which makes it unclear if the recited element is required by the claimed apparatus.
Claim 12 recites: “comprising: a positioning portion for restricting movement of a metal pipe material in a width direction when the metal pipe material reaches predetermined positions of dies.” The “dies” are not positively recited, it is unclear the mechanical relationship between the die and the other positively claims elements.
Claim limitations (claim 9) “a transfer section that transfers”; (claim 10) “extrusion portion…extrudes the metal material” and (claim 12) “positioning portion for restricting movement” 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 disclosure is devoid of any structure that performs the function in the claims. 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.
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.
Claims 1-2, 6-7, 9 and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uenishi et al. (hereafter “Uenishi”)(US 2023/0158560).
With regards to claim 1, Uenishi discloses a forming system that forms a metal material, the forming system comprising:
an energization heating section (30) that energizes and heats the metal material;
a processing section (10) that processes the heated metal material; and
a roller transport section (31, 26, 41) that transports the heated metal material between the energization heating section and the processing section,
wherein rollers of the roller transport section are disposed from the energization heating section to an inside of the processing section [paragraph 0067 and 0068].
With regards to claim 2, Uenishi discloses wherein the roller transport section transports the heated metal material while maintaining a posture of the metal material when the processing is performed in the processing section, as seen in at least Figure 1.
With regards to claim 6, Uenishi discloses wherein in a case where a reference axis of the metal material when the metal material is installed in the processing section is set, the roller transport section transports the metal material in parallel with the reference axis at a position deviated from the reference axis, as seen in at least Figure 1.
With regards to claim 7, Uenishi discloses wherein the processing section is a forming apparatus that forms the metal material by pressing [paragraph 0069].
With regards to claim 9, Uenishi discloses further comprising: a transfer section (41) that transfers the metal material heated in the energization heating section to the roller transport section.
With regards to claim 12, Uenishi discloses further comprising: a positioning portion (1Ac, 1Bc) for restricting movement of a metal pipe material in a width direction when the metal pipe material reaches predetermined positions of dies (1A, 1B). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963).
The limitation of claim 13 is also considered a recitation of intended use limitation and Uenishi discloses a system capable of performing as such i.e. wherein, after the movement of the metal pipe material is restricted by the positioning portion, the rollers of the roller transport section retreat from the dies.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Uenishi.
Uenishi discloses the invention substantially as claimed except for wherein the processing section includes a fluid supply unit that supplies a high- pressure fluid to the metal material in a high-temperature state to expand the metal material. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute Uenishi’s processing section with a fluid supply unit because simple substitution of one known forming element for another 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)].
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Uenishi.
Uenishi discloses the invention substantially as claimed except for wherein the energization heating section includes electrodes disposed to be separated from each other in an axial direction. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute Uenishi’s heating section with electrodes because simple substitution of one known forming element for another 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)].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Uenishi.
Uenishi discloses a control unit (5) that controls at least the heating device and the press device, as described in paragraphs 0074. Uenishi discloses the invention substantially as claimed except for wherein the processing section is a high-temperature heating section that heats the metal material to a temperature higher than a heating temperature in the energization heating section. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed temperatures, since it has been held that where the general conditions of a 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 233.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Uenishi.
Uenishi discloses the invention substantially as claimed except for wherein the transfer section includes a main body and an extrusion portion that is supported by the main body to be movable back and forth in an axial direction and extrudes the metal material disposed in the energization heating section to the roller transport section. It is considered to be well-known that transfer section can be rollers, conveyors, forklift, main body/extrusion. It would have been obvious to one of ordinary skill in the art at the time the invention was made to provide a main body and extrusion portion since it would have been obvious to try this technique when choosing from a finite number of identified, predictable solutions for transporting workpiece through forming systems, with a reasonable expectation of success. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
With regards to claim 11, Uenishi discloses wherein a center line of the metal material when being transported by the roller transport section is parallel to and coincides with a reference axis of the metal material when the metal material is installed in the processing section, and a reference axis of the extrusion portion of the transfer section coincides with a reference axis of the energization heating section, as seen in at least Figure 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and further show the state of the art: US 2019/0264296 and 2010/0192659.
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