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 .
Response to Arguments
Applicant’s arguments, see remarks, filed 07/10/2026, with respect to the U.S.C. 112 rejections have been fully considered and are persuasive. The U.S.C. 112 rejections of the office action dated 04/10/2026 has been withdrawn.
Applicant's arguments filed 07/10/2026 pertaining to the prior art rejections under Takai have been fully considered but they are not persuasive. Applicant’s remarks state that prior art does have reduced stress concentration however, the claims do not recite any such limitation.
Applicant’s remarks state that Takai does not disclose “a boundary portion between the main body portion and the connecting portion is formed to have a first tapered shape such that an outer diameter thereof gradually decreases as it approaches the main body portion, as required by amended claim 1.”
However, from the Merriam webster dictionary:
Taper (adj)- “progressively narrowed toward one end”
Taper (verb)- “to become progressively smaller toward one end”, “to diminish gradually”
Gradual- proceeding by steps or degrees
Under the broadest reasonable interpretation, as long as a cross-sectional shape becomes narrow from one side to the other over a length (the length being anything longer than a point), this shape would appear to meet the definition of a tapered shape. Absent further limitations as to the angles and the degree of tapering over specified lengths, the claim limitations appear to be met by the prior art. If applicant’s taper 19 which appears to have a steep angle meets the limitation of a tapered shape that has an outer diameter that gradually decreases, then the annotated prior art boundary portion between the connecting portion and the joint port also meets this limitation.
In light of the above interpretation, the term “tapered shape” is met by the annotated structure since the bulging portion that has a first tapered shape such that an outer diameter from the peak of the bulge thereof gradually decreases as it approaches the main body portion.
Claim Rejections - 35 USC § 112
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 1-5 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.
Amended claim 1 recites “a boundary portion between the connecting portion and the joint portion is formed to have a second tapered shape such that an outer diameter thereof gradually decreases as it approaches the joint portion”.
The outer diameter as disclosed in applicant’s original disclosure does not support a tapered shape between the connecting portion and the joint portion such that an outer diameter thereof gradually decreases as it approaches the joint portion. Applicant’s disclosure only supports wherein the outer diameter gradually decreases as it approaches the connecting portion, not the joint portion. The joint portion has a larger diameter than the connecting portion in applicant’s original disclosure, therefore the amended limitation is unsupported by applicant’s original specification and constitutes new matter.
Claims 2-5 constitute new matter because they depend form claim 1 which constitutes new matter.
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 1-5 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.
Amended claim 1 recites “a boundary portion between the connecting portion and the joint portion is formed to have a second tapered shape such that an outer diameter thereof gradually decreases as it approaches the joint portion”.
It is unclear whether this is a typographical error because this language is not consistent with applicant’s original disclosure. For examination purposes, this limitation will be interpreted to read --a boundary portion between the connecting portion and the joint portion is formed to have a second tapered shape such that an outer diameter thereof gradually decreases as it approaches the connecting portion--
Dependent claims 2-5 are indefinite because they depend from indefinite claim 1.
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) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takai (US 2016/0273559).
Takai discloses:
Claim 1. (Currently amended) A fluid pressure cylinder comprising: a cylinder tube; a piston rod provided in the cylinder tube so as to be reciprocatable; a piston connected to the piston rod and slidably received in the cylinder tube; and a cylinder head connected to an opening end of the cylinder tube so as to close the opening end, the cylinder head being configured to form a pressure chamber between the cylinder head and the piston, wherein the cylinder tube has: an annular main body portion; an annular joint portion formed with the opening end and to which the cylinder head is connected; and an annular connecting portion formed so as to extend between the main body portion and the joint portion, the cylinder head is connected to the joint portion of the cylinder tube by a bolt, the joint portion is formed to have a larger thickness in a radial direction than the main body portion and the connecting portion, a boundary portion between the main body portion and the connecting portion is formed to have a first tapered shape such that an outer diameter thereof gradually decreases as it approaches the main body portion, a boundary portion between the connecting portion and the joint portion is formed to have a second tapered shape such that an outer diameter thereof gradually decreases as it approaches the joint portion, the connecting portion is formed to have a uniform outer diameter, or the connecting portion is formed such that an outer peripheral surface has the first tapered shape and the second tapered shape in a cross-section of the cylinder tube along a center axis, an inclination angle of the connecting portion relative to the main body portion is formed so as to be smaller than an inclination angle of the boundary portion between the main body portion and the connecting portion and an inclination angle of the boundary portion between the connecting portion and the joint portion, the main body portion, the joint portion, and the connecting portion are formed so as to have a uniform inner diameter, and the thickness of the connecting portion in the radial direction at an end portion on the joint portion side is formed so as to be larger than the thickness of the main body portion and equal to or smaller than twice the thickness of the main body portion. (see annotated Takai Fig. 1’, all limitations are either annotated or apparent from the Figures in a manner consistent with applicant’s disclosure).
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Claim 2. The fluid pressure cylinder according to Claim 1, wherein the connecting portion is formed such that the thickness in the radial direction is equal to or smaller than 2/3 times the thickness of the joint portion (see annotated Takai Fig. 1’, all limitations are either annotated or apparent from the Figures).
Claim 3. The fluid pressure cylinder according to Claim 1, wherein the inclination angle of the boundary portion between the main body portion and the connecting portion is formed so as to be smaller than the inclination angle of the boundary portion between the connecting portion and the joint portion (see annotated Takai Fig. 1’, all limitations are either annotated or apparent from the Figures).
Claim 4. The fluid pressure cylinder according to Claim 1, wherein a length of the connecting portion in the axial direction is longer than a length of the joint portion in the axial direction (see Figures, “a length” of a portion can be interpreted to be a part of the entire length of the portions absent further limitations; further, the connecting portion can be interpreted to meet this limitation in the device of Takai by interpreting the slightly tapered portion being the connecting portion and interpreting the boundary portion to be the small portion between the joint portion and the connecting portion).
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takai.
Regarding claim 5, Takai discloses the fluid pressure cylinder according to Claim 1, further comprising a cushioning mechanism (40) configured to decelerate the piston rod near a stroke end when working fluid in the pressure chamber is discharged and the piston rod is caused to stroke, wherein the connecting portion is formed to face the pressure chamber when the piston rod is decelerated by the cushioning mechanism (the connecting portion always faces the pressure chamber regardless of the position of the piston as the piston exists in the chamber; examiner believes that applicant is attempting to capture the concept that the connecting portion is axially overlaps with the cushioning mechanism when the cushioning mechanism is engaged with the cylinder head), and shows the cylinder formed form a metal material from the crosshatching.
Taki does not explicitly disclose the cylinder tube is formed to have a yield point of 400 MPa or higher
However, Takai does not disclose any particular size or scale of its device. Since changes in proportion/dimensions without any change in function have been held to be obvious, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the device of Takai to be a large device that would implicitly result in having a yield point of over 400MPa. The large size of the device would not change any operation of the device disclosed by Takai.
IV. CHANGES IN SIZE, SHAPE, OR SEQUENCE OF ADDING INGREDIENTS
A. Changes in Size/Proportion
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
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 Dustin T Nguyen whose telephone number is (571)270-0163. The examiner can normally be reached M - F: 8:00am - 4:30pm.
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, Nathaniel E. Wiehe can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUSTIN T NGUYEN/Primary Examiner, Art Unit 3745 August 20, 2026
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