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 .
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.
Election/Restrictions
Claims 2-7 and 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 31 December 2025.
Applicant's election with traverse of Group 1-E, claims 1 and 8, in the reply filed on 31 December 2025 is acknowledged. The traversal is on the ground(s) that Miller (US 3,604,612) discloses a track that is not flat within a plane perpendicular to a revolution axis of the pipe. This is not found persuasive because Applicant’s arguments are not commensurate with the claimed invention. Applicant’s claimed invention does not require a track that is flat within a plane perpendicular to a revolution axis of a pipe. Applicant’s claimed invention requires a flat rail having the shape of an arc or a circle with the intended use of guiding the conveying carriage in translation along a zone of a workpiece to be machined.
The requirement is still deemed proper and is therefore made FINAL.
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 8 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation at least one additional fastening element, and the claim also recites preferably two additional fastening elements which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Compact Prosecution
The Office requires examiners to practice compact prosecution and should the examiner determine that an amended claim term or phrase renders the claim rejected under 35 U.S.C. 112(b), the examiner should make a rejection based on indefiniteness under 35 U.S.C. 112(b) as well as a rejection(s) in view of prior art under 35 U.S.C. 102 or 103 that renders the prior art applicable on the examiner’s interpretation of the claim. Examiner has interpreted claim 8 to require two additional fastening elements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller (US 3,604,612).
Claim 1:
Miller discloses a device for machining an annular workpiece (abstract), wherein the machining device comprises:
a fastening system (34, 36, 39, 40 and 43) for removably fastening the machining device to the workpiece (fig. 4, col. 3, lines 4-13);
a machining tool (cutting tool or grinding tool) for machining at least one zone of the workpiece to be machined (col. 6, lines 56-60);
a carriage (carriage) for conveying the machining tool (col. 2, lines 40-45); and,
a rail (30) shaped to guide the conveying carriage in translation along the zone of the workpiece to be machined, the rail (30) being flat and having the shape of an arc of a circle (fig. 1, col. 2, 3-6).
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Black (US 5,227,601) in view of Miller (US 5,227,601).
Claim 1:
Black discloses a device for processing an annular workpiece, (abstract) comprising:
a fastening system (25) for removably fastening the device to the workpiece (fig. 4, col. 7, lines 14-17);
a working tool for processing at least one zone of the workpiece to be processed (col. 4, line 62 bridging col. 5, line 3);
a carriage (B) for conveying the working tool (col. 7, lines 17-23); and,
a rail (24) shaped to guide the conveying carriage (B) in translation along the zone of the workpiece to be processed, the rail (24) being flat and having the shape of an arc of a circle (figs. 1-3, col. 7, lines 14-17).
Black fails to disclose a machining tool. Instead, Black discloses a processing tool or welding tool for processing or welding at least one zone of a workpiece (col. 4, line 62 bridging col. 5, line 3).
Miller discloses a fastening system (34, 36, 39, 40 and 43) for removably fastening the machining device to the workpiece (fig. 4, col. 3, lines 4-13);
a machining tool (cutting tool or grinding tool) for machining at least one zone of the workpiece to be machined (col. 6, lines 56-60);
a carriage (carriage) for conveying the machining tool (col. 2, lines 40-45); and,
a rail (30) shaped to guide the conveying carriage in translation along the zone of the workpiece to be machined, the rail (30) being flat and having the shape of an arc of a circle (fig. 1, col. 2, 3-6).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the processing device of Black by providing a machining tool as taught by Miller in order to cut or grind away rust or irregularities in the surface and otherwise to expose a clean metal surface preparatory to welding to provide the predictable effect of merely mounting different tools on the carriage as required (Miller, col. 6, lines 56-53). See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results.
Allowable Subject Matter
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 8:
The prior art of record fails to disclose or fairly suggest the machining device according to claim 1, wherein the fastening system comprises two additional fastening elements each arranged at one end of the rail, the additional fastening elements are configured to fasten the rail to a frame supporting the workpiece.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Apolinari (US 2023/0001494 A1) discloses a pipe cutting apparatus.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Lee A Holly/Primary Examiner, Art Unit 3726