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.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Black (US 5,227,601) in view of Miller (US 3,604,612).
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.
Response to Arguments
Applicant's arguments filed 09 July 2026 have been fully considered but they are not persuasive.
Applicant argues examiner’s 35 U.S.C 102 and 103 rejections are improper because the prior art of record fails to disclose or fairly suggest at least “the rail being flat and having the shape of an arc of a circle,” as recited in claim 1. Examiner disagrees. Applicant identifies disclosed rail (40) as satisfying the limitation that “the rail [is] flat,” even though rail (40) is a three-dimensional member having finite thickness and curved inner and outer circumferential surfaces. Miller’s track (30) has the same relevant geometric characteristics: it is a three-dimensional arcuate member having planar side faces extending along the circular arc of the track. Therefore, under the interpretation of “flat” advanced by Applicant through reliance on disclosed rail (40), Miller’s track (30) is likewise reasonably regarded as a flat rail having the shape of an arc of a circle. The apparent difference in the relative width of the planar side faces does not distinguish the claimed rail because claim 1 does not recite a minimum face width, a maximum rail thickness, a width-to-thickness ratio, or any other dimensional proportion.
Applicant cannot rely on the planar arc-shaped side geometry of rail (40) to establish that rail (40) is “flat,” while simultaneously disregarding the corresponding planar arc-shaped side geometry of Miller’s track merely because Miller’s planar sides have different relative dimensions.
The same claim construction must be applied consistently to the disclosed embodiment and the prior art. Applicant cannot treat the planar arc-shaped side faces as sufficient to make it own three-dimensional rail “flat,” while demanding that Miller satisfy an unclaimed additional requirement, such as a minimum face width, plate-like proportion, or particular width-to-thickness ratio.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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.
THIS ACTION IS MADE FINAL. 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 Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 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, 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.
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.
/Lee A Holly/Primary Examiner, Art Unit 3726
Prosecution Insights