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.
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 1-18 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. The term “separating modality” as required by claim 1 does not appear in the originally filed Specification.
The Specification was originally filed in a parent application (17/410,246) in the United States on 24 August 2021 and has foreign priority to German Document DE 10 2019 105 268.8 filed 1 March 2019.
However, there is no disclosure in the parent applications of first and second separating modalities.
If Applicant wishes to amend the Specification to include the subject matter of claims 1-18, the Application may need to be deemed as Continuation-In-Part. See MPEP § 211.05.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/410,246, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
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.
Claims 1-10 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sklar (US 3,646,939) in view of Zerver (US 5,083,008).
As to claim 1, Sklar teaches a method for producing a medical instrument having a first finger ring and a second finger ring (towel clamp shown in Fig 1M has fingerholes 17 and 17’), the method comprising the steps of: separating a first instrument body part blank out of a first plate (as shown in Fig 1, steel split 10 formed into a raw forging 11. The forging 12 is separate from the raw forged flashing 14), the first instrument body part blank comprising the first finger ring with a first through hole inside the first finger ring (As shown in Fig 1F, the forging 12 has a fingerhole 17), the first finger ring and the first through hole being formed by removing a first portion of the first plate outside of the first finger ring (flashing 14 as shown in Fig 1C) by using a first separating modality and removing a second portion of the first plate inside of the first finger ring (portion 15 as shown in Figs 1D, 1E) by using a second separating modality (as described at Col 2 lines 12-21, the outside flashing 14 is “trimmed” and the inner portion 15 is “pierced.”).
Sklar does not teach [the second separating modality] is the same as the first separating modality. Rather, Sklar teaches the steps of “trimming” and “piercing.” However, in the field of hand tool manufacture, it was known at the time the invention was effectively filed to provide for any reasonable modality to remove flashing from a forged part. See Zerver which is relied upon only for what the Background of the Invention section teaches at Col 1 lines 5-51. Zerver’s Background section teaches at Col 1 lines 15-18: “In the known methods for the manufacture of die-forged or die-stamped workpieces a blank is manufactured first, for example, by cutting a piece from a plate or stamping a piece from a metal sheet.”
Thus, it was known that cutting (read: trimming) and stamping (read: piercing) were interchangeable modalities for removing flashing from a die-forged workpiece.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have performed the removal of flash 14 and portion 15 of Sklar by either both trimming or both stamping because either method would have achieved the end result of the flash removal. See MPEP § 2143 B which describes the prima facie obviousness of the simple substitution of one known element for another to obtain predictable results.
In this case, since stamping and trimming are known to be interchangeable for the purpose of removing flashing, choosing to remove flashing 14 and portion 15 by either stamping or trimming would have been obvious to such an artisan with the predictable result of the removal of material.
Sklar in view of Zerver further teach: separating a second instrument body part blank out of a second plate (Sklar teaches a second forging 12’ which is manufactured in the same process as forging 12), the second instrument body part blank comprising the second finger ring with a second through hole inside the second finger ring (fingerhole 17’), the second finger ring and the second through hole being formed by removing a first portion of the second plate outside of the second finger ring by using the first separating modality and removing a second portion of the second plate inside of the second finger ring by using the second separating modality that is the same as the first separating modality (as discussed above, even though Sklar teaches the flashing 14 is removed by “trimming” and the portion 15 is removed by “piercing”, these method steps were known to be interchangeable (see Zerver’s Background section) and thus it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have performed the removal of flashing 14 by stamping (read: piercing) or the removal of portion 15 by cutting (read: trimming)).
As to claim 2, Sklar in view of Zerver teaches the method according to claim 1, wherein the first instrument body part blank has a first blank geometry (Sklar teaches forging 12 has a geometry shown in Fig 1D), and the second instrument body part blank has a second blank geometry (Sklar teaching forging 12’ has a geometry shown in Fig 1G).
As to claim 3, Sklar in view of Zerver teaches the method according to claim 2, wherein the first blank geometry is identical to the second blank geometry (as shown in Figs 1F and 1G, the forgings 12, 12’ are identical. Sklar teaches the forgings are “matched.”).
As to claim 4, Sklar in view of Zerver teaches the method according to claim 3, further comprising a second part geometry different from the first part geometry (Sklar requires the two parts of the towel clamp to be different, as shown for example at Figs 6 and 7. One half of mating pair has rivet seat section 18, while the other half of the mating pair has rivet seat sections 18’ and 19’. 18 and 18’,19’ have different geometries). Sklar doesn’t teach forming the geometries by reshaping. Instead, Sklar teaches the rivet seat sections are forming by milling (see Col 2 lines 29-30). However, Zerver teaches at Col 1 lines 18-20 a reshaping step directly after removing flashing: “This blank is subsequently die-forged or die-stamped, whereby a burr is inevitably created at the junction plane of the top and bottom part of the die.” Thus Sklar in view of Zerver teaches: the steps of: reshaping the first instrument body part blank to form a first instrument body part with a first part geometry (Zerver’s second die-forging or die-stamping step is a reshaping step of Sklar’s first geometry); and reshaping the second instrument body part blank to form a second instrument body part (Zerver’s second die-forging or die-stamping step is a reshaping step of Sklar’s second geometry).
As to claim 5, Sklar in view of Zerver teaches the method according to claim 4, wherein the step of reshaping the first instrument body part blank comprises the steps of: inserting the first instrument body part blank between a first pair of forming tools having internal contours that correspond to the first part geometry; and pressing the first pair of forming tools together to form the first instrument body part (die stamping or die forging as taught by Zerver is performed in this manner, using a first pair of forming tools (“top and bottom part of the die”) having internal contours that correspond to the part geometry).
As to claim 6, Sklar in view of Zerver teaches the method according to claim 5, wherein the step of pressing the first pair of forming tools together creates at least one burr on an outside of the first finger ring and at least one burr inside the first through hole (Zerver Col 1 lines 18-20: “This blank is subsequently die-forged or die-stamped, whereby a burr is inevitably created at the junction plane of the top and bottom part of the die.”[emphasis added]. Examiner notes the junction plane exists both outside and inside the finger hole).
As to claim 7, Sklar in view of Zerver teaches the method according to claim 6, wherein the step of reshaping the second instrument body part blank comprises the steps of: inserting the second instrument body part blank between a second pair of forming tools having internal contours that correspond to the second part geometry; and pressing the second pair of forming tools together to form the second instrument body part (die stamping or die forging as taught by Zerver is performed in this manner, using a second pair of forming tools (“top and bottom part of the die”) having internal contours that correspond to the second part geometry).
As to claim 8, Sklar in view of Zerver teaches the method according to claim 7, wherein the step of pressing the second pair of forming tools together creates at least one burr on an outside of the second finger ring and at least one burr inside the second through hole (Zerver Col 1 lines 18-20: “This blank is subsequently die-forged or die-stamped, whereby a burr is inevitably created at the junction plane of the top and bottom part of the die.”[emphasis added]. Examiner notes the junction plane exists both outside and inside the finger hole).
As to claim 9, Sklar in view of Zerver teaches the method according to claim 8, further comprising a milling step to remove the at least one burr on the outside of the first finger ring, the at least one burr inside the first through hole, the at least one burr on the outside of the second finger ring, and the at least one burr inside the second through hole (Zerver Col 1 lines 25-31 teaches: “Since the burr created by the die cannot be completely removed by the cutting tool, the burr must be ground by a special grinding machine, before the areas important for the functioning of the workpiece, for example, the face of the spanner clearance on hand tools, are machined by milling or reaming.”).
As to claim 10, Sklar in view of Zerver teaches the method according to claim 9, further comprising the steps of: forming a first joint bore in the first instrument body part, the first joint bore having a first bore axis; and forming a second joint bore in the second instrument body part, the second joint bore having a second bore axis (Sklar teaches at Col 2 lines 36-38: “Also by conventional metal-working techniques, the mating first and second scissor arms 12, 12' are interlocked and riveted”. As shown in Sklar Fig 8, the rivet 20 is located in bores of the rivet heats 18 and 18’ and thus part of the “conventional metal-working technique” must include the formation of first and second joint bores which are coaxial.).
As to claim 15, Sklar in view of Zerver and Fuerbass teaches the method according to claim 1, wherein the first separating modality and the second separating modality comprise punching (Zerver teaches “stamping” which is a punching operation).
As to claim 16, Sklar in view of Zerver and Fuerbass teaches the method according to claim 1, but does not teach the first separating modality and the second separating modality comprise laser cutting (Zerver teaches “cutting” but does not teach the cutting is “laser cutting.”).
Examiner takes official notice that laser cutting was a known cutting process in the tool making field for removing flashing after die-forging or die-stamping. It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided for laser cutting in order to provide for an automated and precise method of removing flashing from a die-forged tool.
As to claim 17, Sklar teaches a method for producing a medical instrument (towel clamp) having a first finger ring (fingerhole 17) and a second finger ring (fingerhole 17’), the method comprising the steps of: separating a first instrument body part blank out of a first piece of material (as shown in Fig 1, steel split 10 formed into a raw forging 11. The forging 12 is separate from the raw forged flashing 14), the first instrument body part blank comprising the first finger ring with a first through hole inside the first finger ring (forging 12 has fingerhole 17), the first finger ring and the first through hole being formed by removing a first portion of the first piece of material outside of the first finger ring (flashing 14 as shown in Fig 1C) and removing a second portion of the first piece of material inside of the first finger ring (portion 15 as shown in Figs 1D and 1E. As described at Col 2 lines 12-21, the outside flashing 14 is “trimmed” and the inner portion 15 is “pierced.”).
Sklar does not teach the trimming and piercing happen simultaneously.
Rather, Sklar teaches the steps of “trimming” and “piercing” at Figs 1C and 1D, implying different times. However, in the field of hand tool manufacture, it was known at the time the invention was effectively filed to provide for any reasonable modality to remove flashing from a forged part. See Zerver which is relied upon only for what the Background of the Invention section teaches at Col 1 lines 5-51. Zerver’s Background section teaches at Col 1 lines 15-18: “In the known methods for the manufacture of die-forged or die-stamped workpieces a blank is manufactured first, for example, by cutting a piece from a plate or stamping a piece from a metal sheet.”
Thus, it was known that cutting (read: trimming) and stamping (read: piercing) were interchangeable modalities for removing flashing from a die-forged workpiece.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have performed the removal of flash 14 and portion 15 of Sklar by either both trimming or both stamping because either method would have achieved the end result of the flash removal. See MPEP § 2143 B which describes the prima facie obviousness of the simple substitution of one known element for another to obtain predictable results.
In this case, since stamping and trimming are known to be interchangeable for the purpose of removing flashing, choosing to remove flashing 14 and portion 15 by either stamping or trimming would have been obvious to such an artisan with the predictable result of the removal of material. Moreover, by removing two portions by the same operation, the two portions (14, 15) are obviated to be removed simultaneously.
Sklar in view of Zerver thus teaches the corresponding method steps for forging 12’ of Sklar as claimed: separating a second instrument body part blank (12’) out of a second piece of material, the second instrument body part blank comprising the second finger ring with a second through hole inside the second finger ring (fingerhole 17’), the second finger ring and the second through hole being formed by removing a first portion of the second piece of material outside of the second finger ring (flashing 14’) and simultaneously removing a second portion of the second piece of material inside of the second finger ring (portion 15’. The step of removing both flashing and portion 14’and 15’ is obviated to occur simultaneously by Zerver, as explained above), the step of removing the first portion of the first piece of material outside of the first finger ring and simultaneously removing the second portion of the first piece of material inside of the first finger ring being done by punching (Zerver teaches stamping at Col 1 line 18. Stamping is a punching process), and the step of removing the first portion of the second piece of material outside of the second finger ring and simultaneously removing the second portion of the second piece of material inside of the second finger ring being done by punching (Zerver teaches stamping at Col 1 line 18. Stamping is a punching process).
As to claim 18, Sklar teaches a method for producing a medical instrument (towel clamp) having a first finger ring (fingerhole 17) and a second finger ring (fingerhole 17’), the method comprising the steps of: separating a first instrument body part blank out of a first piece of material (as shown in Fig 1, steel split 10 formed into a raw forging 11. The forging 12 is separate from the raw forged flashing 14), the first instrument body part blank comprising the first finger ring with a first through hole inside the first finger ring (forging 12 has fingerhole 17), the first finger ring and the first through hole being formed by removing a first portion of the first piece of material outside of the first finger ring (flashing 14 as shown in Fig 1C) and removing a second portion of the first piece of material inside of the first finger ring (portion 15).
Sklar does not teach both the flashing 14 and the portion 15 are removed by laser cutting.
Rather, Sklar teaches the steps of “trimming” and “piercing” at Figs 1C and 1D. However, in the field of hand tool manufacture, it was known at the time the invention was effectively filed to provide for any reasonable modality to remove flashing from a forged part. See Zerver which is relied upon only for what the Background of the Invention section teaches at Col 1 lines 5-51. Zerver’s Background section teaches at Col 1 lines 15-18: “In the known methods for the manufacture of die-forged or die-stamped workpieces a blank is manufactured first, for example, by cutting a piece from a plate or stamping a piece from a metal sheet.”
Thus, it was known that cutting (read: trimming) and stamping (read: piercing) were interchangeable modalities for removing flashing from a die-forged workpiece.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have performed the removal of flash 14 and portion 15 of Sklar by either both trimming or both stamping because either method would have achieved the end result of the flash removal. See MPEP § 2143 B which describes the prima facie obviousness of the simple substitution of one known element for another to obtain predictable results.
In this case, since stamping and trimming are known to be interchangeable for the purpose of removing flashing, choosing to remove flashing 14 and portion 15 by either stamping or trimming would have been obvious to such an artisan with the predictable result of the removal of material. Moreover, Examiner takes official notice that laser cutting was a known cutting process in the tool making field for removing flashing after die-forging or die-stamping. It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided for laser cutting in order to provide for an automated and precise method of removing flashing from a die-forged tool.
Sklar in view of Zerver thus teaches the corresponding method steps for forging 12’ of Sklar as claimed: separating a second instrument body part blank (12’) out of a second piece of material, the second instrument body part blank comprising the second finger ring with a second through hole inside the second finger ring (fingerhole 17’), the second finger ring and the second through hole being formed by removing a first portion of the second piece of material outside of the second finger ring (flashing 14’) by laser cutting and removing a second portion of the second piece of material inside of the second finger ring (portion 15’) by laser cutting (Zerver makes obvious the process of removing the flashing 14’ and the portion 15’ is the same, a cutting operation. Official Notice is provided above and the use of laser cutting is made obvious in view of the motivations of automation and precision.).
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sklar in view of Zerver as applied to claim 8 above, and further in view of Fuerbass (DE 3506866 C1).
As to claim 11, Sklar in view of Zerver teaches the method according to claim 10, but does not teach the milling step is performed with a milling tool that rotates about a deburring longitudinal axis.
Rather, even though both Sklar and Zerver teach milling, the specific axis of the milling tool is not discussed. However, Fuerbass teaches a method of milling forgings to remove burrs in a manner consistent with Zerver’s teachings. Fuerbass teaches at Figs 1 and 2 the milling tool rotates along an axis that is orthogonal to the direction of elongation of the burr.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided for the step of performing milling that rotates about a deburring longitudinal axis as this ensures a consistent deburred surface.
As to claim 12, Sklar in view of Zerver and Fuerbass teaches the method according to claim 11, but does not teach the milling step is performed after the steps of forming the first joint bore in the first instrument body part and forming the second joint bore in the second instrument body part.
However, the order of these particular steps appears to be interchangeable, since the geometry of the milled burr does not affect the bored hole, and vice-versa. Moreover, there is legal precedent for the change of the order of method steps. See MPEP § 2144.04 IV C. It would have been prima facie obvious to a person having ordinary skill in the art at the time the invention was effectively filed to provide for either the milling step first or the bore forming step first. Such a person would have recognized that the steps are functionally interchangeable as neither relies on the other.
As to claim 13, Sklar in view of Zerver and Fuerbass teaches the method according to claim 12, wherein the deburring longitudinal axis is maintained parallel to the first bore axis when milling the first instrument body part (the rivet bore of Sklar appears to be orthogonal to the surface of the tool. So too is the axis of the milling tool in Fuerbass.).
As to claim 14, Sklar in view of Zerver and Fuerbass teaches the method according to claim 13, wherein the deburring longitudinal axis is maintained parallel to the second bore axis when milling the second instrument body part (the rivet bore of Sklar appears to be orthogonal to the surface of the tool. So too is the axis of the milling tool in Fuerbass.).
Conclusion
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 13 November 2025