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 Rejections - 35 USC § 102
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 1-20 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.
In claim 1 it is unclear how you can have a second positioning mechanism without a first positioning mechanism. For purposes of examination the broadest reasonable interpretation has been applied.
In claim 15 it is unclear what type of characteristics the applicant is referring to. Accordingly, for purposes of examination the broadest reasonable interpretation has been applied.
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.
Claim(s) 1-4, 6-15, and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lara et al. (US2001/0017290A1) (hereafter Lara).
With respect to claim 1, Lara teaches a method of positioning material using a material positioner with a welder wherein said method comprises: placing a first material (3’) at a first starting point; placing a second material (3’’) at a second starting point (broadest reasonable interpretation) (figures 1-6); sending a first signal from a control unit to a second positioning mechanism (feeder used for arrow 4’’) (paragraphs 39 and 44); and welding said first and second materials together (paragraphs 48-49), wherein said material positioner comprises: a first fixture (6’/6’’) having said first material secured to said first fixture (figures 1-6; and paragraphs 38-53).
With respect to claim 2, Lara teaches wherein said first fixture comprises a first fixture upper member (6’).
With respect to claim 3, Lara teaches wherein said first fixture includes a first fixture lower member (6’’) with a first horizontal groove configured to cradle said first material (figures 2-5). The fixture of Lara intrinsically has a horizontal groove in order to wrap around the bars as shown in figures 2-5.
With respect to claim 4, Lara teaches wherein said first fixture includes a first fixture lower member (6’’) with a first horizontal groove configured to cradle said first material. The fixture of Lara intrinsically has a horizontal groove in order to wrap around the bars as shown in figures 2-5.
With respect to claim 6, Lara teaches wherein said material positioner further comprises: a first positioning mechanism (feeder used for arrow 4’) adapted to place said first material (3’) at said first starting point (broadest reasonable interpretation) (figures 1-6).
With respect to claim 7, Lara teaches wherein said second starting point has said first material and said second material in mating engagement (contact) (figure 2; and paragraphs 39 and 47).
With respect to claim 8, Lara teaches wherein said control unit is adapted to send said first signal to said first positioning mechanism and said second positioning mechanism (abstract; paragraphs 18 and 44; and claim 1).
With respect to claim 9, Lara teaches wherein a second position is in the same horizontal plane as said second starting point (figures 1-6).
With respect to claim 10, Lara teaches wherein said second position has said first material and said second material coalesced (figures 3-6).
With respect to claim 11, Lara teaches wherein said material positioner further comprises: a first positioning mechanism (feeder used for arrow 4’) adapted to place said first material (3’) at said first starting point (broadest reasonable interpretation) (figures 1-6); a second fixture having (5’/5’’) said second material secured to said second fixture; and said second positioning mechanism (feeder used for arrow 4’’) adapted to place said second material at said second starting point (broadest reasonable interpretation) (figures 1-6).
With respect to claim 12, Lara teaches wherein said second starting point has said first material and said second material in mating engagement (contact) (figure 2; and paragraphs 39 and 47).
With respect to claim 13, Lara teaches wherein actuation of said second positioning mechanism forces said second material against said first material and locates said second material to a second position (figure 3; and paragraph 48).
With respect to claim 14, Lara teaches wherein said control unit is adapted to send said first signal to said first positioning mechanism and said second positioning mechanism (abstract; paragraphs 18 and 44; and claim 1).
With respect to claim 15, Lara teaches wherein said first signal is adjustable based on characteristics (positional) of said first material and said second material (paragraphs 18 and 44).
With respect to claim 17, Lara teaches wherein said first fixture comprises a first fixture upper member (6’).
With respect to claim 18, Lara teaches wherein said first fixture includes a first fixture lower member (6’’) with a first horizontal groove configured to cradle said first material. The fixture of Lara intrinsically has a horizontal groove in order to wrap around the bars as shown in figures 2-5.
With respect to claim 19, Lara teaches sending a second signal to said second positioning mechanism to return (26) said second positioning mechanism to said second starting point (paragraph 44 and 52).
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.
Claim(s) 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lara as applied to claim 1 and 11 above, and further in view of Minamitani et al. (US 6,706,130) (hereafter Minamitani).
With respect to claims 5 and 16, Lara does not teach wherein said second positioning mechanism is a voice coil actuator.
However, Minamitani teaches using a voice coil actuator (69) (column 10, line 5-10 and 39-53).
At the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize the voice coil actuator of Minamitani for the actuator of Lara in order to precisely control movement till contact of the workpieces and the load during bonding.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lara as applied to claim 1, 11, and 19 above, and further in view of Rehse (US 2,243,488).
With respect to claim 20, Lara does not teach wherein said second signal is of reversed polarity from said first signal sent to said second positioning mechanism.
However, Rehse teaches that it is well known to reverse polarity to change direction or a motor (column 6, lines 24-33).
Thus, the time of filing the claimed invention it would have been obvious to one of ordinary skill in the art to utilize polarity reversing as taught by Rehse for the changing of direction step (26) of Lara in order to simply and reliably change direction.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,551,975B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are generally broader and thus envisaged claims 1-20 of U.S. Patent No. 12,551,975B2.
Prior Art
Note that GB-2046475A, US3,681,563, and CA-2238988C, which are cited on the attached form-892, teach butt welding apparatuses similar to that of the instant application and should be considered when responding to this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KILEY SHAWN STONER whose telephone number is (571)272-1183. The examiner can normally be reached on Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KILEY S STONER/ Primary Examiner, Art Unit 1735
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