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 Status
This Office action is in response to the Request for Continued Examination filed 11/20/2025. Claims 21-23, 26, 28-29, 31, and 33 are currently pending. Claims 21 and 33 have been amended. The cancelation of claims 24-25 and 32 is acknowledged. Claims 1-20, 24-25, 27, 30, and 32 have been previously canceled. The cancelation of claim 34 is acknowledged.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/20/2025 has been entered.
Specification
The amendment filed 10/28/2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: On pg. 2, “a carton is moved by an inbound conveyor 41 over the cavity 40 and beneath the plunger and the plunger is allowed to drop” comprises new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Note that this new matter objection was first made in the Office action dated 11/12/2024 and maintained in the Office action dated 6/20/2025.
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 21-23, 26, 28-29, 31, and 33 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.
Regarding claims 21 and 33, the limitation the “cam profile is generally elliptical in shape, is symmetrical along a midline, and defines at the midline a straight edge opposite a curved edge” in each claim comprises new matter not previously disclosed in the application as originally filed. Applicant appears to be relying on the drawings to support this limitation since the written description does not mention any symmetry of the cam profile or that there is a straight edge. However, it is not clear where in the drawings this symmetry is depicted. The cam profile can be seen in Figures 1, 2A-2S, and 8-9. In Figures 8-9, the entirety of the cam profile is obscured by other elements of the machine so it cannot be seen in these Figures if there is any kind of symmetry to the cam profile. In Figure 1, the cam profile can be observed in its entirety but the cam profile is clearly not symmetrical about any line may run through the center of the cam profile (in fact, it is not even clear where the center of the cam profile is located). As can be seen in Fig. 1, the region of the cam profile to the left of the approximate middle of the cam profile has a different shape than the region to the right of the approximate middle. Hence, it is not clear where there is symmetry in the cam profile depicted in Fig. 1. Figs. 2A-2S depict a cam profile having the same shape as the cam profile in Fig. 1 and thus, it is not clear where there is symmetry in those drawings either. Furthermore, while there is portion that may be identified as “a straight edge” it is not clear if that portion is actually straight or slightly curved.
Note that applicant has previously claimed, for example in the claims dated 10/28/2024, that the cam profile comprises a midline and is substantially symmetrical about the midline. However, as noted in the Office action dated 11/12/2024, the term “substantially symmetrical” does not require the cam profile to be symmetrical.
Therefore, it cannot be concluded that applicant had possession of the claimed invention at the time the application was filed.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
Regarding the objection to the specification, applicant argues that the specification as originally filed support the added “a carton is moved by an inbound conveyor 41 over the cavity and beneath the plunger and the plunger is allowed to drop” since para. 0017 discloses “[t]he machine may further comprise an inbound conveyor, for example for taking articles from a store (e.g. a hopper) and moving them towards or to the female cavity.” Furthermore, para. 0003 recites a female cavity and a plunger that moves up and down for pushing an item through the female cavity. Hence, the plunger must be above the female cavity and the conveyor must inherently move items over the cavity and beneath the plunger.
In response it is noted that what is disclosed in para. 0017 is different than the objected to new matter. The objected to new matter recites that the inbound conveyor moves a carton over the cavity and beneath the plunger. Para. 0017 does not include the conveyor moving the carton above the cavity and below the plunger. While it is acknowledged that the written description discloses a plunger above a female cavity, it is missing the key piece of information that the conveyor moves a carton over the cavity. Note that the conveyor is indicated in Fig. 3 of the drawings but element 41, the number associated with the conveyor, simply points to a piece of the machine whose structure cannot be clearly seen and it is not clear how this structure extends to the cavity. Thus, applicant’s argument is found to be not persuasive.
Regarding applicant’s remaining arguments, the arguments have been considered but are moot due to the new grounds of rejection set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
12/11/2025