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 view of the appeal brief filed on 4/10/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/THOMAS J HONG/ Supervisory Patent Examiner, Art Unit 3729
Election/Restrictions
The period for submitting a petition against the requirement for restriction (mailed in the Final Rejection of 08/13/2025) expired two months from that filing date. As no petition was filed by the applicant in a timely manner, the arguments against the restriction requirement are moot. The requirement is maintained and is held to be 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.
Claim 18 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 18 discloses “joining unit in accordance with claim 7, wherein a first gripping actuator is arranged together with at least two first joining elements at an adjustable element of the first adjustment axle” (lines 1-4; emphasis added). This claim depends from claims 5 and 7, wherein claim 5 discloses: "at least two gripping actuators" and "at least two joining elements". Claim 18 does not disclose that the recitations of "a first gripping actuator" and "at least two first joining elements" are modifications and/or further definitions of the previously recited actuators and elements (of claims 5 and/or 7) and as such it is not clear if they are intended to further define those, or if they are disclosing additional actuator/elements beyond those disclosed in claim 5. This problem is compounded by claim 7 disclosing "the at least two gripping actuators" and "the at least two joining elements". Again, there is nothing in claim 18 which discloses something like: "wherein the at least two gripping actuators comprise a first gripping actuator" or "wherein the at least two joining elements comprise at least two first joining elements", and as such, the claim is ambiguous whereby the scope or metes and bounds of the claim cannot be ascertained.
NOTE: Claim 18 been interpreted and examined as best understood according to the 112(b) rejection, above.
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.
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jurkovic et al. (US 2016/0309850 A1).
Regarding claim 5, Jurkovic discloses a joining unit (fig. 5: all, except 170) for joining a component to a workpiece (par. 0008: “The material handling system may remain engaged with the part or part stacks during all or a portion of the stitching process”, par. 0039: “A material handling system may be useful…for the automated assembly and stitching of shoe parts”; par. 0040: “Exemplary manufacturing stations may… join discrete parts together”) (Title; Abstract; fig. 5), the joining unit having a base (150), a gripper (10), and at least two joining elements (three of 70 and three of 80), wherein the gripper comprises at least two gripping actuators (20) via which gripping elements (50, comprising: 100, 110, 120) for gripping the component can be actuated (fig. 5; pars. 0027-0031), wherein the at least two joining elements are arranged at the base and are each configured to establish a connection (pars. 0009, 0039 and 0040; also par. 0025: “a material handling system for use in an apparatus or system for the assembly and stitching of shoe parts”; par. 0026: material handling system may be particularly… useful in manufacturing operations involving stitching or other joining methods… In such operations is it often important to maintain the position of and/or tension in the part or part stack”) of the component to the workpiece at a joining point of the component, wherein the at least two gripping actuators and the at least two joining elements are arranged at the base via an adjustment arrangement (30, 40, 90, 160) via which a spacing between the at least two joining elements (70/80) is adjustable (in the left/right direction) (fig. 2; pars. 0039-0031).
Claims 5-7, 17-18 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mutschler et al. (US 4,472,668).
Regarding claim 5, Mutschler discloses a joining unit (11) for joining a component to a workpiece (“manipulator for the assembly of circuit boards) (Title; Abstract; fig. 1; col. 2, lines 20-32), the joining unit having a base (13, 16), a gripper (17), and at least two joining elements (43: two shown), wherein the gripper comprises at least two gripping actuators (at least two of each of: 33, 35, 39) via which gripping elements (19) for gripping the component can be actuated (fig. 1; cols. 2-3, lines 20-68 and 1-6), wherein the at least two joining elements are arranged at the base and are each configured to establish a connection of the component to the workpiece at a joining point of the component, wherein the at least two gripping actuators and the at least two joining elements are arranged at the base via an adjustment arrangement (15, 27, 47, 49, 51, 53, 55) via which a spacing (in direction of arrow 29) between the at least two joining elements is adjustable (fig. 1; col. 3, lines 16-54; col. 5, lines 57-65).
Regarding claim 6, Mutschler discloses the joining unit in accordance with claim 5, wherein the gripper is a mechanical gripper and the at least two gripping actuators (39) are each configured to move the respective gripping elements (19) along a first direction (along direction of arrow, 29) to grip the component by clamping it between the at least two gripping elements, with a spacing between the at least two gripping actuators being adjustable in the first direction by the adjustment arrangement to adapt the gripper to components of different sizes (33 and 35 move along arrow 29 direction) (fig. 1; col. 2, lines 44-68; col. 3, lines 16-54; col. 5, lines 57-65).
Regarding claim 7, Mutschler discloses the joining unit in accordance with claim 5, wherein a spacing between the at least two gripping actuators and the spacing between the at least two joining elements is adjustable together via at least a first adjustment axle (41, and/or 47) (col. 2, lines 44-68).
Regarding claim 17, Mutschler discloses the joining unit in accordance with claim 5, wherein a spacing between the at least two gripping actuators is adjustable in at least a first direction via at least a first adjustment axle (41) and the spacing between the at least two joining elements is adjustable in at least a second direction by at least a second adjustment axle (fig. 1; col. 2, lines 44-68; col. 3, lines 16-54; col. 5, lines 57-65).
NOTE: in the original disclosure, the term “axle” is used more broadly than it is commonly understood and can include any number of elements, including a “slide” (pars. 0048-0049, etc.), which is apparently a piston, and not a traditionally understood axle, as the disclosed “slide” moves linearly and does not rotate about its axis. As such, each claimed “axle” is reasonably interpreted as encompassing commonly understood rotational axles, any sliding element, or any other structure disclosed in the instant original disclosure as being considered an “axle”. This interpretation holds for all instances of one or more axles in the claims.
Regarding claim 18, Mutschler discloses the joining unit in accordance with claim 7, wherein a first gripping actuator (53) is arranged together with at least two first joining elements (43) at an adjustable element (49 and/or 27) of the first adjustment axle (47), and a second adjustment axle (51) is arranged at the adjustable element via which the first joining elements are adjustable with respect to one another (fig. 1; col. 2, lines 44-68; col. 3, lines 16-54; col. 5, lines 57-65).
Regarding claim 21, Mutschler discloses the joining unit in accordance with claim 5, wherein the adjustment arrangement comprises at least a second adjustment axle (either of 41, or 47) configured to adjust a spacing between the at least two joining elements and the at least two gripping actuators (fig. 1; col. 2, lines 44-68).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the arguments do not apply to the references as they are currently being used in the instant rejection.
The Jurkovic reference is entirely reinterpreted for the prior art rejection of claim 5. The applicants arguments are thus not applicable for the most part. The argument that the joining elements are not used for joining is not only erroneous, but also irrelevant, because the claims are not directed to a method of using the apparatus. The claims are directed to the apparatus itself and thus to the structures and not the vague and open ended intended use of the apparatus. The claims do not even explain what supposed workpiece(s) the apparatus would be capable of being used upon. As such, any joining unit for use on any product can be applicable in rejecting the independent claim, so long as it possesses the structures of the claimed apparatus. Accordingly, the shoe manufacturing apparatus of Jurkovic is entirely applicable as an anticipatory reference in rejecting claim 5, as detailed above. Further, it is abundantly clear that the cited joining elements (70 and 80) are explicitly disclosed as being capable of being used in the joining of workpiece parts. This express disclosure appears numerous times throughout the Jurkovic patent and is cited and quoted extensively in the new prior art rejection above. The argument that the elements of Jurkovic are “not configured to establish a connection…of the component to the workpiece” are not based in any fact or evidence, and completely ignore the repeated disclosures of the device being used for joining parts. Moreover, the argument improperly reads limitations into the claim though they are not disclosed in the claim at all. Where in the claim is it disclosed that the joining elements “establish a connection”? What structures do they possess to enable such a capability? The claims provide absolutely no corroboration for such an assertion, which is thus not found to be compelling.
The remaining arguments are not germane as they do not apply to any of the currently applied rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Zhang et al. (CN 105729484 A) is held to disclose all of the limitations of at least claims 5-7. Zhang discloses a joining unit: (fig. 1: All), comprising a base (1), two or more joining elements (13), a gripper (figs. 3-4: all), the gripper comprising two or more gripping actuators (at least two of 27 including 43 and 44) and gripping elements (19, 20), the unit further comprising an adjustment arrangement (3), which enables spacing b/n joining elements to be adjusted (figs. 1-4). The Zhang reference is not currently applied as an anticipation rejection due to the completeness of the above applied art, and in order to avoid an overly long Office Action or duplicative rejections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at (571)272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
Prosecution Insights