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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 144. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 6 objected to because of the following informalities: Lines 2-3 recite “plurality of protrusion” which should read “plurality of protrusions”. Appropriate correction is required.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-11 of U.S. Patent No. 11,351,677 (hereinafter “reference claim”) in view of Tanaka (US Patent 6,318,777).
Specifically, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that “the plurality of protrusion sites includes a wall around the protrusion site that extends from the first major side of the interface plate at a right angle to a bottom surface of the first major side” as set forth in instant claims 1 & 6 corresponds to “the plurality of protrusion sites includes a pair of guide protrusions, each guide protrusion of the pair of guide protrusions extend perpendicularly from the first major side of the interface plate a first distance to a bottom” as set forth in reference claims 1 & 8. Reference claims 1 & 8 do not teach that the wall extending to an outside surface of the protrusion site that is flat and planar and at a right angle to the wall as set forth in instant claims 1 & 6.
However, Tanaka teaches that the wall extending to an outside surface of the protrusion site that is flat and planar and at a right angle to the wall as set forth in instant claims 1 & 6 corresponds to the protrusion site including a wall (61) around the protrusion site (6A) that extends from the first major side of the interface plate at a right angle to a bottom surface (BS in annotated Fig 1B below) of the first major side (62; FMS in annotated Fig 1B below), wherein the wall extends to an outside surface of the protrusion site that is flat and planar and at a right angle to the wall (annotated Fig 1B).
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It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to replace the rounded corners of the guide protrusions of the reference claim 1 & 6 with a right angle around the protrusion site. One of ordinary skill in the art would have been motivated to replace the rounded corners of the reference claim with a right angle to decrease manufacturing complexity and cost.
Instant dependent claims 2-5, 7-10 recite identical language as found in reference dependent claims 2-6, 9-11. The table below maps the dependent claims between the application and reference patent.
Instant Claim
Reference Claim
2
2
3
3
4
4
5
6
7
9
8
10
9
11
10
12
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US Patent 2,840,415) in view of Tanaka (US Patent 6,318,777) in further view of Martin (US Patent 4,316,694).
Regarding claim 1, the multi-article (egg) insertion tool of Morris discloses a control plate (10) having a first major side and a second major side, the second major side being opposite the first major side and the first major side having a handle (32) mounted thereon, an air channel (20) formed through the control plate from the first major side to the second major side; an interface plate (11) having a first major side and a second major side, the second major side defining a cavity (36), the first major side comprising a plurality of protrusion sites (35), each one of the plurality of protrusion sites being configured to fit into a respective article and hold the respective article by suction (Col. 2 ln 29-31); wherein the interface plate is coupled to the control plate such that the second major side of the interface plate (11) faces the second major side of the control plate and forms an airtight seal between the interface plate (11) and the control plate (10); and an air valve (21) coupled to the air channel (20) on the first major side of the control plate, the air valve having an actuator (29) configured to operate the air valve to thereby allow or disallow air to flow through the air channel (Col. 2 ln 36-44).
Morris discloses a vacuum insertion tool that moves an article (egg) from a crate to a container, but Morris does not specifically disclose wherein the article is a pan. However, Martin teaches a protrusion site (20) and a pan (P, figure 5) that is transferred from a first location (Figure 6A) to a second location (Figure 6B, T) via interaction with the protrusion site (20), which is configured to fit into the pan P. It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to adapt the multi-article insertion tool of Morris with the pan protrusion sites of Martin. One of ordinary skill in the art would have been motivated to make this modification because by changing the configuration of the protrusion sites, articles having non-ovate configurations could be manipulated the same manner as Morris’ articles. Thus, increasing the utility of Morris’ insertion tool. Examiner further notes that Martin contemplates using a vacuum holding feature for the protrusion sites (Col. 4 ln 22-28).
Modified Martin does not disclose including a wall around the protrusion sites. However, the vacuum grabber of Tanaka discloses a protrusion site including a wall (61) around the protrusion site (6A) that extends from the first major side of the interface plate at a right angle to a bottom surface (BS in annotated Fig 1B below) of the first major side (62; FMS in annotated Fig 1B below), wherein the wall extends to an outside surface of the protrusion site that is flat and planar and at a right angle to the wall (annotated Fig 1B).
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It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to adapt the multi-article insertion tool of modified Morris with a wall around the protrusion site. One of ordinary skill in the art would have been motivated to add a wall around the protrusion site to laterally cover the protrusion site from damage (Col. 6 ln 42-47).
Regarding claim 2, the combination teaches the limitations of claim 1 as described above, the multiple article insertion tool of modified Morris further teaches a gasket (12) between the control plate (10) and the interface plate (11).
Regarding claim 3, the combination teaches the limitations of claim 1 as described above, the multiple article insertion tool of modified Morris further teaches the actuator (29) is disposed on the handle (32).
Regarding claim 4, the combination teaches the limitations of claim 1 as described above, the multiple article insertion tool of modified Morris further teaches wherein the control plate (10) defines a cavity (36) at the second major side that is contiguous with the cavity (36) of the interface plate when the control plate and interface plate are coupled together (Fig 3).
Regarding claim 5, the combination teaches the limitations of claim 1 as described above, the multiple article insertion tool of modified Morris further teaches wherein the control plate (10) and the interface plate (11) each comprise a plurality of corresponding holes (15), each hole being configured to receive a threaded fastener (14) to join the control plate to the interface plate, and wherein the plurality of corresponding holes (15) of one of the control plate or the interface plate are each threaded.
Regarding claim 6, the multi-article (egg) insertion tool of Morris discloses a body (10, 11) having a handle (32) on a top portion of the body and a plurality of protrusion (35) on a bottom of the body, each one of the plurality of protrusion being configured to fit over a respective article (Fig 6) and hold the respective pan by suction on a bottom of the protrusion (Col. 2 ln 29-31), each one of the plurality of protrusions having an air channel (38) coupled to a common air channel (20) inside the body; a valve (21) coupled to the body and having an air channel (28) in communication with common air channel inside the body; and an actuator (29) disposed on the body that controls the valve (21) and is operable to selectively and alternatively open and close the valve (Col. 2 ln 36-44).
Morris discloses a vacuum insertion tool that moves an article (egg) from a crate to a container, but Morris does not specifically disclose wherein the article is a pan. However, Martin teaches a protrusion site (20) and a pan (P, Fig 5) that is transferred from a first location (Figure 6A) to a second location (T, Fig 6B) via interaction with the protrusion site (20), which is configured to fit into the pan P. It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to adapt the multi-article insertion tool of Morris with the pan protrusion sites of Martin. One of ordinary skill in the art would have been motivated to make this modification because by changing the configuration of the protrusion sites, articles having non-ovate configurations could be manipulated the same manner as Morris’ articles. Thus, increasing the utility of Morris’ insertion tool. Further note that Martin contemplates using a vacuum holding feature for the protrusion sites (Col. 4 ln 22-28).
Modified Martin does not disclose including a wall around the protrusion sites. However, the vacuum grabber of Tanaka discloses each one of the plurality of protrusions includes a wall (61) that extends from a bottom surface of the bottom of the body (FMS in annotated Fig 1B below), at a right angle (Annotated Fig 1B), to an outside surface (BS in annotated Fig 1B below) at a bottom of the protrusion that is flat and planar and at a right angle to the wall (61, Annotated Fig 1B above).
It would have been obvious to one of ordinary skill in the art, as of the effective filing date, to adapt the multi-article insertion tool of modified Morris with a wall around the protrusion site. One of ordinary skill in the art would have been motivated to add a wall around the protrusion site to laterally cover the protrusion site from damage (Col. 6 ln 42-47).
Modified Martin does not disclose each one of the plurality of protrusions further including a plurality of openings through the bottom of the protrusion that are each in fluid communication with the air channel. However, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (In re Harza, 124 USPQ 378). Therefore, it would have been obvious to improve the article insertion tool of modified Morris with a plurality of protrusion to improve air flow while maintaining small openings to prevent debris and contaminants.
Regarding claim 7, the combination teaches the limitations of claim 6 as described above, the multiple article insertion tool of modified Morris further teaches the body (10, 11) comprises a control plate (10) on which the handle (32) is mounted, and an interface plate (11) on which the plurality of protrusion sites (35) is formed, and wherein the body further includes a gasket (12) between the control plate and the interface plate.
Regarding claim 8, the combination teaches the limitations of claim 6-7 as described above, the multiple article insertion tool of modified Morris further teaches the control plate (10) and the interface plate (11) each comprise a plurality of corresponding holes (15), each hole being configured to receive a threaded fastener (14) to join the control plate to the interface plate (Col. 2 ln 11-15).
Regarding claim 9, the combination teaches the limitations of claim 6 as described above, the multiple article insertion tool of modified Morris further teaches wherein the actuator (29) is disposed on the handle (32).
Regarding claim 10, the combination teaches the limitations of claim 6 as described above, the multiple article insertion tool of modified Morris further teaches each one of the plurality of protrusions sites (35) has a perimeter (40) that matches the shape of a specific article design (i.e. an egg). See figure 6 below.
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
PCT WO97/24913 discloses a vacuum IC positioner including walls around the protrusion site.
US Patent 3,005,652 discloses a vacuum gripping device comprising multiple apertures.
US Patent 6,498,505 discloses a testing jig for semiconductor components including a plurality of internal airways.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RALPH D WILKINSON whose telephone number is (571)272-6183. The examiner can normally be reached 730am – 4pm Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Victoria Augustine can be reached at (313) 446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RALPH D WILKINSON/Examiner, Art Unit 3654
/Victoria P Augustine/ Supervisory Patent Examiner, Art Unit 3654
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