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 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 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 office action below is Non-Final to correctly update the rejections noting the terminology of a “rotary” blade.
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 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.
Claim 1-10 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.
-Regarding claim 1, the phrase “wherein, when said piece of blanket is cut from said portion, said piece of blanket and said piece of metal ductwork are not in contact with each other; and wherein, after said piece of blanket is cut from said portion, said piece of blanket is brought into contact with said piece of metal ductwork and attached to said metal ductwork”. Examiner notes the device to be related to a liner application machine, and while a roll of insulative thermal blanket has been claimed, the second aspect of the workpiece is not positively recited. As the claims are directed to an apparatus, the prior art must merely be capable of the method steps provided. Further it is also unclear what structure allows for the two different workpieces to not be in contact, and then further “brought into contact”. What structure of the liner application machines allows for the two separate workpieces to have no contact, and then be brought into contact to be combined?
-Regarding claims 5 and 6, the “downstream direction” is unclear. The downstream direction does not appear to have any structural designation. Is the downstream direction in reference to the workpiece roll, frame, means for gripping or some other metric? For the purposes of examination, the term “downstream direction” will be treated as in reference to the means for gripping.
-Regarding claims 5 and 6, the “wherein said metal ductwork moves” is unclear. Examiner notes the workpiece is not positively claimed, and it is unclear what structure of the machine is capable of performing the movement function of the workpiece. How does the workpiece move on said frame in a downstream direction and what structural components provide support for such actions? Examiner notes claim 9 has similar issues in noting the metal duct work is moving on said frame relative to the frame, but there does not appear to be any structural support to allow for the workpiece to perform such a movement function.
-Claim 6 recites the limitation "said upstream direction" in line 3. There is insufficient antecedent basis for this limitation in the claim.
-Claims claim 6, the phrase “said upstream direction is unclear”. Examiner notes the workpiece is not positively claimed, and the device does not appear to state what the “upstream direction” relates to. For the purposes of examination, the phrase “upstream direction” will be treated in reference to the means for gripping.
-Regarding claim 10, the language is unclear. the phrase “wherein said cutting mechanism cuts said piece of blanket from said roll and holds said cut piece of blanket separate from said piece of metal ductwork for a period of time before said piece of blanket is brought into contact with said piece of metal ductwork” is unclear. It is unclear what structure “holds” said cut piece of blanket separate from the piece of metal ductwork. Does the cutting mechanism itself have a structural component that allows for the function of “holding a workpiece”, or is there a different, separate structure that must be used to hold the workpiece after cutting has occurred. It is also unclear what structure provides the holding “for a period of time”. Is a controller or computer device required to perform the actions, or does the structure that performs the “hold” provide the function.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1-2 and 4-10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beever (U.S. Patent No. 3,819,448) in view of Gharst (U.S. Patent No. 6,813,985).
Regarding claim 1, Beever teaches a liner application machine (10) for attaching an insulative thermal blanket (15) to a piece of metal ductwork (12) (Figure 1) the machine comprising:
a frame (19) and a roll of insulative thermal blanket material (15) mounted on said frame (Figure 1; Abstract);
a piece of metal ductwork (12) carried by said frame (Figure 1; Abstract);
a means for gripping said insulative thermal blanket material to remove (30 a portion of said insulative thermal blanket material from said roll (Figure 1; Col. 1, Lines 63-66); and
a cutting mechanism (34) including a motorized blade (38,42) which is configured to traverse a path across said portion of said insulative thermal blanket material cutting a piece of blanket from said roll; wherein, when said piece of blanket is cut from said portion, said piece of blanket and said piece of metal ductwork are not in contact with each other; and wherein, after said piece of blanket is cut from said portion, said piece of blanket is brought into contact with said piece of metal ductwork and attached to said metal ductwork (Figures 1-2; Col. 2, Lines 22-36).
Regarding claim 1, Beever does not specifically provide a rotary blade.
Gharst teaches it is known in the art of carrying and cutting insulation (abstract) to utilize a rotary cutter to cut insulation (Figures 2 and 4; Col. 2, Lines 44-54, Col. 6, Lines 21-59).
One of ordinary skill in the art would have good reason to pursue cutting mechanisms which are known to be useful for a particular cutting function. There are a finite number of possible cutting mechanisms which pertain to a cutting insulation device and allow for the cutting member to provide the appropriate cutting function. Thus, it would have been obvious to a person of ordinary skill in the art to try any reasonable cutting mechanism, vertical transverse cutting or transverse rotary cutting in an attempt to provide an improved cutting function for the workpiece, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp with a reasonable expectation of success. KSR Int' l Co. V. Teleflex Inc. 550 U.S. _, 82 USPQ 2d 1385 (Supreme Court 2007) (KSR).
Regarding claim 2, Beever teaches the machine of claim 1, wherein said means for gripping comprises a plurality of grip rollers (30)(Figure 1; Col. 1, Lines 62-67).
Regarding claim 4, Beever teaches the machine of claim 1, wherein said means for gripping (30) is moveable on said frame relative to said frame (Figure 1; Col. 2, Lines 3-14 Examiner notes the grip rollers rotate, thus are moveable).
Regarding claim 5, Beever teaches the machine of claim 1, wherein said metal ductwork moves on said frame in a downstream direction and said portion is extended by said means for gripping in said downstream direction (Figures 1 and 2; Examiner notes the portion of the workpiece is extended when viewing Figure 1, from left to right, thus in the “downstream direction”).
Regarding claim 6, Beever teaches the machine of claim 1, wherein said metal ductwork moves on said frame in a downstream direction and said portion is extended by said means for gripping (30) in an upstream direction (Figures 1 and 2; Examiner notes the portion of the workpiece extends both before and after the means for gripping, thus both upstream and downstream in reference to the means for gripping).
Regarding claim 7, Beever teaches the machine of claim 1, wherein said cutting mechanism is mounted in a fixed position on said frame (Figure 1; Examiner notes the cutting mechanism to be in a fixed position to cut the workpiece through a predetermined guide and gap).
Regarding claim 8, Beever teaches the machine of claim 1, wherein said cutting mechanism is moveable on said frame relative to said frame without said cutting mechanism cutting said insulative blanket material (Figure 1; Examiner notes the cutting mechanism is movable to a point before the workpiece is cut, thus reading upon the current language).
Regarding claim 9, Beever teaches the machine of claim 1, wherein said cutting mechanism cuts said piece of blanket from said roll while said piece of metal ductwork is moving on said frame relative to said frame (Figure 1; Note the cutting mechanism cutting the piece of blanket while the metal ductwork (12) moves along conveyor 20).
Regarding claim 10, Beever teaches the machine of claim 1, wherein said cutting mechanism cuts said piece of blanket from said roll and holds said cut piece of blanket separate from said piece of metal ductwork for a period of time before said piece of blanket is brought into contact with said piece of metal ductwork (Figure 1 note workpiece 14 being cut while duct 12 moves; Col. 2, Lines 8--36).
Claim 3 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Beever (U.S. Patent No. 3,819,448) in view of Gharst (U.S. Patent No. 6,813,985) as applied to claim 1 above, and further in view of Votava (U.S. Patent Pub. No. 2019/0232512).
Regarding claim 3 the modified device of Beever teaches all of the elements of the current invention except; wherein said means for gripping comprises a grasping arm.
Votava teaches it is known in the art of machine systems to incorporate a gripper/positioner (520) with a gripping arm (521) to position the workpiece (Figure 5A and Paragraphs 0060-0066).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have further modified the device of Beever to incorporate the teachings of Votava to provide the gripping mechanism with a grasping arm. In doing so, it allows for proper positioning of the workpiece as desired.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The rejection is updated to include Gharst (U.S. Patent No. 6,813,985).
-Applicant’s arguments concerning the language of claim 6 are noted. The claims have been updated to include new 112(b) rejections to clarify the positioning of the upstream/downstream direction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD D CROSBY JR whose telephone number is (571)272-8034. The examiner can normally be reached Monday-Friday 8:00-4:00.
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/RICHARD D CROSBY JR/ 03/04/2026Examiner, Art Unit 3724