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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
pressing unit configured to press the book against the rotary table in claim 13.
a cutting unit configured to move a cutting knife in claim 13.
a drive unit configure to rotation the rotary table in claim 13.
a transport unit configured to transport in claim 13.
a control unit configured to control the cutting unit, drive unit and transport unit in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-4, 7-10, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over EP3628456 to Tsunawaki et al. in view of DE29724269 to Leinweber et al.
In re claim 1, Tsunawaki teaches a cutting apparatus comprising:
a rotary table (2) on which a book having a bound spine is to be placed;
a pressing unit (40) configured to press the book against the rotary table;
a cutting unit (5) configured to move a cutting knife (52) between a cutting position and a non-cutting position and cut edges of the book except for the spine (Pg. 6, lines 8-26);
a drive unit (3, 30, 31, 32) configured to rotate the rotary table with the book being pressed by the pressing unit and move the rotary table to the cutting unit;
a transport unit (Pg. 5, lines 22-33) configured to transport the book having the edges cut by the cutting unit in a transport direction to a stacking position; and
a control unit (8) configured to control the cutting unit (5) and the drive unit (Pg. 7, lines 1-4), a mode (is capable of) including processes to cut three edges of a book at the cutting unit (5) while using the drive unit of the rotary table (2) to rotate the book with respect to the cutting unit, and a second mode is (capable of) including processes to cut three edges of the book at the cutting unit (5) while using the drive unit of the rotary table to rotate a book with respect to the cutting unit.
Tsunawaki does not teach a control unit configured to control the transport unit, wherein the control unit is configured to perform a first transport mode and a second transport mode in a switchable manner, the first transport mode to transport the first book having the edges cut by the cutting unit in the transport direction, and to rotate the first book having the edges cut by the cutting unit to arrange the spine in a predetermined direction about a rotation center of the rotary table by the drive unit, and the second transport mode is to transport the second book having the edges cut by the cutting unit in the transport direction, and to rotate the second book having the edges cut by the cutting unit to arrange the spine in a direction different from the predetermined direction about the rotation center of the rotary table by the drive unit, and wherein the control unit is configured to switch the first transport mode to the second transport mode in response to completion of transport of a predetermined plural number of books in the first transport mode and switches the second transport mode to the first transport mode in response to completion of transport of the predetermined plural number of books in the second transport mode.
Regarding claim 1, Leinweber teaches a programmable control unit (11) configured to control the transport unit (7,19), a drive unit (27), and a rotary table (17). The control unit (11) is configured to perform a first transport mode and a second transport mode in a switchable manner (Pg. 5, lines 20-39, Pg. 6, lines 1-4). The rotary table (17) detects the book at the end of the transport unit (7). The rotary table rotates depending on the desired orientation of the book. The book is rotated 180° if the book enters the rotating device with the spine or front cut first and 90° if the book enters with the head or tail cut first. Leinweber teaches the first transport mode, in which, the book is transported in the transport direction in a state where the spine was rotated to be arranged in a predetermined direction about a rotation center of the rotary table (17), and the second transport mode, in which, the book is transported in the transport direction in a state where the spine was rotated to be arranged in a direction different from the predetermined direction about the rotation center of the rotary table by the drive unit (27, Pg. 5, lines 20-39, Pg. 6, lines 1-4) and wherein the programmable control unit (11) is configured to switch the first transport mode to the second transport mode (Pg. 5, lines 20-39, Pg. 6, lines 1-4) in response to completion of transport of a predetermined number of books in the first transport mode and switches the second transport mode to the first transport mode in response to completion of transport of the predetermined number of books in the second transport mode.
Note, the programmable control unit of Leinweber has to configured to switch the first transport mode to the second transport mode, in which it is. The limitation following the functional language is merely intended use and specifically the limitation “in response to completion of transport of a predetermined number of books in the first transport mode and switches the second transport mode to the first transport mode in response to completion of transport of the predetermined number of books in the second transport mode” presents as a “step” in an apparatus claim. The device of Leinweber is controlled via a controller and capable of performing the intended use limitation.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide Tsunawaki with a conveyor and rotary table arrangement controlled via the control unit as taught by Leinweber to reduce the strain placed on books and prevent deformation of the book and spine damage (Pg. 2, lines 32-36).
One having ordinary skill in the art would recognize that Tsunawaki teaches a rotary table, which is controlled by a controller to orient the book edges in the correct position for cutting. Tsunawaki has all the required structures for rotating, cutting, and transporting a book to a stacking area. Leinweber teaches a programmable controller which controls a rotary table, orientation of books, and a transport unit. One having ordinary skill would have looked to (the teachings of) Leinweber to program the controller of Tsunawaki for the rotary table to perform an additional 90 degree or 180 degrees rotation, after cutting, to transport and stack the books in the desired orientation. Further, Leinweber teaches the concept of rotating books in an alternating arrangement. One having ordinary skill in the art would recognize that stacking a plurality of predetermined books in the same direction before switching modes does not depart from the concept of stacking books in an alternating arrangement to reduce strain placed on books and prevent deformation. One having ordinary skill in the art could operate the device of Tsunawaki in view of Leinweber (via manual input controls) or via a program to stack a predetermined number of books in a first mode before switching to a second mode.
In re claim 2, modified Tsunawaki teaches wherein the second transport mode is a mode to transport the book having the edges cut by the cutting unit in the transport direction in a state where the spine was rotated to be arranged in an opposite direction to the predetermined direction about the rotation center (Pg. 5, lines 20-39, Pg. 6, lines 1-4, Leinweber).
Note, the second transport mode merely has to be capable of being a mode to transport the book having the edges cut by the cutting unit…in which it is.
In re claim 3, modified Tsunawaki teaches wherein the control unit controls the drive unit (3, 30, 31, 32, Tsunawaki) so that a direction in which the spine extends matches the transport direction in both the first transport mode and the second transport mode (as shown in at least Figure 1, Leinweber).
Note, book (which is the workpiece) has not been positively recited. The control unit has to be capable of controlling the drive unit in a direction in which the spine extends matches the transportation direction, in which it is.
In re claim 4, modified Tsunawaki teaches wherein the control unit controls the drive unit so that the position of the spine of the book transported in the first transport mode matches the position of a fore edge of the book transported in the second transport mode (shown in at least Figure 1, Leinweber).
Note, book (which is the workpiece) has not been positively recited. The control unit has to be capable of controlling the drive unit so that the position of the spine of the book is capable of being transported in the first transport mode matches the position of a fore edge of the book transported in the second transport mode.
In re claim 7, Tsunawaki teaches a control method of a cutting apparatus, wherein the cutting apparatus comprises: a rotary table (2) on which a book having a bound spine is to be placed, a pressing unit (40) configured to press the book against the rotary table, a cutting unit (5) configured to move a cutting knife between a cutting position and a non-cutting position and cut edges of the book except for the spine, a drive unit (3, 30, 31, 32) configured to rotate the rotary table with the book being pressed by the pressing unit and move the rotary table to the cutting unit, and a transport unit (Pg. 5, lines 22-33) configured to transport the book having the edges cut by the cutting unit in a transport direction to a stacking position, the control method comprising:
a first control step (via 8) of performing a first mode to control the cutting unit (5), the drive unit (3, 30, 31, 32) to cut the three edges of a book at the cutting unit while the rotary table while using the drive unit of the rotary table to rotate the book with respect to the cutting unit; and
a second control step (via 8) of performing a second mode to control the drive unit (3, 30, 31, 32) to cut the three edges of a book at the cutting unit while using the drive unit of the rotary table to rotate the book with respect to the cutting unit (5).
Tsunawaki teaches a control method of a cutting apparatus, but does not teach a first control step of performing a first transport mode to control the transport unit to transport the book having the edges cut by the cutting unit in the transport direction, and to rotate the first book having edges cut by the cutting unit to arrange the spine in a predetermined direction about a rotation center of the rotary table by the drive unit; and
the second control step of performing a second transport mode to control the transport unit to transport the second book having edges cut by the cutting unit in the transport direction, and rotate the second book having edge cut by the cutting unit to arrange the spine in a direction different from the predetermined direction about the rotation center of the rotary table by the drive unit and switching the first transport mode to the second transport mode in response to completion of transport of a predetermined number of a plurality of books in the first transport mode, and switching the second transport mode to the first transport mode in response to completion of transport of the predetermined number of a plurality of books in the second transport mode.
Leinweber teaches a programmable control unit (11) configured to control the transport unit (7,19), a first control step of performing a first transport mode to control (via 11) the drive unit (27) of the rotary table and the transport unit (7,19) to transport the book having edges in the transport direction in a state where the spine was rotated to be arranged in a predetermined direction about a rotation center of the rotary table (17, Pg. 5, lines 20-39, Pg. 6, lines 1-4), and
a second control step (via 11) of performing a second transport mode to control the drive unit and the transport unit to transport the book having the edges cut by the cutting unit in the transport direction in a state where the spine was rotated to be arranged in a direction different from the predetermined direction about the rotation center (Pg. 5, lines 20-39, Pg. 6, lines 1-4).
Leinweber teaches the rotary table (17) detects the book at the end of the transport unit (7). The rotary table rotates the book by 180° or 90° depending on the desired orientation of the book. The book is rotated 180° if the book enters the rotating device with the spine or front cut first and 90° if the book enters with the head or tail cut first. Leinweber teaches the first transport mode, in which, the book is transported in the transport direction in a state where the spine was rotated to be arranged in a predetermined direction about a rotation center of the rotary table (17), and the second transport mode, in which, the book is transported in the transport direction in a state where the spine was rotated to be arranged in a direction different from the predetermined direction about the rotation center of the rotary table by the drive unit (27, Pg. 5, lines 20-39, Pg. 6, lines 1-4). Leinweber teaches the control unit is freely programmable control unit that can control stacking cycles (Pg. 4, lines 34-36). Leinweber teaches switching the first transport mode to the second transport mode in response to completion of transport of a predetermined number of a plurality of books in the first transport mode (Pg. 4, lines 35-39, Pg. 5, lines 1-4), and switching the second transport mode to the first transport mode in response to completion of transport of the predetermined number of a plurality of books in the second transport mode (Pg. 5, lines 20-39, Pg. 6, lines 1-4).
Note, it has been interpreted, the control unit of Leinweber can switch between the first and second transport modes in response to completion of transport of a predetermined number of a plurality of books. In this instance, the predetermined number (of a plurality of books) is not precluded from being one book. In other words, as taught by Leinweber, the control unit can switch between a first and second transport mode after each book (of a plurality of books).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide Tsunawaki with a control step of controlling the conveyor, rotary table arrangement, and stack cycles taught by Leinweber to reduce the strain placed on books and prevent deformation of the book and spine damage (Pg. 2, lines 32-36). The modification leads to a control step of controlling the stack cycles and stacking the books in an alternating arrangement. Based on the teachings of Tsunawaki in view of Leinweber, it would have been obvious to try various stacking arrangements, as this does not depart from the scope of the invention. A person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. MPEP 2143, Section I, Part E. The combination of modified Tsunawaki would have been obvious to try for the reasons set forth below:
(1) A finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem.
The Examiner recognized there was a design need to stack the books of Tsunawaki in view of Leinweber to have a specific orientation to reduce the strain placed on the books and prevent deformation, which is a design need based in the art of stacking books. Based on the teachings provided by Leinweber, the Examiner concluded modified Tsunawaki to have a freely programmable controller to control the rotary table reduces the strain placed on books and prevents deformation of the book and spine damage.
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem.
The Examiner recognized that Leinweber provided a teaching of rotating the books by 90 or 180 degrees to stack the books. Based on the teachings of Leinweber, one of ordinary skill in the art would have found that there are a finite number of identified number of books that could be stacked in the same direction without placing strain on the books. The value of stacking every other book, as taught by Leinweber, would have provided one of ordinary skill in the art with a baseline value to being experimentation. In other words, one would have been prompted to try stacking various numbers of books greater than one (in one direction before switching to stacking in a rotated direction) before arriving at the number of books which allows the integrity of the stack to be retained.
(3) A finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
The Examiner determined that based on the teachings of Leinweber, that the modified device of Tsunawaki could have a stacking arrangement as set forth by Leinweber, since a stacking greater than one book in the same direction before switching modes would not jeopardize the intended book stacking arrangement. One having ordinary skill in the art would have been knowledgeable that the expectation of success, of stacking more than one book in the same direction before switching modes would still permit the desired stacked number of books without placing strain on the books and preventing deformation of the book and spine damage.
(4) Whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The Examiner recognized that Leinweber teaches stacking at least every other book in an alternating arrangement, which is in view of the facts of the case under consideration. Therefore, based on the facts of the case, one would have been prompted to try stacking more than one book in the same direction before switching to a different direction as long as the stack of books were not jeopardized.
One having ordinary skill in the art would recognize that Tsunawaki teaches a rotary table, which is controlled by a controller to orient the book edges in the correct position for cutting. Tsunawaki has all the required structures for rotating, cutting, and transporting a book to a stacking area. Leinweber teaches a freely programmable controller which controls a rotary table, orientation of books, and a transport unit. One having ordinary skill would have looked to (the teachings of) Leinweber to program the controller of Tsunawaki to perform an additional 90 degree or 180 degrees rotation, after cutting, to transport and stack the books in the desired orientation to reduce strain.
In re claim 8, modified Tsunawaki teaches transporting the book in the second transport mode having the edges cut by the cutting unit in the transport direction in a state where the spine was rotated to be arranged in an opposite direction to the predetermined direction about the rotation center (as shown in at least Figure 1 and Pg. 5, lines 20-39, Pg. 6, lines 1-4, Leinweber).
In re claim 9, modified Tsunawaki teaches wherein controlling the first control step and the second control step control the drive unit (3, 30, 31, 32, Tsunawaki) so that a direction in which the spine extends matches the transport direction (shown in at least Figure 1, Leinweber).
In re claim 10, modified Tsunawaki teaches controlling the drive unit by the first control step and the second control step control so that, in a width direction orthogonal to the transport direction, the position of the spine of the book transported in the first transport mode matches the position of a fore edge of the book transported in the second transport mode (as shown in at least Figure 1 and Pg. 5, lines 20-39, Pg. 6, lines 1-4, Leinweber).
In re claim 13, Tsunawaki teaches a cutting apparatus comprising:
a rotary table (2) on which a book having a bound spine is to be placed;
a pressing unit (40) configured to press the book against the rotary table;
a cutting unit (5) configured to move a cutting knife (52) between a cutting position and a non-cutting position and cut edges of the book except for the spine (Pg. 6, lines 8-26);
a drive unit (3, 30, 31, 32) configured to rotate the rotary table with the book being pressed by the pressing unit and move the rotary table to the cutting unit;
a transport unit (Pg. 5, lines 22-33) configured to transport the book having the edges cut by the cutting unit in a transport direction to a stacking position; and
a control unit (8) configured to control the cutting unit (5) and the drive unit (Pg. 7, lines 1-4), a mode (is capable of) including processes to cut three edges of a book at the cutting unit (5) while using the drive unit of the rotary table (2) to rotate the book with respect to the cutting unit, and a second mode is (capable of) including processes to cut three edges of the book at the cutting unit (5) while using the drive unit of the rotary table to rotate a book with respect to the cutting unit.
Tsunawaki does not teach a control unit configured to control the transport unit, wherein the control unit is configured to perform a first transport mode and a second transport mode in a switchable manner, the first transport mode to transport the first book having the edges cut by the cutting unit in the transport direction, and to rotate the first book having the edges cut by the cutting unit to arrange the spine in a predetermined direction about a rotation center of the rotary table by the drive unit, and the second transport mode is to transport the second book having the edges cut by the cutting unit in the transport direction, and to rotate the second book having the edges cut by the cutting unit to arrange the spine in a direction different from the predetermined direction about the rotation center of the rotary table by the drive unit, and wherein the control unit is configured to switch the first transport mode to the second transport mode so that a total thickness of a plurality of books continuously transported in the first transport mode does not exceed a predetermined value and to switch the second transport mode to the first transport mode so that a total thickness of books continuously transported in the second transport mode does not exceed the predetermined value.
Regarding claim 13, Leinweber teaches a programmable control unit (11) configured to control the transport unit (7,19), a drive unit (27), and a rotary table (17). The control unit (11) is configured to perform a first transport mode and a second transport mode in a switchable manner (Pg. 5, lines 20-39, Pg. 6, lines 1-4). The rotary table (17) detects the book at the end of the transport unit (7). The rotary table rotates depending on the desired orientation of the book. The book is rotated 180° if the book enters the rotating device with the spine or front cut first and 90° if the book enters with the head or tail cut first. Leinweber teaches the first transport mode, in which, the book is transported in the transport direction in a state where the spine was rotated to be arranged in a predetermined direction about a rotation center of the rotary table (17), and the second transport mode, in which, the book is transported in the transport direction in a state where the spine was rotated to be arranged in a direction different from the predetermined direction about the rotation center of the rotary table by the drive unit (27, Pg. 5, lines 20-39, Pg. 6, lines 1-4) and wherein the programmable control unit (11) is configured to switch the first transport mode to the second transport mode (Pg. 5, lines 20-39, Pg. 6, lines 1-4) so that a total thickness of books (is capable of being) continuously transported in the first transport mode does not exceed a predetermined value, and switching the second transport mode to the first transport mode so that a total thickness of books (is capable of being) continuously transported in the second transport mode does not exceed the predetermined value (Pg. 5, lines 35-39, Pg. 6, lines 1-4, Pg. 7, lines 17-22, Pg. 8, lines 35-38, Leinweber).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide Tsunawaki with a conveyor and rotary table arrangement controlled via the control unit as taught by Leinweber to reduce the strain placed on books and prevent deformation of the book and spine damage (Pg. 2, lines 32-36).
One having ordinary skill in the art would recognize that Tsunawaki teaches a rotary table, which is controlled by a controller to orient the book edges in the correct position for cutting. Tsunawaki has all the required structures for rotating, cutting, and transporting a book to a stacking area. Leinweber teaches a programmable controller which controls a rotary table, orientation of books, and a transport unit. One having ordinary skill would have looked to (the teachings of) Leinweber to program the controller of Tsunawaki for the rotary table to transport and stack the books so a total thickness (in both the first and second modes) of the plurality of books does not exceed a predetermined value.
In re claim 14, modified Tsunawaki teaches wherein the second transport mode is (capable of being) a mode to transport the book having the edges cut by the cutting unit in the transport direction in a state where the spine was rotated to be arranged in a opposite direction of the predetermined direction about the rotation center (as shown in at least Figure 1 and Pg. 5, lines 20-39, Pg. 6, lines 1-4, Leinweber).
In re claim 15, modified Tsunawaki teaches wherein the control unit (11, Leinweber) controls the drive unit so that a direction in which the spine extends matches the transport direction in both the first transport mode and the second transport mode (as shown in at least Figure 1, Leinweber).
In re claim 16, modified Tsunawaki teaches wherein the control unit controls the drive unit so that the position of the spine of the book transported in the first transport mode matches the position of a fore edge of the book transported in the second transport mode (as shown in at least Figure 1 and Pg. 5, lines 20-39, Pg. 6, lines 1-4, Leinweber).
Response to Arguments
Applicant's arguments filed March 13, 2026 have been fully considered but they are not persuasive. Applicant argues the limitations “the control unit is configured to switch” and “in response to completion of transport of a predetermined number of a plurality of books in the first transport mode” are not intended use. Applicant argues if functional limitation implies structural requirement, it may be given patentable weight. However, if functional limitations only describe a purpose or results without altering claim scope, it may be disregarded. Applicant argues neither Tsuawaki or Leinweber discloses a controller configured to switch transports modes in response to completion of transport of a predetermined plurality of books.
The claim limitation will be explained as follows:
The limitation “wherein the control unit is configured to switch the first transport mode to the second transport mode” has been interpreted under 112, sixth paragraph (see Page 4, above). The “control unit is configured to switch” is a positive limitation and this function is required by the prior art. As set forth in the above rejection, Tsunawaki teaches a control unit and Leinweber teaches a programmable control unit configured to control the transport unit, a drive unit, and a rotary table. The control unit of Leinweber is configured to perform a first transport mode and a second transport mode in a switchable manner.
The limitation “in response to completion of transport of a predetermined number of books in the first transport mode and switches the second transport mode to the first transport mode in response to completion of transport of the predetermined number of books in the second transport mode” presents as a “step” in an apparatus claim and is an intended use limitation. In other words, the control unit switches from a first mode to a second mode, in response to the completion of transport of a predetermined number of books. The claim has not set forth what structure(s) indicate the completion of transport of a predetermined number of books. Is the height of a stack sensed by a sensor? Does the sensor send a signal to the controller, which then tells the control unit to switch modes?
Leinweber teaches a freely programmable controller, meaning, it is capable to be programmed such that in response to completion of the transport of a predetermined number of books, the control unit can switch from a first to a second mode.
Applicant argues Leinweber teaches switching modes after every other book and does not teach switching between modes after a plurality of number of books.
Pg. 16, Para [0054] discloses, In step S102, the control unit 90 sets a stacking mode in the cutting process performed by the three-side cutting apparatus 100. Fig. 13 is a diagram illustrating a setting window for setting a stacking mode. The operator sets any one of a plurality of stacking modes via the setting window displayed on the input unit 95. As illustrated in Fig. 13, any one of a normal stacking mode 95a, an alternating delivery stacking mode with rotation by the number of books 95b, an alternating delivery stacking mode with rotation by height 95c, and a reverse stacking mode 95d can be set as a stacking mode.
It has been interpreted, Leinweber teaches an alternating stacking mode (which is one of the modes taught by Applicant). One having ordinary skill in the art would recognize that books can be stacked in various arrangements, as long as the book is not damaged. Stacking more than one book in the same direction, then rotating the books, and performing stacking in an alternating direction, does not depart from the concept of stacking books in an alternating arrangement. One having ordinary skill in the art would have possessed the knowledge that more than one book could be stacked, prior to switching from a first mode to a second mode, as long as there was no strain or deformation to the books.
Applicant argues Leinweber does not teach does not teach the thickness of the books is ever considered or calculated. Applicant argues Leinweber does not teach that a total thickness of continuously transported books is ever compared to a predetermined value. Applicant further argues Tsunawaki nor Leinweber disclose a controller configured to switch transport modes so that a totally thickness of a plurality of books continuously transported in the first transport mode does not exceed a predetermined value.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the thickness of the books being calculated) is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The claim limitation will be explained as follows:
The limitation “wherein the control unit is configured to switch the first transport mode to the second transport mode” has been interpreted under 112, sixth paragraph (see Page 4, above). The “control unit is configured to switch” is a positive limitation and this function is required by the prior art. As set forth in the above rejection, Tsunawaki teaches a control unit and Leinweber teaches a programmable control unit configured to control the transport unit, a drive unit, and a rotary table. The control unit of Leinweber is configured to perform a first transport mode and a second transport mode in a switchable manner.
The limitation “so that a total thickness of a plurality of books continuously transported in the first transport mode does not exceed a predetermined value and to switch the second transport mode to the first transport mode so that” is an intended use limitation. In other words, the control unit switches from a first mode to a second mode and has to be capable of so that a total thickness of a plurality of books are continuously transported. The preamble is directed to a cutting apparatus and the control unit has to perform a first and second switching mode, in which it is. The claims have not set forth any recitations to calculating the thickness of each book. It has been interpreted that the freely programmable controller can be programmed to perform the function of continuously transporting a plurality of books with a thickness in the first transport mode to not exceed a predetermined value and to switch the second transport mode to the first transport mode so that a total thickness of books continuously transported in the second transport mode does not exceed a predetermined value.
Conclusion
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/JENNIFER S MATTHEWS/ Primary Examiner, Art Unit 3724
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