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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 8-11 in the reply filed on 7/14/25 is acknowledged. Thus, claims 1-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention I, there being no allowable generic or linking claim. Election was made without traverse.
An OA on the merits of claims 8-11 as follows:
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: --"Device For Connecting Sheet Metal Parts to Form Lamination Stacks” --.
“and a method” (abstract line 1) should be deleted to reflect device invention as elected.
Claim Objections
Claims 8-11 are objected to because of the following informalities:
Since the scope of the claims directed to an apparatus therefore the associated work piece entities such as “punch for separating sheet metal parts from an electrical steel strip that is coated on at least one of its flat sides with a thermally activatable hot-melt adhesive varnish layer” is /are not structure elements. The Examiner presumes that claim directed to a device (or apparatus) but not the associated materials as noted above and claims will be rejected accordingly. Appropriate correction is required.
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.
Claims 8-11 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.
Since the claims directed to a device as clearly defined in the preamble line 1, and claim recites a number of structure elements such as “a stamping tool, a stacking unit, a unit” (see claim 8, lines 3, 6, 8), however, no interconnection between the above elements/features in order to form a complete working device. Thus, claim considered to be incomplete.
“comprising:” (claim 8, line 2) should be updated to: --"said device comprising:”--
Further the recite of” for. . . “(claim 8, lines 3-5, 6-7) is/are functionally intended use there is no inventive features existed thereto.
The phrases:” which has a parting compound and is embodied to apply this parting compound onto the electrical steel strip and/or separated sheet metal part in order to thus make it easier to divide the stacked sheet metal parts into lamination stacks, wherein the punch of the stamping stage is equipped with the unit that is embodied to apply the parting compound - which is embodied as a fluid - onto the electrical steel strip and/or separated sheet metal part”(claim 8, lines 8-13) is unclear and confusing in that it is uncertain as to exactly what features of the device applicants intend to claim thereto. Also, no inventive features in the above only mode of operation or functionally intended use.
Whether or not the claimed “a parting compound” (claim 8, line 8 and other places in the claims) is a part of the claimed device or not if it is then applicant should further define such feature and the interconnection between this and the rest of the feature elements that made up the device.
“its” (claim 8, line 4) should be further define to what exactly feature it is.
Whether “multiple lamination stacks” (claim 8, line 5) as same as that in line 1?
Similar to line 5 also occurrence in line 9 of claim 8?
The phrase:” and, together with the hot-melt adhesive varnish layer, is embodied to form a sealing surface for the fluid” (claim 9, lines 3-4) is not positively structural limitation since it directed to an associated material/ entity other than the claimed device.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claim(s) 8-9, 11 as best is/are rejected under 35 U.S.C. 102a1 as being anticipated by Kauffmann et al (EP 2883692).
In an Alternative claim(s) 8-11 as best understood is/are rejected under 35 U.S.C. 103 as being unpatentable over Kauffmann et al (EP 2883692).
Kauffmann et al discloses the claimed device for connecting sheet metal parts to form lamination stacks, comprising:
a stamping tool 1, which has a stamping stage with a punch for separating sheet metal parts from an electrical steel strip 5 that is coated on at least one of its flat sides with a thermally activatable hot-melt adhesive varnish layer (see Fig. 1),
a stacking unit 2 for stacking the separated sheet metal parts to form multiple lamination stacks 3, and
a unit 19/20, which has a parting compound and is embodied to apply this parting compound onto the electrical steel strip and/or separated sheet metal part in order to thus make it easier to divide the stacked sheet metal parts into lamination stacks, wherein the punch of the stamping stage is equipped with the unit that is embodied to apply the parting compound - which is embodied as a fluid - onto the electrical steel strip and/or separated sheet metal part (see Fig. 1, respectively)..
the phrase: “and/or separated sheet metal part in order to thus make it easier to divide the stacked sheet metal parts into lamination stacks, wherein the punch of the stamping stage is equipped with the unit that is embodied to apply the parting compound - which is embodied as a fluid - onto the electrical steel strip and/or separated sheet metal part”(see claim 8, lines 8-13) is directed to a compound material associated with the claimed device which does not further limit the actual structure of the device (see also 112 above).
Asa applied to claim 9, refer to Fig. 1, stamping punch 11 having the structure features includes punch base and cutting edge. The rest of claim 9 recites:” and, together with the hot-melt adhesive varnish layer, is embodied to form a sealing surface for the fluid” no inventive feature existed thereto since above directed to an associated entity other than the claimed device.
As applied to claim 11, refer to Fig. 7 which depicts unit 9 includes nozzle 27 for applying fluid.
Potential Allowable claim
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can normally be reached M-TH ~5:00-3:30.
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/MINH N TRINH/Primary Examiner, Art Unit 3729
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