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 claims 1-5 in the reply filed on 2/6/2026 is acknowledged.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GRUBER et al. (US 4,980,011).
With respect to claim 1, GRUBER et al. discloses an automated liner removing transfer tape applicator (Abstract) comprising an unwinding station, at 14, a winding station, at 40, a winding electric motor, 46, and an adhesive tape pasting assembly, 34 (Figures 1 and 4; Column 2, lines 40-68; Column 3, lines 1-40). The tension of the tape is controlled and thus is capable of having slack (e.g., zero tension). Moreover, the tape is unwound to the pasting assembly to apply the tape, and then the liner is wound to the winding station by driving the winding station via the electric motor. GRUBER et al. further discloses an unwinding driving assembly, 16, comprising an unwinding driving motor (Column 3, lines 24-40; Figures 1 and 2), and brake, 26/30, Column 2, lines 45-68).
The description of “for zero-tension double-faced adhesive tape pasting” is a recitation of intended use, and does not impart patentability to the claim. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114, II.
Moreover, the recitation of “after the unwinding station unwinds a double-faced adhesive tape and the adhesive tape pasting assembly pastes an adhesive tape of the double faced adhesive tape onto a foil, the winding electric motor drives the winding station to wind a remaining release paper” is a manner of operating the device and does not impart patentability to the claims.
The tape, liner and foil represent materials worked up and do not impart patentability to the claims. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
The recitation of “in an adhesive tape pasting process, the unwinding work and winding work are carried out synchronously” is a recitation of operating the device, which does not impart patentability to the claims.
As seen in GRUBER et al., the winding and unwinding operation are performed together to control the tension of the tape and liner (Column 2, lines 40-68; Column 3, lines 1-55). Thus, the device of GRUBER et al. is capable of being simultaneously driven by activation of the various motors and brakes. Moreover, the device of GRUBER et al. is capable of winding the liner after applying the tape to a receiving surface (Figures 1-3).
With respect to claim 3¸ GRUBER et al. further discloses an unwinding driving assembly, 16, comprising an unwinding driving motor (Column 3, lines 24-40; Figures 1 and 2), and brake, 26/30, Column 2, lines 45-68).
With respect to claim 4, GRUBER et al. discloses that the tape assembly further comprises a first tape pasting guide roller, 32, a second adhesive tape pasting guide roller, 36, and a tape pasting head, 34, and the tape is unwound through the unwinding station and guided to a position below the tape pasting head through the first and second guide rollers sequentially and the head is capable of pasting the tape onto a surface (Figure 1; Column 2, lines 55-68; Column 3, lines 1-25).
With respect to claim 5¸ GRUBER et al. discloses a flat belt (e.g., flat pressing sheet) (Column 6, lines 40-65; Figures 1-3). The foil is a material work upon and is not a part of the claimed device. Thus, the foil does not impart patentability to the claims. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over GRUBER et al. (US 4,980,011) in view of FAUST et al. (US 5,227,002).
With respect to claim 2, GRUBER et al. does not explicitly disclose the claimed cutter assembly.
FAUST et al. discloses an apparatus for applying tape to an object. The tape is cut with a cutting assembly comprising a serrated blade (e.g., bending surface with a plurality of sharp points) attached to a pneumatic cylinder connected to an upper frame to form a piston. The cutting cycle is a downward cutting operation (Figures 3-7; Column 6, lines 45-68). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the cutting assembly of FAUST et al. on the taping device of GRUBER et al. so that a length of tape can be severed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEX B EFTA/Primary Examiner, Art Unit 1745
Prosecution Insights