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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/11/2026 has been entered.
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 28-52 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 28, the claim newly requires the type wheels to be rotatably mounted “on an axis of rotation.” However, an axis is not a physical object. Thus, it is not clear how anything physical can actually be mounted to an axis. For purposes of Examination, the original language of “mounted rotatably about an axis of rotation” will be assumed.
Appropriate correction and/or clarification is required.
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) 28-46 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Applicant’s Admitted Prior Art (AAPA). Regarding claim 28, AAPA discloses “a numbering unit (Applicant’s specification at paragraph 4) comprising: type wheels configured to apply a character string to a document (paragraph 7), wherein the type wheels are rotatably mounted on an axis of rotation (paragraph 14); an axle arranged parallel to the axis (paragraph 15 and Figures 1 and 2: the prior art catches are on an axle parallel to the axis of rotation); and a catch assigned to a type wheel in order to prevent undesired rotation of the type wheel (paragraph 15), wherein the catch is displaceable and adjustable at any location along the axle (paragraph 18), wherein the catch is mountable on the axle tiltably to the assigned type wheel at each location (paragraph 15).”
Examiner notes that Figure 2 shows a known prior art catch. Therefore, Figure 1, when using the prior art catch of Figure 2 will be a prior art arrangement. Furthermore, Examiner notes that implicitly, the catch is implicitly moveable along the axle, at least because the catch must be initially be moved along the axle to place it in position. Furthermore, Examiner interprets the catch of AAPA to be adjustable insomuch as that the position of the catch could be moved, for example, by disassembling some parts of the numbering unit and remounting the catch at the new position. Regarding claim 29, AAPA further discloses “wherein the character string is printable on the document by the type wheels (paragraph 7).” Regarding claim 30, AAPA further discloses “wherein the type wheels are interchangeable (paragraph 18).” Regarding claim 31, AAPA further discloses “wherein the type wheels are arranged next to each other along the axis of rotation and form a type wheel set (paragraph 7).” Regarding claim 32, AAPA further discloses “further comprising a numbering mechanism (paragraph 14).”
Regarding claim 33, AAPA further discloses “wherein the numbering mechanism is configured such that a set character string on the type wheels is advanced by one unit after each printing operation at a desired digit of the set character string (paragraph 14).” Regarding claim 34, AAPA further discloses “wherein the catch is arranged between two adjacent type wheels (paragraph 18).” Regarding claim 35, AAPA further discloses “wherein the catch extends essentially tangentially onto an outside of the type wheel set, starting from a space between two adjacent type wheels (paragraphs 15 and 16, and Figures 1 and 2).” Examiner notes that Figure 2 shows a known prior art catch. Therefore, Figure 1, when using the prior art catch of Figure 2 will be a prior art arrangement. Regarding claim 36, AAPA further discloses “wherein the catch is mounted tiltably relative to the type wheel (paragraph 15, Figure 1).” Regarding claim 37, AAPA further discloses “wherein the catch is configured to engage with one end in a recess in the type wheel or between adjacent type wheels in order to prevent the undesired rotation of the type wheel (paragraph 15).” Regarding claim 38, AAPA further discloses “wherein the catch is configured to prevent the type wheel from turning back to a lower character by establishing a form closure (paragraph 16).”
Regarding claim 39, AAPA further discloses “wherein the catch is configured to exert a holding force on the type wheel, and wherein a numbering mechanism is configured to overcome the holding force in order to further rotate the type wheel (paragraph 16).” Regarding claim 40, AAPA further discloses “wherein the catch is configured such that, when the holding force is overcome, an end of the catch close to the type wheel swivels away upwards with respect to the type wheel and releases the further rotation of the type wheel (paragraph 16).” Regarding claim 41, AAPA further discloses “wherein the catch is removable from the numbering unit and replaceable with a further catch (paragraph 18).”
Regarding claim 42, AAPA further discloses “wherein the catch is adjustable to any type wheel width by displacement along the axis of rotation of the type wheels (paragraph 18).” Regarding claim 43, AAPA further discloses “wherein the catch is displaceably mounted on an axle, which extends parallel to the axis of rotation of the type wheels (item 22 of Figure 1. See also in the prior art catch of Figure 2 the hole through which the axle will go through).” Regarding claim 44, AAPA further discloses “wherein the axle simultaneously provides a tilting axis for the catch (Figure 1: see the axle which would go through the hole in the prior art catch of Figure 2).” Regarding claim 45, AAPA further discloses “wherein the catch is subjected to a spring force at an end facing away from the type wheel (see the spring of the prior art catch of Figure 2, paragraph 16), and wherein the spring force causes an end of the catch facing the type wheel to be pressed against the type wheel (paragraph 16, Figure 2).” Regarding claim 46, AAPA further discloses “further comprising a compression spring arranged between an end of the catch facing away from the type wheel and the numbering unit (see the spring in the prior art catch of Figure 2).” Regarding claim 47, AAP further discloses “wherein the compression spring is a spring-loaded pin (Figure 2).”
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.
Claim(s) 48-51 is/are rejected under 35 U.S.C. 103 as being unpatentable over AAPA. Regarding claim 48, AAPA discloses all that is claimed, as in claim 28 above, except “wherein an end of the catch facing away from the type wheel is supported in a fork.” AAPA does disclose that the spring is attached to the catch (Figure 2). Examiner takes official notice that, at the time of the invention, it was known to use a clevis fork for attaching a spring to an object. It has been held that substituting equivalents known for the same purpose is prima facie obvious. See MPEP §2144.06. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use a clevis fork to attach the spring of AAPA to the catch because it was known in the art to be suitable for the intended purpose.
Since Applicant did not traverse that which was asserted as being common knowledge, that which was taken to be common knowledge is now considered to be admitted prior art. See MPEP §2144.03(c).
Regarding claim 49, AAPA, as modified, further discloses “wherein the fork is formed or arranged at the end of a spring-loaded pin (Figure 2).” Regarding claim 50, AAPA, as modified, further discloses “wherein the spring-loaded pin is displaceable together with the catch along the axis of rotation of the type wheels (implicitly, the combination of the spring-loaded pin and the catch are ‘displaceable’ together along the axis of rotation of the type wheels).” Regarding claim 51, AAPA, as modified, further discloses “wherein one end of the spring-loaded pin facing the numbering unit is displaceably mounted in a groove or in a guide groove (Figure 2 in combination with Figure 1).”
Claim(s) 52 is/are rejected under 35 U.S.C. 103 as being unpatentable over AAPA in view of Schaede (US 7216583). Regarding claim 52, AAPA, as modified, discloses all that is claimed, as in claim 51 above, except “wherein two guide grooves are implemented by lying one above the other, and wherein adjacent spring-loaded pins are mounted in different guide grooves.” However, Schaede discloses having adjacent pins mounted differently (including one above the other) in order to allow different wheels to be moved quickly to any desired number (column 9, lines 43-50, Figure 5, pins 17 and 18, for example). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to have at least two adjacent pins mounted in different guide grooves in order to allow for at least one wheel to be moved separately and/or quickly to another number.
Response to Arguments
Applicant's arguments filed 05/11/2026 have been fully considered but they are moot in view of the new grounds of rejection. To the extent that they are applicable to the instant rejection, they are not persuasive.
Applicant argues that the claim requires “functional displaceability”. Examiner disagrees. The instant claim only requires that a singular catch be “displaceable and adjustable at any location along the axle”, and further that the catch is merely “mountable” on the axle at each location.
Examiner notes that implicitly, the catch is implicitly able to be displaced along the axle, at least because the catch must be initially be moved along the axle to place it in position. Furthermore, Examiner interprets the catch of AAPA to be adjustable insomuch as that the position of the catch could be moved, for example, by unmounting and remounting the catch at the new position. Additionally, the catch is certainly able to be mounted at any location on the axle using whatever means needed, especially since no limitations are put on how the catch is to be mounted, either in the claims or in the specification.
Applicant further argues that the language “necessarily implies that the catch can be repositioned after installation to any desired position along the axle in order to accommodate different type wheel widths.” Examiner does not necessarily agree with the statement; nevertheless, the catch of AAPA meets this requirement in that the catch could certainly be repositioned after installation by, at least, unmounted and remounting where desired.
Examiner notes that, fundamentally, the claims lack any recitations to the structure that is implied by Applicant’s argument. For example: what structure would be needed to render the functionality Applicant intends? For example, are there washers in between catches? Or perhaps notches on the axle? What is the structure needed to “mount” the catch to the axle? Absent any such structure in the claims, Examiner maintains that the terms used in the claims have been interpreted to a “reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art.” See MPEP §2111.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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, Stephen Meier can be reached at (571) 272-2149. 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.
/JOSHUA D ZIMMERMAN/ Primary Examiner, Art Unit 2853
Prosecution Insights