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 .
Response to Amendment
That the amendment to the claim languages filed on 12/19/25 has been fully considered an made of record. Claims 1, 3-6 are now pending in that claim 4-6 are unelected and requested to be cancelled. Applicant(s) is in favor reserves the rights for further prosecution of unelected claims 4-6 in divisional applications or continuation applications.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed of “a plurality of constituent members” (recites in claim 1, lines 25-37, respectively) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
The claims 1 and 3 are objected to because the lines are crowded too closely together, making reading difficult. Substitute claims with lines one and one-half or double spaced on good quality paper are required. See 37 CFR 1.52(b).
Claims 1, 3 are objected to because of the following informalities:
“into on the” (claim 1, line 7) should be updated to: --“into one of the”--, for clarity of the claim.
“and guide” (claim 1, line 12) should be updated to: --" and the guide members configured to guide”--.
“is configured of” (claim 1, line 25) should be updated to: --“includes”—, as so to reflect the structure limitation of the conveyor.
“at a site which belongs to the conveyor and in which” (claim 1, line 30) should be updated to: --"at a site of the conveyor in which”--, for clarity of the claim.
“include”(claim 3, line 2) should be updated to:-- ” further comprise”--. Appropriate correction is required.
Further, it is also suggested that Applicant(s) should carefully revise their disclosure and correct other typos in the claims and/or specification.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention, in this case, the newly added limitations such as “a plurality of constituent members” in lines 25-37 of claim 1 which was not described in the specification in such a way as to enable one skilled in the art to which it pertains.
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 1, 3 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.
It is unclear as to what is being referring to as “a plurality of constituent members” since the specification only discloses “a plurality piece member” 33 and “piece member body “331 (see Specification about ¶¶ [0034, 0040-0044]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11569716 to Okuda et al, hereinafter the’716. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘716 claims the subject matter of the instant application as following:
The 716 claims the claimed coil forming apparatus of the present invention comprising:
A coil forming apparatus that forms a band-shaped coil in a wound state, the band-shaped coil including a plurality of straight portions and side ends provided on both ends of the plurality of straight portions, the coil forming apparatus comprising:
a coil winding jig having a plurality of comb-shaped grooves, and configured to be capable of winding the band-shaped coil by inserting the plurality of straight portions of the band-shaped coil into a respective on the plurality of comb-shaped grooves (see claim 1, lines 7-12) of the ‘716;
a coiling conveying mechanism unit configured to be capable of pivotal conveying the band-shaped coil; and guide members that are provided in a vicinity of both ends of the coil winding jig in an axial direction, and guide the band-shaped coil in an arc shape while being in contact with the side end of the band-shaped coil, and insert the plurality of straight portions in a respective one of the plurality of comb-shaped grooves in a second half portion of pivotal conveying of the band-shaped coil, wherein the coil conveying mechanism unit includes a conveying rail that provides a conveying path pivotally conveying the band-shaped coil along the coil winding jig (see claim 1, lines 13-17) of the ‘716, and
a conveyor that moves along the conveying rail in a state gripping each of the plurality of straight portions of the band-shaped coil, wherein the conveyor has a plurality of gripping grooves which grip a respective one of the plurality of straight portions of the band-shaped coil, (claim 1, lines 18-20) and wherein the plurality of gripping grooves have a coil abutting bottom surface of a depth according to an overlapping number of the plurality of straight portions which differs according to position in a conveying direction of the band-shaped coil (claim 1, lines 26-29) of the ‘716. Note that the organizer of the ’716 as broadly as readable on the claimed mechanism unit and the piece member 33 readable on the claimed “constituent members” as claimed in the instant application (see claim 2 of the ‘716 entirely).
As per claim 3, refer to claim 7 of the ‘716, respectively.
Response to Arguments
Applicant’s arguments with respect to pending claim(s) 1, 3 have been considered but are moot because the new ground of rejections and objection to (see above).
The Claims:
The amendment to the claim languages (see claims 1 and 3) still raises new issues of claim objections to and new 112 (see above).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas J Hong can be reached at 571-272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MINH N TRINH/Primary Examiner, Art Unit 3729
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