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 .
DETAILED ACTION
Response to Amendment
Per the Request for Continued Examination filed 20 November 2025, the Amendment filed 10 November 2025 has been entered. Claims 1-5 and 10-15 are pending, of which claims 10-15 are withdrawn from consideration. Applicant's amendments have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Final Office Action mailed 20 August 2025, except for any objection(s) and/or rejection(s) under 35 USC 112 repeated below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
Initially, the examiner notes that no structure of the perforating press was illustrated in the drawings as originally filed. The examiner suggests filing a continuation-in-part application to include drawings showing all claimed structures without encountering new matter issues.
The amended drawings filed 10 November 2025 are objected to under 35 U.S.C. 132(a) because the newly added figures introduce new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: newly added Figs. 4A and 4B are replete with new matter. No structure of the perforating press was illustrated in the present application as originally filed, and each and every feature of the perforated press newly illustrated in Figs. 4A and 4B was not described in the written description or claims as originally filed. As further evidence that newly added Figs. 4A and 4B introduce new matter, the Applicant in the drawing amendments of 28 July 2025 submitted drawings showing a different structure of the perforating press (see, e.g., Fig. 4 as filed 28 July 2025, where a ram ‘8’ is attached above a sheet holder ‘14’). To provide a few (non-exhaustive) examples, none of the following features was described in the written description or claims as originally filed:
each of the feeding means “18” and the discharging means “17” including exactly two rollers, where the two rollers of each means are positioned on opposing sides of the sheet material “16”, as now illustrated in each of Figs. 4A and 4B;
each of the cams “31” and “32” directly contacting one of the punch holder and the sheet holder as illustrated in Fig. 4A (although the present specification as originally filed discloses “at least one pointed cam for moving the punch holder and one pointed cam for moving the sheet holder”, the term ‘moving’ does not implicitly require direct contact between a cam and the punch holder or sheet holder; moreover, the present specification at page 11, line 36 to page 12, line 2 contemplates the pointed cam displacing a ram element in order to move the sheet holder, such that as disclosed in the present application the pointed cam does not directly contact the sheet holder; since there is no disclosure of the pointed cams directly contacting the punch holder and sheet holder, and since Fig. 4A illustrates such direct contact, Fig. 4A introduces new matter into the disclosure);
the connecting rod “36” being directly attached to the sheet holder “15” as illustrated in Fig. 4B (there is no disclosure of directly attaching the connecting rod to the sheet holder – e.g., although page 9 at lines 23-24 discloses “a second connecting rod for moving the sheet holder”, the term ‘moving’ does not imply a direct connecting between the connecting rod and the sheet holder; moreover, page 12 at lines 2-5 discloses attaching a connecting rod to the sheet holder via an intermediary component of the ram element; since Fig. 4B illustrates a direct connection between a connecting rod and the sheet holder, and since this feature was not described in the present application as originally filed, Fig. 4B introduces new matter; consider an alternative structure disclosed by US Pat. No. 184,895 to Parr – this structure of connecting rods E and T is consistent with the present specification, but differs from what is illustrated in the present drawings);
each of Figs. 4A and 4B appears to illustrate a transmission shaft (see shaft “10” in Fig. 4A; no shaft is labeled in Fig. 4B) that extends horizontally perpendicular to directions of reciprocation of the punch holder “14” and the sheet holder “15”, and this orientation of the transmission shaft was no disclosed in the present application as originally filed (moreover, a transmission shaft can be oriented in a different manner than that illustrated in Figs. 4A and 4B – see, e.g., US Pat. No. 5,937,717 to Iino having a transmission shaft “2” that extends parallel to a direction of reciprocation of tools);
each of the cams “31” and “32” including a round profile portion and a single, sharp point as illustrated in Fig. 4A (although the present specification as originally filed discloses “at least one pointed cam for moving the punch holder and one pointed cam for moving the sheet holder”, the geometries of the pointed cams are not particularly disclosed in the level of detail now illustrated in Fig. 4A – e.g., it was not clear in the application as originally filed that a ‘pointed cam’ required a cam to have a sharp-tip point, such that a rounded point appeared consistent with the disclosure as originally filed; the addition of the geometry of the points on the cams “31” and “32” in Fig. 4A arguably alters the interpretation of the term “pointed cam”);
each feature of the geometry of the punch holder “14”, the sheet holder “15”, and the die “19” now illustrated in Figs. 4A and 4B (e.g., there is no disclosure of each of these structures having a rectangular shape in the present application as originally filed, there is no disclosure of the punch holder being narrower than the sheet holder in the present application as originally filed, and there is no disclosure of the sheet holder being narrower than the die in the present application as originally filed, although Figs. 4A and 4B illustrate each of these features);
the sheet holder “15” is differently illustrated in Figs. 4A and 4B, where the sheet holder in Fig. 4B includes an open space that receives the punch holder “14”, where the sheet holder in Fig. 4A lacks such an open space – neither of the configurations of the sheet holder in Figs. 4A and 4B was explicitly described in the present application as originally filed.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 following features must be shown or the feature(s) canceled from the claim(s):
the die comprising plural “openings” as recited in claim 1 (each of Figs. 4a and 4b illustrates only a single opening ‘7’ in the die ‘19’);
the sheet holder comprising plural “cut-outs” as recited in claim 1 (each of Figs. 4a and 4b illustrates only a single cut-out ‘20’ in the sheet holder ‘15’); and
a distance according to the stroke direction between the first extreme point and the second extreme point being “adjustable” as recited in claim 4 (as described in the present specification, “The distance according to the stroke direction between the first extreme point and the third extreme point is adjustable, for example, by using a ram element, included in the perforating press. The ram element is arranged between the transmission shaft and the sheet holder,” per page 11 beginning at line 33 of the specification as originally filed and “The distance between the ram element and the sheet holder is adjustable, for example by adjustment screws or by a hydraulic cylinder between the ram element and the sheet holder,” per page 12 beginning at line 5 of the present specification as originally filed, but the present drawings do not illustrate the ram element as having any structure to permit the adjustment as permitted by the specification, and the present drawings do not illustrate screws or a hydraulic cylinder that is between the ram element and the sheet holder as permitted by specification, so as best as can be determined the structure that enables the adjustment is not illustrated).
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 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. In regards to claim 1, both “a feeding means” and “a discharge means” are interpreted under 35 U.S.C. 112(f). 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.
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.
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.
Claim(s) 1-5 is/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 written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the claim limitation “feeding means” and “discharge means” are interpreted under 35 USC 112(f). In regards to the feeding means, the present disclosure states of the corresponding structure, “The feeding means may be a table equipped with conveyor belts, transport belts, transport wheels, transport rollers or any other suitable means for moving sheet material in the first direction.” (Emphasis added; see page 5 at lines 10-13 of the present application as originally filed in English.) In regards to the discharge means, the present disclosure states of the corresponding structure, “The discharge means may be a table equipped with conveyor belts, transport belts, transport wheels, transport rollers or any other suitable means for moving sheet material.” (Emphasis added; see page 5 at lines 32-34 of the present application as originally filed in English.) Thus, the corresponding structure for each means includes “any other suitable means” for moving sheet material. The present application does not demonstrate that the inventor(s) had possession of “any other suitable means”. No structure of “any other suitable means” for moving the sheet material is disclosed. Since the corresponding structure(s) for the feeding means and the discharge means includes structures that are not disclosed (i.e., those structures corresponding to “any other means”), the present application fails to demonstrate possession of “any other suitable means” that may be the corresponding structure for the claimed feeding means and discharge means.
Claim(s) 1-5 is/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.
Claim 1 is indefinite because the structure required by the feeding means and discharge means is unclear. Each of these limitations is interpreted under 35 USC 112(f). In regards to the feeding means, the present disclosure states of the corresponding structure, “The feeding means may be a table equipped with conveyor belts, transport belts, transport wheels, transport rollers or any other suitable means for moving sheet material in the first direction.” (Emphasis added; see page 5 at lines 10-13 of the present application as originally filed in English.) In regards to the discharge means, the present disclosure states of the corresponding structure, “The discharge means may be a table equipped with conveyor belts, transport belts, transport wheels, transport rollers or any other suitable means for moving sheet material.” (Emphasis added; see page 5 at lines 32-34 of the present application as originally filed in English.) Therefore, each of the feeding and discharge means can be any other suitable means for moving sheet material. However, the structures encompassed by “any other suitable means” for moving the sheet material cannot be determined, rendering the claim indefinite. As explained in MPEP 2181, “When the examiner cannot identify the corresponding structure, material, or acts, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.” Here, the examiner cannot identify the structure of “any other suitable means for moving sheet material”. The specification permits the corresponding structure(s) for the feeding and discharge means to be structures that are not actually disclosed, in particular the structures encompassed by “any other suitable means”. Since the corresponding structure(s) include structures that are not disclosed, the full extent of structures corresponding to the feeding and discharge means is unclear. For example, claim 1 is indefinite because it is unclear whether a single means that both feeds sheet material into the perforating press and discharges sheet material from the perforating press can satisfy both of the feeding and discharge means recited in claim 1. In other words, since the present specification permits each of the claimed means to be “any other suitable means”, and since a single means is a suitable means, arguably a single means for moving the sheet material satisfies the claim. On the other hand, claim 1 recites two means – a feeding means and a discharge means. An alternative interpretation of claim 1 is that two distinct means are required such that claim 1 does not encompass a single means satisfying both the feeding and discharge means. The specification provides no clarity on this issue because the specification does not provide guidance on the “any other suitable means” structure. As this example demonstrates, claim 1 is indefinite. However, this is merely one example of the indefiniteness resulting from the corresponding structures including “any other suitable means”.
Claim Rejections - 35 USC § 103
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 0,143,473 to Stephen in view of KR 200358716 (Y1) to Park and US Pat. No. 0,184,895 to Parr.
Regarding claim 1, Stephen discloses a perforating press for perforating a sheet material (see Fig. 1 and the title) comprising a first direction in which the sheet material is feedable (the first direction being a direction from left to right relative to Fig. 2); a punch holder f, wherein the punch holder f extends in a second direction transverse to the first direction (relative to Fig. 2, the second direction is a direction into and out of the page, which corresponds to a left-right direction along the plane of the page relative to Fig. 1), and wherein the punch holder f comprises at least one punch i (see Figs. 1 and 2); a die g, wherein the die g comprises openings (see Figs. 1 and 2; see also the final three lines of the left column of the first page of the written description), each said opening for receiving one punch i of the at least one punch i of the punch holder f (see Figs. 1 and 2); a transmission shaft b for converting a rotary movement of the transmission shaft b into a linear movement of the punch holder f in a stroke direction transverse to the first direction and transverse to the second direction (see Figs. 1 and 2, where the stroke direction is vertical along the plane of the page; the conversion is via the cranks and connecting rods b’ described at the final paragraph of the left column of the first page of the written description); characterized in that the perforating press comprises a sheet holder h, wherein the sheet holder h is positioned between the punch holder f and the die g according to the stroke direction (see Fig. 1, showing the sheet holder h vertically between the punch holder f and die g), wherein the sheet holder h is movable according to the stroke direction by the transmission shaft b (see Fig. 1 and lines 1-9 of the right column of the first page of the written description), wherein the sheet holder h comprises cut-outs (see Figs. 1 and 2; Fig. 2 shows one cutout, and a cut-out is provided for each punch i in order for the punches i to be able to pass beyond the sheet holder h to contact the sheet material), each said cut-out for passage of one punch i of the at least one punch i of the punch holder f (see Figs. 1 and 2), and there is a phase shift between a movement of the punch holder f and a movement of the sheet holder h (see lines 4-16 of the right column of the first page of the written description, where the phase shift includes the sheet holder h holding the sheet material down while the punch holder f moves upward),
wherein the transmission shaft b is a crankshaft (see Figs. 1 and 2) and wherein the crankshaft comprises a first crank and a first connecting rod b’ for moving the punch holder f (see Fig. 1 and the final paragraph of the left column of the first page of the written description, which explicitly discloses the first crank as one of the ‘cranks’) a cam and cam following structure (see Figs. 1 and 2, where these structures include elements k and l, which is a lower case letter L) for moving the sheet holder.
Regarding claim 2, Stephen discloses that a distance over which the sheet holder h is movable by the transmission shaft b according to the stroke direction is at most 60% of a distance over which the punch holder f is movable by the transmission shaft according to the stroke direction (see Fig. 1 and lines 4-16 of the right column of the first page of the written description; no particular requirements of either ‘distance’ are made by the claim – e.g., the neither distance is required to be between extreme points of the sheet holder or the punch holder – such that each distance recited in claim 2 can be any distance; as disclosed by Stephen, the distance over which the sheet holder is movable by the transmission shaft during the stripper operation is zero, whereas the distance over which the punch holder is movable is non-zero, such that the distance over which the sheet holder is movable by the transmission shaft during the stripping operation is no more than 60% of the distance over which the punch holder is movable by the transmission shaft during the stripping operation; if the Applicant intends the distances to be some particular distances, such as distances between first and second extreme points and between third and fourth extreme points, the examiner suggests making that requirement explicit; here, the fact that the Applicant has introduced a distance between extreme points in claim 3 suggests that the Applicant does not intend the distances in claim 2 to be required to be between extreme points).
Regarding claim 3, Stephen discloses that the sheet holder h and the punch holder f have a fixed position relative to each other according to the first direction and the second direction (see Figs. 1 and 2; note that the guide rods l’ maintain the recited ‘fixed position’ by preventing movement in the first and second directions of the sheet holder h with respect to the punch holder f).
Regarding claim 4, Stephen discloses that the punch holder f is movable by the transmission shaft b according to the stroke direction according to a linear path between a first extreme point and a second extreme point (the first and second extreme points being extreme points in vertical direction relative to Fig. 1, where the first and second extreme points are 180 degrees rotationally spaced positions of the crank visible in Fig. 2; the linear path is a vertical path relative to Fig. 1; the block d holder the punch holder f is guided in the frame a per the final paragraph of the left column of the first page of the written description; note also the need for the movement to be vertical for the punches i to pass through the openings in the die g), and that the sheet holder f is movable by the transmission shaft b according to the stroke direction according to a linear path between a third extreme point and a fourth extreme point (see Fig. 1, where the linear path is defined by engagement of the guide rods l’; the third and fourth extreme points being defined by differences in radii of the cams l as can be seen in Figs. 1 and 2), the first extreme point and the third extreme point being farthest from the die g (i.e., the first and third extreme points being uppermost points of the punch holder f and the sheet holder h relative to Fig. 1), and wherein a distance according to the stroke direction between the first extreme point and the third extreme point is adjustable (via screws k2 as can be seen in Fig. 1 and per the lines 23-27 of the right column of the first page of the written description – e.g., raising the sheet holder h with the screws k2 decreases a distance between the first and third extreme points).
Stephen fails to disclose a feeding means for feeding the sheet material in the first direction, a discharge means for discharging the sheet material following perforation by the at least one punch, and a second crank and a second connecting rod for moving the sheet holder, as required by claim 1.
First, Park teaches a feeding means 30 for feeding a sheet material 60 in a first direction (the first direction can be either of the X and Y directions relative to Fig. 8, since the feeding means 30 feeds the sheet material 60 in each of these directions) and a discharge means for discharging the sheet material 60 following perforation by at least one punch 21 (also transfer device 30; the Applicant under section VI of the Remarks dated 10 November 2025 acknowledges that a single means for both the feeding and discharging means is encompassed by claim 1). The feeding and discharging means of Park is advantageous to move a workpiece into position for being punched, and then move the workpiece following punching, thus reducing the need for manual labor (e.g., a human need not move the workpiece).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the structure of Stephen with the feeding and discharge means of Park in order to reduce the need for manual labor by providing a structure (i.e., the feeding and discharge means) that is able to move the workpiece.
Second, Parr teaches a workpiece holder L that is movable by a second crank V and a second connecting rod T (see Fig. 2; note that a same shaft g that produces vertical movement of the workpiece holder L also is attached to a first crank F and a first connecting rod E for driving movement of a punch holder A).
The structure of Stephen differs from the claimed invention because Stephen discloses a cam and cam follower structure for converting rotation of the transmission shaft into vertical movement of the sheet holder, rather than a second crank and a second connecting rod for converting the rotation of the transmission shaft into vertical movement of the sheet holder as required by claim 1. However, Parr teaches providing a transmission shaft with both (i) a first crank and a first connecting rod for driving vertical movement of a punch holder A and (ii) a second crank and a second connecting rod for driving vertical movement of a sheet holder L. Thus, the use of a second crank and a second connecting rod to vertically drive a sheet holder, using rotation from a same transmission shaft as is used to drive movement of a punch holder, is known in the art in view of the teachings of Parr. As such, one of ordinary skill in the art could have substituted a second crank and a second connecting rod in view of the teachings of Parr in place of the cam and cam follower of Stephen in order to drive the vertical movement of the sheet holder of Stephen based on the rotation of the transmission shaft of Stephen. Stephen and Parr, viewed together, teach that a cam & cam follow and a crank & connecting rod are equivalent structures for performing the same function of converting rotational movement of a transmission shaft into vertical movement of a sheet holder. As further evidence of the obviousness of this substitution, claim 1 even permits a cam as an alternative structure to a crank and connecting rod.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stephen as modified by Park and Parr as applied to claim 4 above, and further in view of US Pat. No. 2,229,488 to Barbieri.
Stephen, as modified, fails to expressly disclose any particular magnitude of rotation of the transmission shaft between the first extreme point and the third extreme point, and thus fails to disclose that the rotation is of at least 20 degrees and at most 40 degrees as required by claim 5.
Barbieri, however, making a magnitude of rotation of a transmission shaft 22 between a first extreme point of a punch holder 14 and a third extreme point of a sheet holder 40 adjustable (see lines 47-50 the right column of page 1 of the written description of Barbieri). Since the engagement between the hubs 37 and the transmission shaft 22 is engagement between two circular profiles as can be seen in Fig. 5, the hubs 37 can be moved to any rotational position with respect to the transmission shaft 22, which in turn permits adjusting the positions of the hubs 37 so that the magnitude of rotation of the transmission shaft 22 between the first extreme point and the third extreme point can be within the range of at least 20 degrees to at most 40 degrees.
It would have been obvious to one of ordinary skill in the art to provide Stephen with hubs that attach the sheet holder to the transmission shaft to be adjustable relative to the transmission shaft in view of Barbieri. This modification is advantageous because it provides a user with additional operations adjusting the timing of the holding and punching strokes by adjusting the positions of the hubs with respect to the transmission shaft. For example, Stephen desires to having the sheet holder retain pressed against the sheet material as the punch holder rises following a punching operation, and this modification facilitates this functionality of Stephen for workpieces of different thickness because the thickness of the workpiece plays a role in the time at which the sheet holder makes contact with the sheet material.
Response to Arguments
Prior to addressing the Applicant’s arguments, the examiner again encourages the Applicant to file a continuation-in-part application including drawings illustrating the claimed invention. As originally filed, the present application included no illustration of the claimed perforating press. The examiner suggests a CIP application as the best option for avoiding issues resulting from the originally filed drawings failing to illustrate a host of claimed features.
Applicant's arguments filed 10 November 2025 have been fully considered but they are not persuasive. Regarding an objection to the drawings for introducing new matter related to the feeding means and discharging means each including two rollers, the Applicant argues at page 9 of the Remarks that this structure “is a design choice which the person of ordinary skill in the art would readily comprehend was within the description of the feeding means 18 and discharging means 17 in the specification as filed”. This argument is not persuasive, however, because the present specification only discloses that each of the feeding and discharge means can include “transport rollers”. Per MPEP 608.04, “In establishing a disclosure, applicant may rely not only on the specification and drawing as filed but also on the claims present on the filing date of the application if their content justifies it.” Thus, the applicable is limited to what is in the specification, drawings, and claims as originally filed. Here, the Applicant does not assert that the configuration of rollers in the specification, drawings, or claims, but that instead one of ordinary skill in the art would have understood the newly illustrated feature of the rollers as a ‘design choice’. Thus, the Applicant appears to acknowledge that the configuration of rollers is not in the specification, drawings, or claims, as filed. Since the newly illustrated feature was not in the original specification, drawings, or claims, the newly illustrated feature introduces new matter.
Regarding the objection to the drawings for failing to illustrate the adjustable distance feature of claim 4, the Applicant asserts that newly added Figs. 4A and 4B illustrate this feature. However, this argument is not persuasive because the drawings do not illustrate any structure that permits adjustment of the distance between the first and third extreme points. Indeed, the Applicant does not even point to where in the drawings the adjustability is permitted. As such, the drawings continue to illustrate any structure that permits the adjustability required by claim 4.
Regarding claim 5, the examiner withdraws the objection in view of the newly added figures. The figures illustrate offset cam points, and also offset cranks, that result in the different of rotation recited in claim 5. However, figures relied upon to withdraw this objection introduce new matter as explained herein, and the withdrawn of the objection related to the features of claim 5 does not change this fact.
Next, regarding a rejection of claim 1 as being indefinite due to the structure of the “feeding means” and “discharge means” permitted to be ‘any other suitable means’, the Applicant asserts that the feeding and discharge means can be a single means. However, the argument fails to address the totality of the issue, which is that the entirety of structure(s) encompassed by “any other suitable means” is not disclosed. A limitation interpreted under 112(f) is limited to the structures disclosed by the Applicant in the specification. However, in this case there is no practical limit to the structures disclosed because each of the feeding means and discharge means can be “any other suitable means”. One reading the present specification is not apprised of the scope of the ‘feeding means’ and the ‘discharge means’ because each of these means can include structures not actually disclosed in the present application. As such, claim 1 remains indefinite due to the corresponding structure for the ‘feeding means’ and the ‘discharge means’ being permitted to include structures beyond what is disclosed. The examiner suggests, as one option for overcoming this rejection, deleting each of the ‘feeding means’ and ‘discharge means’ from claim 1.
Regarding claim 5, in view of Applicant’s newly added figures, the examiner has withdrawn the rejection of the claim under 35 USC 112(b). The spacing of the cams in Fig. 4A and the spacing of the cranks in Fig. 4B provides the different in rotation of the transmission shaft. However, the withdrawal of this rejection does not change the fact that Figs. 4A and 4B improperly introduce new matter into the disclosure.
Applicant’s arguments with respect to claims rejected under 35 USC 103 are moot in view of the newly cited references above, which newly cited art is necessitated by Applicant’s amendments to claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EVAN H MACFARLANE whose telephone number is (303)297-4242. The examiner can normally be reached Monday-Friday, 7:30AM to 4:00PM MT.
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, Boyer Ashley can be reached at (571) 272-4502. 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.
/EVAN H MACFARLANE/Examiner, Art Unit 3724