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
The amendment filed March 25th, 2026 has been entered. Claims 1-2, 4-8, and 10-22 remain pending in the application. Examiner withdraws the objections to the claims previously set forth in the Non-Final Office Action mailed January 28th, 2026.
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.
Claims 1, 8, 13, 15, and 20-22 are rejected under 35 U.S.C. 103 as being
unpatentable over Franck Bausela et al. (US 6941849 B1 – hereinafter Bausela) in view of
Daisuke Inoue et al. (US 20200345559 A1 – hereinafter Inoue).
Regarding claim 1, Bausela teaches an apparatus (Fig. 2) for cutting a substrate (Fig. 1,
Web 1), wherein the apparatus comprises at least a first cutting element (Fig. 2, Perforating Tool
35.1), a second cutting element (Fig. 2, Perforating Tool 36.1) and an anvil (Fig. 2, Cylinder 4),
wherein the first and second cutting elements are mounted around an axis of rotation (Fig. 2, axis
of rotation defined by the center of Shaft 31) and wherein cutting edges of the first and second
cutting elements are substantially parallel (Fig. 2) and the cutting edges of the first and second
cutting elements define a cutting circumference which is immediately adjacent to, or intersects
with, a surface of the anvil (Fig. 2, surface including outer surfaces of Perforating Strips 35.2 and
36.2), wherein the first cutting element is mounted on a first arm (Fig. 2, rectangular base from
which 35.1 protrudes), wherein the second cutting element is mounted on a second arm (Fig. 2,
rectangular base from which 36.1 protrudes).
Bausela does not teach wherein the first cutting element and the second cutting element
are rotatable about the axis of rotation at different circumferential speeds so that the distance
about the cutting circumference between the first cutting element and the second cutting element
is a variable circumferential distance; and wherein the first arm is rotated by a first synchronous
drive shaft; and wherein the second arm is rotated by a second synchronous drive shaft; and
wherein the first and second synchronous drive shafts are mounted concentrically about an axis
of rotation (examiner interprets synchronous to mean driven by a toothed belt).
However, Inoue teaches an apparatus (Fig. 2) for cutting a substrate (Fig. 2, Body S) with
a first element (Fig. 2, Pad 30A) and a second element (Fig. 2, Pad 30B) being rotatable about an
axis of rotation at different circumferential speeds (Fig. 2, velocities V2 and V3) so that the
distance about the contact circumference between the first and second element is a variable
contact distance (Fig. 2, [0016] and [0017] – the speed of either element can be in the range of
V2 to V3, which if implemented in the device of Bausela would define a cutting circumference
which is variable); and wherein the first arm is rotated by a first synchronous drive shaft (Fig. 5,
hollow shaft of 30A which surrounds Supporting Shaft 32); and wherein the second arm is
rotated by a second synchronous drive shaft (Fig. 5, hollow shaft of 30B which surrounds
Supporting Shaft 32); and wherein the first and second synchronous drive shafts are mounted
concentrically about an axis of rotation (Fig. 5, axis of rotation defined by the center of
Supporting Shaft 32).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date to modify the device of Bausela to include the limitations of claim 1 as
taught by Inoue. Doing so is beneficial as it allows for the respective cutting elements to be
rotated at separate speeds without being mutually restricted (Inoue; [0093]), as well as allowing
for the cutting elements to match the speed of the anvil drum at the moment of contact while still
allowing for a faster or slower rotational speed when not in contact with the anvil drum (Inoue;
[0103]).
Regarding claim 8, Bausela teaches a process for cutting a continuous substrate into
discrete pieces on the surface of an anvil (examiner uses the Merriam-Webster definition of
discrete, where discrete means “individually distinct”, and finds that the process described in
Bausela results in individually distinct pieces), the process comprising the steps of rotating a first
cutting element (Fig. 2, Perforating Tool 35.1) about an axis of rotation (Fig. 2, axis of rotation
defined by the center of Shaft 31), and rotating a second cutting element (Fig. 2, Perforating Tool
36.1) about the axis of rotation; wherein cutting edges of the first and second cutting elements
are oriented to define a cutting circumference which is immediately adjacent to, or intersects
with, the surface of the anvil (Fig. 2, surface including outer surfaces of Perforating Strips 35.2
and 36.2); mounting the first cutting element on a first arm (Fig. 2, rectangular base from which
35.1 protrudes), and mounting the second cutting element on a second arm (Fig. 2, rectangular
base from which 36.1 protrudes).
Bausela does not teach rotating a first cutting element at a first variable circumferential
speed, rotating the second cutting element at a second circumferential speed which is a variable
circumferential speed independently controllable to the first circumferential speed, controlling
the circumferential speed of the first cutting element by the first arm being rotated by a first
synchronous drive shaft, and independently controlling the circumferential speed of the second
cutting element by the second arm being rotated by a second synchronous drive shaft; wherein
the first and second synchronous drive shafts are mounted concentrically about axis of rotation.
However, Inoue teaches an apparatus (Fig. 2) for cutting a substrate (Fig. 2, Body S)
involved in a process which includes rotating the first element (Fig. 2, Pad 30A) at a first
variable circumferential speed, rotating a second element (Fig. 2, Pad 30B) at a second
circumferential speed which is a variable circumferential speed independently controllable to the
first circumferential speed (Fig. 2, [0016] and [0017] – the speed of either element can be in the
range of V2 to V3), controlling the circumferential speed of the first element by the first arm
being rotated by a first synchronous drive shaft (Fig. 5, hollow shaft of 30A which surrounds
Supporting Shaft 32), and independently controlling the circumferential speed of the second
element by the second arm being rotated by a second synchronous drive shaft (Fig. 5, hollow
shaft of 30B which surrounds Supporting Shaft 32); wherein the first and second synchronous
drive shafts are mounted concentrically about axis of rotation (Fig. 5, axis of rotation defined by
the center of Supporting Shaft 32).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date to modify the device of Bausela to include the limitations of claim 8 as
taught by Inoue. Doing so is beneficial as it allows for the respective cutting elements to be
rotated at separate speeds without being mutually restricted (Inoue; [0093]), as well as allowing
for the cutting elements to match the speed of the anvil drum at the moment of contact while still
allowing for a faster or slower rotational speed when not in contact with the anvil drum (Inoue;
[0103]).
Regarding claim 13, the existing combination of Bausela and Inoue does not teach the
apparatus of claim 1, wherein the substrate is held against the surface of the anvil by a vacuum.
However, Bausela further teaches a cutting apparatus where the substrate (Fig. 2,
Laminated Body S) is held against the surface of an anvil (Fig. 2, Anvil Roll 2) by a vacuum
(Fig. 2, Retention Vacuum 2b; [0071]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date to modify the device of Bausela to include the limitations of claim 13 as
taught by Inoue. Doing so is beneficial as it allows the anvil to support the substrate until it can
be transferred elsewhere (Inoue; [0070]).
Regarding claim 15, the existing combination of Bausela and Inoue already teaches the
apparatus of claim 1, wherein the first arm and the second arm have cyclically variable speeds of
rotation (Inoue; [0100]).
Regarding claim 20, Bausela further teaches the apparatus of claim 1, wherein the
substrate is a continuous web of material (Fig. 1, Web 1).
Regarding claim 21, the existing combination of Bausela and Inoue already teaches the
apparatus of claim 1, wherein the cutting circumference between the first cutting element and the
second cutting elements is a variable circumferential distance (See the rejection of claim 1
above).
Regarding claim 22, Bausela teaches an apparatus (Fig. 2) for cutting a substrate (Fig. 1,
Web 1), wherein the apparatus comprises at least a first cutting element (Fig. 2, Perforating Tool
35.1), a second cutting element (Fig. 2, Perforating Tool 36.1) and an anvil (Fig. 2, Cylinder 4),
wherein the first and second cutting elements are mounted around an axis of rotation (Fig. 2, axis
of rotation defined by the center of Shaft 31) and wherein cutting edges of the first and second
cutting elements are substantially parallel (Fig. 2) and the cutting edges of the first and second
cutting elements define a cutting circumference which is immediately adjacent to, or intersects
with, a surface of the anvil (Fig. 2, surface including outer surfaces of Perforating Strips 35.2 and
36.2), wherein the first cutting element is mounted on a first arm (Fig. 2, rectangular base from
which 35.1 protrudes), wherein the second cutting element is mounted on a second arm (Fig. 2,
rectangular base from which 36.1 protrudes).
Bausela does not teach wherein the first cutting element and the second cutting element
are rotatable about the axis of rotation at different circumferential speeds so that the distance
about the cutting circumference between the first cutting element and the second cutting element
is a variable circumferential distance; and wherein the first arm is rotated by a first synchronous
drive shaft; and wherein the second arm is rotated by a second synchronous drive shaft; wherein
the first and second synchronous drive shafts are mounted concentrically about an axis of
rotation (examiner interprets synchronous to mean driven by a toothed belt), and wherein the
first arm and second arm are rotatable about the axis of rotation at different circumferential
speeds so that the distance about the cutting circumference between the first cutting element and
the second cutting element is a variable circumferential distance.
However, Inoue teaches an apparatus (Fig. 2) for cutting a substrate (Fig. 2, Body S) with
a first element (Fig. 2, Pad 30A) and a second element (Fig. 2, Pad 30B) being rotatable about an
axis of rotation at different circumferential speeds (Fig. 2, velocities V2 and V3) so that the
distance about the contact circumference between the first and second element is a variable
contact distance (Fig. 2, [0016] and [0017] – the speed of either element can be in the range of
V2 to V3, which if implemented in the device of Bausela would define a cutting circumference
which is variable); and wherein the first arm is rotated by a first synchronous drive shaft (Fig. 5,
hollow shaft of 30A which surrounds Supporting Shaft 32); and wherein the second arm is
rotated by a second synchronous drive shaft (Fig. 5, hollow shaft of 30B which surrounds
Supporting Shaft 32); and wherein the first and second synchronous drive shafts are mounted
concentrically about an axis of rotation (Fig. 5, axis of rotation defined by the center of
Supporting Shaft 32), and a first arm (Fig. 2, arm extending from axis of rotation to 30A) and a
second arm (Fig. 2, arm extending from axis of rotation to 30B) being rotatable about an axis of
rotation at different circumferential speeds (Fig. 2, velocities V2 and V3) so that the distance
about the contact circumference between the first and second element is a variable contact
distance (Fig. 2, [0016] and [0017] – the speed of either element can be in the range of V2 to V3,
which if implemented in the device of Bausela would define a cutting circumference which is
variable).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date to modify the device of Bausela to include the limitations of claim 22 as
taught by Inoue. Doing so is beneficial as it allows for the respective cutting elements to be
rotated at separate speeds without being mutually restricted (Inoue; [0093]), as well as allowing
for the cutting elements to match the speed of the anvil drum at the moment of contact while still
allowing for a faster or slower rotational speed when not in contact with the anvil drum (Inoue;
[0103]).
Claims 2 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over
Franck Bausela et al. (US 6941849 B1 – hereinafter Bausela) in view of Daisuke Inoue et al.
(US 20200345559 A1 – hereinafter Inoue) as applied to claim 1 above, and further in view
of Tommy Ober (US 20110005169 A1 – hereinafter Ober).
Regarding claim 2, Bausela further teaches the apparatus of Claim 1 further comprising:
a first pair of cutting elements mounted equidistantly from the axis of rotation (Fig. 2,
Perforating Tools 36.1 and 38.1).
The existing combination of Bausela and Inoue does not teach that the first pair of cutting
elements mounted on opposite sides of the axis of rotation, and a second pair of cutting elements
mounted equidistantly on opposite sides of the axis of rotation.
However, Ober teaches an apparatus (Fig. 2) for cutting substrate (Fig. 6a, Foil 40) with a
first pair of cutting elements (Fig. 5, pair of Separating Means 26 on disc 22a which are 180
degrees apart) mounted on opposite sides of the axis of rotation (Fig. 5, Axis 23), and a second
pair of cutting elements (Fig. 5, pair of Separating Means 26 on disc 22b which are 180 degrees
apart) mounted equidistantly on opposite sides of the axis of rotation.
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date to modify the device of Bausela and Inoue to include the limitations of claim
2 as taught by Ober. Doing so is beneficial as there is a defined spacing between the pairs of
cutting elements which allows for the cutting of the substrate at predefined intervals (Ober;
[0064]).
Regarding claim 17, the existing combination of Bausela and Inoue does not teach the
apparatus of claim 1, further comprising a first additional cutting element disposed on the first
arm and a second additional cutting element disposed on the second arm.
However, Ober teaches a cutting apparatus with a first additional cutting element (Fig. 5,
pair of Separating Means 26 on disc 22a which are 180 degrees apart, where one of the
Separating Means 26 is the first cutting element, and the other is the first additional cutting
element) disposed on a first arm (Fig. 5, disc 22a) and a second additional cutting element (Fig.
5, pair of Separating Means 26 on disc 22b which are 180 degrees apart where one of the
Separating Means 26 is the first cutting element, and the other is the first additional cutting
element) disposed on a second arm (Fig. 5, disc 22b).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date to modify the device of Bausela and Inoue to include the limitations of claim
17 as taught by Ober as it has been held that mere duplication of parts has no patentable
significance unless a new and unexpected result is produced In re Harza, 274 F.2d 669, 124
USPQ 378 (CCPA 1960).
Claims 4-7, 10-12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable
over Franck Bausela et al. (US 6941849 B1 – hereinafter Bausela) in view of Daisuke Inoue
et al. (US 20200345559 A1 – hereinafter Inoue) as applied to claims 1 and 8 above, and
further in view of James Busch et al. (US 10807263 B2 – hereinafter Busch).
Regarding claim 4, the existing combination of Bausela and Inoue does not teach the
apparatus of claim 1 wherein: each cutting element is connected by one or more flexible
elements to each arm, and wherein each of the flexible elements deflects or deforms at the point
where the cutting element is immediately adjacent to, or intersect with, the surface of the anvil.
However, Busch teaches a cutting apparatus where each cutting element (Fig. 10, Cutting
Element 510) is connected by one or more flexible elements (Fig. 10, Plurality of Spring
Elements 520) to each arm (Fig. 10, Base Holder Element 530), each of the flexible elements
deflecting or deforming at the point where the cutting element is immediately adjacent to, or
intersects with, the surface of the anvil (Col. 16, lines 7-13).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to modify the combination of Bausela and Inoue to
incorporate the limitations of claim 4 as taught by Busch. Doing so is beneficial as it helps to
increase the operable lifetime of the knife (Busch, Col 14 lines 62-67 and Col 15 line 1).
Regarding claim 5, the existing combination of Bausela, Inoue, and Busch already
teaches that the flexible element is a flexible column support element (Fig. 10, Plurality of
Springs 520).
Regarding claim 6, the existing combination of Bausela and Inoue does not teach the
apparatus of claim 1 wherein the cutting edge of the cutting element has a curvilinear profile.
However, Busch teaches a cutting edge (Fig. 10, Knife Edge 540) of a cutting element
(Fig. 10, Cutting Element 510) which has a curvilinear profile.
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to modify the combination of Bausela and Inoue to
incorporate the limitations of claim 6 as taught by Busch as it requires only a change in
form/shape of the knife edge, and a change in form or shape is generally recognized as being
within the level of ordinary skill in the art, absent any showing of unexpected results In re Dailey
et al., 149 USPQ 47.
Regarding claim 7, the existing combination of Bausela, Inoue, and Busch does not
teach the apparatus of claim 6 wherein the cutting element is mounted on a plurality of flexible
beam elements.
However, Busch teaches a cutting apparatus where the cutting element (Fig. 10, Cutting
Element 510) is mounted on a plurality of flexible beam elements (Fig. 10, Plurality of Springs
520)).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to modify the combination of Bausela, Inoue, and
Busch to incorporate the limitations of claim 7 above as taught by Busch. Doing so is beneficial
as it helps to increase the operable lifetime of the knife (Busch, Col 14 lines 62-67 and Col 15
line 1).
Regarding claim 10, the existing combination of Bausela and Inoue does not teach the
process of claim 8, further comprising operatively connecting each cutting element to each
respective arm by one or more flexible elements, and deforming or deforming each of the
flexible elements at the point where the cutting element is immediately adjacent to, or intersects
with, the surface of the anvil.
However, Busch teaches a cutting apparatus where each cutting element (Fig. 10, Cutting
Element 510) is connected by one or more flexible elements (Fig. 10, Plurality of Spring
Elements 520) to each arm (Fig. 10, Base Holder Element 530), each of the flexible elements
deflecting or deforming at the point where the cutting element is immediately adjacent to, or
intersects with, the surface of the anvil (Col. 16, lines 7-13).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to modify the combination of Bausela and Inoue to
incorporate the limitations of claim 4 as taught by Busch. Doing so is beneficial as it helps to
increase the operable lifetime of the knife (Busch, Col 14 lines 62-67 and Col 15 line 1).
Regarding claim 11, the existing combination of Bausela, Inoue, and Busch already
teaches that the flexible element is a flexible column support element (Fig. 10, Plurality of
Springs 520).
Regarding claim 12, the existing combination of Bausela and Inoue fails to teach the
apparatus of claim 1, wherein each cutting element is mounted in a support block and the support
block is connected to a support arm by a column support element.
However, Busch teaches a cutting apparatus wherein each cutting element (Fig. 22,
Cutting Element 510A) is mounted in a support block (Fig. 22, Spring Element 520D) and the
support block is connected to a support arm (Fig. 22, Rotary Press 30) by a column support
element (Fig. 22, Blade Holder Element 530C).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to modify the combination of Bausela and Inoue to
incorporate the features of claim 12 as taught by Busch. Doing so is beneficial as it reduces
potential catastrophic degradation of the knife (Busch, Col 14 lines 62-67 and Col 15 line 1-2).
Regarding claim 19, the existing combination of Bausela and Inoue does not teach the
apparatus of claim 1, wherein the anvil causes the first cutting element to deflect away from the
anvil in a direction orthogonal to the cutting element when the anvil contacts the cutting element
and the substrate.
However, Busch teaches a cutting apparatus where a first cutting element (Fig. 22,
Cutting Element 510A) deflects away from an anvil (Fig. 2, Anvil 40) in a direction orthogonal
to the cutting element when in contact with the anvil (Col 21 lines 22-36).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to modify the combination of Bausela and Inoue to
incorporate the features of claim 19 as taught by Busch. Doing so is beneficial as it creates a
cutting force of the knife against the anvil (Busch; Col 8 lines 61-66).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Franck Bausela
et al. (US 6941849 B1 – hereinafter Bausela) in view of Daisuke Inoue et al. (US
20200345559 A1 – hereinafter Inoue) as applied to claim 1 above, and further in view of
William Kearney (US 20140047960 A1– hereinafter Kearney).
Regarding claim 14, the existing combination of Bausela and Inoue does not teach the
apparatus of claim 1, wherein a circumferential speed of the surface of the anvil and a
circumferential speed of each cutting element is substantially matched during cutting.
However, Kearny a cutting apparatus, wherein a circumferential speed of the surface of
the anvil (Fig. 2, Anvil Drum 22) and a circumferential speed of each cutting element (Fig.
Cutting Element 23) is substantially matched during cutting ([0036], the circumferential speed of
the cutting element is designed to match the linear speed of the web to avoid stretch and slack in
the web. Inherently, the anvil drum must have a substantially matched circumferential speed to
accomplish this).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to modify the combination of Bausela and Inoue to
incorporate the features of claim 14 as taught by Kearney. Doing so is beneficial as it avoids
stretch and slack in the web (Kearney; [0036]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Franck Bausela
et al. (US 6941849 B1 – hereinafter Bausela) in view of Daisuke Inoue et al. (US
20200345559 A1 – hereinafter Inoue) as applied to claim 15 above, and further in view of
James Ferara (US 3962942 A – hereinafter Ferara) and EDRMedeso (See attached
research article).
Regarding claim 16, the existing combination of Bausela and Inoue fails to teach the
apparatus of claim 15, wherein a graphical representation of the rotational speed of the first arm
and the second arm is a sinusoidal cycle.
However, Ferara teaches a cyclical drive system consisting of a pair of elliptical gears
(Col 4 lines 44-56). EDRMedeso shows that a pair of elliptical gears results in a rotational
speed which can be graphically represented sinusoidally.
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to modify the combination of Bausela and Inoue to
incorporate the features of claim 16 as taught by Ferara and EDRMedeso. Doing so is beneficial
as it allows the blade to move at the same speed as the substrate at the instant of the cut while
only making one revolution between cuts (Ferara, Col 2 lines 62-67).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Franck Bausela
et al. (US 6941849 B1 – hereinafter Bausela) in view of Daisuke Inoue et al. (US
20200345559 A1 – hereinafter Inoue) as applied to claim 1 above, and further in view of
John Billingsley (US 7578221 B2 – hereinafter Billingsley).
Regarding claim 18, the existing combination of Bausela and Inoue fails to teach the
apparatus of claim 1, further comprising a counter-balancing weight on the first support arm on
an opposite side of the axis of rotation.
However, Billingsley teaches a counter-balancing weight (Fig. 2, Counterweight 62) on
a first support arm (Fig. 2, arm which connections 62 and Blade 50) on an opposite side of an
axis of rotation (Fig. 2, Shaft 52).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to modify the combination of Bausela and Inoue to
incorporate the features of claim 18 as taught by Billingsley. Doing so is beneficial as it is well
known that a counterweight can reduce the strain on the system driving the rotation.
Response to Arguments
Applicant's arguments filed 3/25/2026 have been fully considered but they are not persuasive.
Regarding claims 1, 8, and 22, Applicant argues that the first and second cutting elements being rotatable at different circumferential speeds is not taught because Inoue teaches variable circumferential speed pads, not cutting elements. Additionally, Applicant asserts that Inoue would teach away since the cutting element of Inoue does not teach the aforementioned claimed limitation. A first and second cutting element is taught by Bausela, while the different circumferential speeds of two elements which interact with the workpiece are taught by Inoue (see the rejection of claims 1, 8, and 22 above). Inoue only has one cutting element, so the cutter of Inoue could not teach away from two different elements having different rotational speeds since there are not two different cutting elements present. Although the differing speeds of Inoue are experienced by elements which are not cutting elements, there is still a motivation to modify the cutting elements of Bausela to include these limitations as there would be the benefit taught by Inoue of at least allowing for the cutting elements to match the speed of the anvil drum at the moment of contact while still allowing for a faster or slower rotational speed when not in contact with the anvil drum (Inoue; [0103]).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As previously mentioned, there is a clear motivation to combine these two references to create the claimed apparatus.
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 ELLA LORRAINE KEENA whose telephone number is (571)272-1806. The examiner can normally be reached 7:30am - 5:00 pm ET.
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/ELLA L KEENA/Examiner, Art Unit 3724 /BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
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