DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 34-41 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kamiyama (JP 2004350551 A as cited on form PTO-1449) in view of Takeno et al. (JP H07135852 A).
For claim 34, Kamiyama teaches a system for joining together plant stem sections by means of a graft element (62), the system comprising:
a gripping apparatus (77) comprising two gripping units (77a,77a) provided with extended portions the gripping units being arranged for holding the graft element and controllably opening a side opening against a repelling force of a resilient material;
a root stock holding apparatus (fig. 23, ref. 4) for providing a stem of a root stock to be grafted;
a scion holding apparatus (fig. 23, ref. 5) for providing a stem of a scion to be grafted; and
a stem positioning device (78,80,81,82,83) for positioning the stems of the root stock and the scion in the graft element, the stem positioning device comprising a pushing unit (83) configured to direct the stems toward the center of the graft element (functional recitation to which the pushing unit of Kamiyama can and does perform the intended function as shown in fig. 20 and as stated in para. 0032) and a pressing unit (82 is a stopper that presses against the stem for correcting displacement per para. 0030) configured to push the stems through the side opening so as to allow the formation of a graft and the pressing unit being oriented substantially perpendicular to a main orientation of the pushing unit and can move independently thereof (while part of the pressing unit is parallel with the pushing unit, the other part is oriented substantially perpendicular to the pushing unit);
wherein the pushing unit is configured to cooperate with the gripping units of the gripping apparatus to push the stems towards the center of the graft element (fig. 21 shows the pushing unit and the gripping units working together to push the stem towards the center of the graft element).
However, Kamiyama is silent about wherein the gripping units further comprise slits for at least partly accommodating the pushing unit of the stem positioning device, wherein the pushing unit is configured to cooperate with the slits of the gripping units.
It appears from Kamiyama that the shape or front surface of the gripping unit 77a does somewhat at least partly accommodating the pushing unit 83 but it is not exactly slits. Not much else in applicant’s specification further detailed the importance of these slits except that they partly accommodate the pushing unit. Thus, it would have been obvious to one having ordinary skill in the art at the time the invention was made to substitute the shape of the front surfaces of the gripping unit of Kamiyama with slits, since a simple substitution of one known equivalent element for another would obtain predictable results (both shapes or configuration would allow partial or partly accommodation of the pushing unit in that the slits or the shapes would allow the pushing unit to partly touch for a buffer). KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739, 1740, 82 USPQ2d 1385, 1395, 1396 (2007).
In the event that applicant disagrees with the examiner’s interpretation above, Takeno et al. teach a grafting system wherein Takeno et al. provide slits (fig. 14 at ref. 10b) of a gripping unit (70a,70b) to at least partly accommodating a pushing unit (10). It would have been obvious to one having ordinary skill in the art at the time the invention was made to include slits as taught by Takeno et al. in the gripping unit of Kamiyama in order to partly stow or store or accommodate items so that the items do not protrude too far out.
For claim 35, Kamiyama as modified by Takeno et al. teaches the system according to claim 34, and further discloses the pushing unit for pushing the stems, the pushing unit has an orientation substantially perpendicular to the main orientation of the stems (fig. 21).
For claim 36, Kamiyama as modified by Takeno et al. teaches the system according to claim 35, and further discloses wherein the pressing unit is configured to apply pressure to the stems at a predetermined position (function recitation to which the pressing unit of Kamiyama can and does perform the intended function).
For claim 37, Kamiyama as modified by Takeno et al. teaches the system according to claim 36, and further discloses wherein the predetermined position is located in the center portion of the graft element (fig. 20).
For claim 38, Kamiyama as modified by Takeno et al. teaches the system according to claim 34, and further discloses wherein the system further comprises a control unit (the machine as shown in fig. 1, or the user 10, or the hydraulic/pneumatic cylinders as mentioned throughout the specification/translation) for controlling the root stock holding apparatus and the scion holding apparatus for positioning the stems next to each other such that an end of the root stock is positioned higher than an end of the scion (functional recitation to which the control unit as taught in Kamiyama can performed the intended function).
For claim 39, Kamiyama as modified by Takeno et al. teaches the system according to claim 34, and further discloses wherein the control unit is further arranged for controlling the root stock holding apparatus and the scion holding apparatus for positioning the stems of the root stock and the scion on top of each other after cutting (functional recitation to which the control unit as taught in Kamiyama can performed the intended function).
For claim 40, Kamiyama as modified by Takeno et al. teaches the system according to claim 34, and further discloses wherein the system further comprises a cutting unit (50,51) arranged for cutting the stems at a level between an end of the root stock and an end of the scion.
For claim 41, Kamiyama as modified by Takeno et al. teaches the system according to claim 40, and further discloses wherein the cutting unit comprises a cutting blade (either one of refs. 50,51) with an orientation at an angle between 0º and 60º with a direction substantially perpendicular to an orientation of the stems to be cut (para. 0022).
Response to Arguments
Applicant’s arguments with respect to claims 34-41 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SON T NGUYEN whose telephone number is (571)272-6889. The examiner can normally be reached 9:00 to 4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached at 571-272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Son T Nguyen/Primary Examiner, Art Unit 3643