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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11 and 23-30 in the reply filed on September 12, 2025 is acknowledged. Claims 12-22 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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. 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “sealing system” in claims 1 and 23.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-11 and 23-30 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 limitation “sealing system” which appears in claims 1 and 23 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. In particular, a complete description of the structure of the sealing system is not provided. Moreover, the specification provides a description of certain components of the sealing system (i.e., the linear sensor array and the envelope mister) but does not provide a description of the structure corresponding to the function of moving the pointed flap to the closed position so that the moistened adhesive contacts the back of the envelope. Therefore, each of claims 1 and 23 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-11 and 24-30 depend from claims 1 and 23, respectively, and are therefore also indefinite for the reasons et forth above.
Claims 9 and 28 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.
Claims 9 and 28 each recite the limitation “the light sensor array” in lines 1-2. There is insufficient antecedent basis for this limitation in the claims. The claims from which each of these claims depend (i.e., claims 8 and 27) recite “a linear sensor array” but not “a light sensor array”. For purposes of examination, “the light sensor array” is being construed as “the linear sensor array”.
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.
Claims 1-10 and 23-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dolan et al. (U.S. Patent No. 6,554,956 B1).
Regarding claim 1, Dolan discloses an automated envelope sealing system (Abstract of Dolan, envelope processing system), comprising: a conveyor configured to transport a series of envelopes along a conveyance path (FIG. 1, 14:22-30 of Dolan, apparatus includes a conveying apparatus including a conveyor belt along the feed path), wherein each of the envelopes comprises a front face and a back with a pointed envelope flap that is foldable along a fold line (FIG. 7 of Dolan, envelopes comprise front and back faces and a pointed flap having a fold line); and a sealing system configured to seal each of the envelopes by securing the pointed envelope flap in a closed position during transport along the conveyance path (Abstract of Dolan, envelope flap sealed with a sealing apparatus).
Regarding claim 2, Dolan discloses that the envelopes include a first envelope having a first set of envelope dimensions and a second envelope having a second set of envelope dimensions, wherein the first set of envelope dimensions is different from the second set of envelope dimensions (3:5-22 of Dolan, envelopes may be of different sizes).
Regarding claim 3, Dolan does not specifically disclose that the pointed envelope flap includes a water-soluble adhesive. Moreover, Dolan discloses moistening the flap to activate the glue on the flap (1:33-28 of Dolan), Dolan does not specifically disclose that the flap glue or adhesive is “water soluble”. As set forth in the MPEP, however, a claim is only limited by positively recited elements (MPEP § 2115). Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). (MPEP §2115).
Regarding claim 4, while Dolan discloses that the pointed envelope flap includes a first side, a second side, and a third side comprising the fold line (FIG. 7 of Dolan), Dolan does not specifically disclose that the water-soluble adhesive comprises a first adhesive strip positioned along the first side of the pointed envelope flap and a second adhesive strip positioned along the second side of the pointed envelope flap. As set forth in the MPEP, however, a claim is only limited by positively recited elements (MPEP § 2115). Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). (MPEP §2115).
Regarding claim 5, Dolan discloses that the sealing system is configured to: moisten the water-soluble adhesive (FIG. 1, 1:33-38 of Dolan, liquid applicator apparatus #100); and move the pointed envelope flap to the closed position so that the moistened water-soluble adhesive contacts the back of the envelope (FIG. 1 of Dolan, envelope passes through conveying section #160 to seal the moistened flap against the back of the envelope).
Regarding claim 6, Dolan discloses that the sealing system comprises an envelope mister configured to apply moisture to the water-soluble adhesive during travel along a travel path (FIG. 9, 12:17-40 of Dolan, driving motor for nozzle of liquid sealing apparatus driven by controller #71; FIGS. 7a-7c of Dolan, sealing agent sprayed along travel path).
Regarding claim 7, Dolan discloses the system further comprising a control system in communication with the envelope mister (FIG. 9, 12:17-40 of Dolan, driving motor for nozzle of liquid sealing apparatus driven by controller #71), wherein the control system is configured to (a) determine a plurality of dimensions for the pointed envelope flap (FIG. 8 of Dolan), (b) calculate the travel path for the envelope mister based on the dimensions for the pointed envelope flap (FIGS. 7a-7c of Dolan), and (c) control the envelope mister during travel along the travel path (12:40-64 of Dolan).
Regarding claim 8, Dolan discloses that the sealing system comprises a linear sensor array configured to detect a distance from the fold line to a point of the pointed envelope flap (8:49-55 of Dolan).
Regarding claim 9, Dolan discloses that the control system is in communication with the light sensor array, and wherein the control system is configured to determine at least a portion of the dimensions for the pointed envelope flap based on information received from the linear sensor array (8:49-55 of Dolan, controller determines edge profile of flap based on input from linear sensor array).
Regarding claim 10, Dolan discloses that the control system is configured to calculate a location of a point of the pointed envelope flap when secured to the back of the envelope (FIG. 8, 8:49-55 of Dolan, controller determines edge profile of flap and would therefore necessarily calculate the point of the flap).
Regarding claim 23, Dolan discloses an automated envelope sealing system, comprising: a conveyor configured to transport a series of envelopes along a conveyance path (FIG. 1, 14:22-30 of Dolan, apparatus includes a conveying apparatus including a conveyor belt along the feed path), wherein each of the envelopes comprises a front face and a back with a pointed envelope flap that is foldable along a fold line (FIG. 7 of Dolan, envelopes comprise front and back faces and a pointed flap having a fold line), wherein the pointed envelope flap includes a first side, a second side, and a third side comprising the fold line (FIG. 7 of Dolan, envelopes comprise front and back faces and a pointed flap having a fold line); and a sealing system configured to moisten the water-soluble adhesive and move the pointed envelope flap to a closed position so that the moistened water-soluble adhesive contacts the back of the envelope to thereby seal each of the envelopes during transport along the conveyance path (FIG. 1, Abstract of Dolan, envelope flap sealed to back of envelope with a sealing apparatus).
Dolan does not specifically disclose that the pointed envelope flap includes a water-soluble adhesive comprising a first adhesive strip positioned along the first side of the pointed envelope flap and a second adhesive strip positioned along the second side of the pointed envelope flap. Moreover, Dolan discloses moistening the flap to activate the glue on the flap (1:33-28 of Dolan), but does not specifically disclose that the flap glue or adhesive is “water soluble” or that the first adhesive strip positioned along the first side of the pointed envelope flap and a second adhesive strip positioned along the second side of the pointed envelope flap. As set forth in the MPEP, however, a claim is only limited by positively recited elements (MPEP § 2115). Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). (MPEP §2115). It should be noted that Dolan discloses applying the sealing liquid (i.e., water) along a travel path positioned along the edges of the flap (FIG. 7a-7c of Dolan). The system of Dolan is therefore configured to activate a water soluble adhesive positioned along the sides of the pointed envelope flap.
Regarding claim 24, Dolan discloses that the envelopes include a first envelope having a first set of envelope dimensions and a second envelope having a second set of envelope dimensions, wherein the first set of envelope dimensions is different from the second set of envelope dimensions (3:5-22 of Dolan, envelopes may be of different sizes).
Regarding claim 25, Dolan discloses that the sealing system comprises an envelope mister configured to apply moisture to the water-soluble adhesive during travel along a travel path (FIG. 9, 12:17-40 of Dolan, driving motor for nozzle of liquid sealing apparatus driven by controller #71; FIGS. 7a-7c of Dolan, sealing agent sprayed along travel path).
Regarding claim 26, Dolan discloses the system further comprising a control system in communication with the envelope mister (FIG. 9, 12:17-40 of Dolan, driving motor for nozzle of liquid sealing apparatus driven by controller #71), wherein the control system is configured to (a) determine a plurality of dimensions for the pointed envelope flap (FIG. 8 of Dolan), (b) calculate the travel path for the envelope mister based on the dimensions for the pointed envelope flap (FIGS. 7a-7c of Dolan), and (c) control the envelope mister during travel along the travel path (12:40-64 of Dolan).
Regarding claim 27, Dolan discloses that the sealing system comprises a linear sensor array configured to detect a distance from the fold line to a point of the pointed envelope flap (FIG. 8, 8:49-55 of Dolan).
Regarding claim 28, Dolan discloses that the control system is in communication with the light sensor array, and wherein the control system is configured to determine at least a portion of the dimensions for the pointed envelope flap based on information received from the linear sensor array (8:49-55 of Dolan, controller determines edge profile of flap based on input from linear sensor array).
Regarding claim 29, Dolan discloses that the control system is configured to calculate a location of a point of the pointed envelope flap when secured to the back of the envelope (FIG. 8, 8:49-55 of Dolan, controller determines edge profile of flap and would therefore necessarily calculate the point of the flap).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 11 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Dolan in view of Djermoune (International Patent Publication No. WO 92/20527, machine language translation of corresponding FR 2676396 A1 provided and cited below).
Regarding claims 11 and 30, Dolan does not specifically disclose that the sealing system comprises a seal applicator configured to place a seal on the point of the pointed envelope flap. Djermoune, however, discloses applying a seal to the point of an envelope flap in order to fix the flap and to imitate a wax seal (pg. 3, last full ¶ of Djermoune). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to provide a seal applicator configured to place a seal on the point of the pointed envelope flap in the system of Dolan. One of skill in the art would have been motivated to do so in order to fix the flap and to provide a decorative seal that imitates a wax seal as taught by fix the flap and to imitate a wax seal as taught by Djermoune (pg. 3, last full ¶ of Djermoune).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746