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 .
Status of Claims and Application
This final action on the merits is in response to the request for continued examination including remarks and amendment received by the office on 17 February 2026. Claims 1, 4, 6-11 are pending. Claims 2 and 3 are newly cancelled, their subject matter incorporated into independent claim 1. Claim 11 is newly added. Claims 1 and 10 are amended.
Claim Objections
Claim 11 is objected to for form. A claim is required to “begin[] with a capital letter and end[] with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995).” (See MPEP 608.01(m)) Claim 11 as instantly presented contains an extraneous period in the body of the claim inline 8 after the word “marks.” Examiner takes notice that this punctuation is likely the result of a scrivener’s error and will regard it thusly for the purposes of this action on the merits. Appropriate correction is required.
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:
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;
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
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.
The limitation “individual adjusting means for adjusting the local width of the film extruder” is recited in claim 7. The specification as originally filed identifies these means as heat bolts, which are known in the art.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
“nozzle means” in claims 1, 6-8.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
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.
Claim 11 is 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. The specification as originally filed does not teach the limitation that the ON-time is selected in relation to the speed with which the film is moving such that the marks are placed at predetermined distances from each other.
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 11 is 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 11 recites the limitation "the ON-time" in line 9. There is insufficient antecedent basis for this limitation in the claim.
The term “ON-time” in claim 11 is a relative term which renders the claim indefinite. The term “ON-time” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The phrase ‘ON-time’ admits of at least two mutually exclusive interpretations. The term could indicate either the moment in time in which the gas nozzles are activated or could be construed to refer to the total time a nozzle is activated. For the purposes of examination. ON-time will be interpreted as the moment of activation of the nozzle.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the time which the nozzle is deactivated, or the OFF-time. Applicant’s claim purports to control the distance between marks by selecting an appropriate ON-time. However, the ON-time by itself is not enough information for one possessed of ordinary skill in the art to practice the claimed invention. The distance between lines is controlled by both the ON-time as claimed as well as the OFF-time.
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 and 6-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2010167584 A to Tamura et al. (‘584 hereafter) in view of JP 2004045071 A to Suzuki et al. (‘071 hereafter).
All references will be made with respect to the attached machine translation document.
Regarding claim 1, ‘584 teaches a method for providing marks on extruded films, in particular on stretched films, which are exiting an extrusion lip of a film extruder, comprising the step of: directing a gas stream to a surface of the film exiting the extrusion lip of the film extruder using a nozzle means, in such a manner that the gas stream creates a local mark, and controlling the delivery of gas to the at least one nozzle means by using control means, wherein the gas is provided to the nozzle means to create linear marks (Pg 5 Paragraph 14 -referring to the attached machine translation, paragraph 12 and 13 describing an array of marks) and locally causes a cooling of the extruded film to create the local mark (Pg 5 Paragraph 14) wherein the cooling creates a detectable mark in the form of a local change of a characteristic of the film without changing the thickness of the film (Pg 5 Paragraph 14, Pg 4 paragraph 17). ‘584 does not teach intermittently operating the nozzle means to create an array of marks.
In the same field of endeavor, film extrusion, ‘071 teaches a marking method including intermittently marking a film for the purpose of highlighting areas of the film which are of interest (paragraph 0020, referring to the attached translation document). It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘584 with those of ‘071 for the benefit of marking portions of the film which are of interest.
Regarding claim 4, ‘584 teaches the method wherein the marks of the linear array are placed at predetermined distances from each other (Pg 5 Paragraph 12 and 13).
Regarding claim 6, ‘584 teaches the method comprising the further step of: providing n nozzle means being arranged in a linear array, wherein n is in the range of 2 to 20 (Fig 3 items 14).
Regarding claim 7, ‘584 teaches the method wherein the n nozzle means are arranged in a 1 to m correspondence with respect to individual adjusting means for adjusting the local width of the film extruder, wherein m is in the range of 1 to 20 (Fig 3 items 14 and 30).
Regarding claim 8, ‘584 teaches the method wherein the n nozzle means are activated at different time periods (page 6 paragraph 1).
Regarding claim 9, While teaching marking with gas streams at the claimed location, ‘584 does not teach marking in response process events.
In the same field of endeavor, film extrusion, ‘071 teaches the method wherein marking comprises automatically marking in cycles, wherein the cycles are based on events which are significant in the manufacturing process (paragraph 002 of the provided translation document) for the benefit of marking areas of interest on the film web. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘584 with those of ‘071 for the benefit of marking portions of the film which are of interest.
Regarding claim 10, ‘584 does not teach the significance of the process cycles.
In the same field of endeavor, film extrusion, ‘071 teaches the method wherein the cycles are based on events that are significant on a neck-in effect wherein the effect comprises at least one of a change of production, a change of the width of the film, a change of the distance between a dye and a chill roll or a change of vacuum box conditions (paragraph 0020). One possessed of ordinary skill in the art at the time of effective filing would have understood that a film defect would have a significance on a neck-in effect. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘584 with those of ‘071 for the benefit of marking defects which may have significance on a neck-in effect.
Regarding claim 11, ‘584 teaches a method for providing marks on extruded films that are stretched, which are exiting an extrusion lip of a film extruder, comprising: a) directing a gas stream to a surface of the film exiting the extrusion lip of the film extruder using a single nozzle means arranged adjacent to the extrusion lip, in such a manner that the gas stream creates a local mark (Pg 5 Paragraph 14); b) controlling the delivery of gas to the nozzle means by using control means (Pg 6 paragraph 1); and c) wherein the gas is provided to the single nozzle means to create an spaced linear marks along the extrusion line on a same lateral border region (Pg 6 paragraph 1). ‘584 does not intermittently providing the gas stream as claimed or the selection of an On-time. In the same field of endeavor, ‘071 teaches intermittently providing a mark to a film, the ON-time being selected in relation to the speed with which the film is moving such that the marks are placed at predetermined distances from each other (paragraph 0020) the purpose of highlighting areas of the film which are of interest. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘584 with those of ‘071 for the benefit of marking portions of the film which are of interest.
Response to Arguments
In support of the patentability of the instant claims, applicant has argued that
Regarding claim 1 and dependents, applicant alleges the ‘584 reference changes the thickness of the film by marking it, whereas the instant claim 1 and dependents require the thickness of the marked film not be changed.
Regarding claim 1 and dependents, “neither reference discloses a single gas nozzle at the die lip that is cyclically pulsed to generate multiple, spaced linear segments in the machine direction from that same nozzle.”
That ‘584 teaches a contactless marking while ‘071 requires a pen to touch the film to mark it and one possessed of ordinary skill would not seek to combine these teachings.
Regarding claim 10, the combination does not teach marking based on cycles which are themselves based on “events that are significant on a neck-in effect” such as “a change of production, a change of width of the film, a change of distance between a dye [sic] and a chill roll or a change of vacuum box conditions as required by the claim.
Regarding the first argument, applicant has misconstrued the teachings of Fig 5 of the ‘584 reference. Taken in isolation, Figs. 5a-5c do seem to indicate that the thickness measurement device of the prior art is detecting increased thickness at the site of marking. However, a complete reading of the relevant passages of the reference would lead the ordinary artisan to conclude that these are an artifact of the marking itself and not representative of a bona fide change in thickness at the marked locations as applicant purports. The ‘584 teaches a non-contact type thickness measurement device based on recording the transmittance of electro-magnetic waves through the film (Pg 1 paragraph 7). Second, the reference teaches that the marked positions are detected by the thickness measurement device itself, instead of having to manually align the thickness measuring device or rely on a second type of detector (Pg 6, paragraph 6). Finally, the reference indicates that a particular advantage of the method of the prior art is that the marking with gas jets is non-contact and causes no damage to the film as it is marked. The ordinary artisan at the time would certainly regard a doubling to quadrupling of the film thickness at marked locations as applicant alleges the reference teaches as a damage to the film. In point of fact, the ‘584 reference teaches a method of marking a film with a mark that is detectable with the thickness measuring device itself -thus eliminating the need for a worker to align marks and measurement devices manually – where the mark itself does not damage the film. This argument is not persuasive.
Regarding argument ii, applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). This argument is not persuasive.
Regarding argument iii., "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). In fact, the ‘584 reference acknowledges that it is known to use ink markers, even if the use is dispreferred relative to the non-contact gas jet method. This argument is not persuasive.
Regarding argument iv., claim 10 does require that the gas stream be directed onto the film in cycles and that the cycles are based on events which are significant to a neck-in effect. The claim further limits events significant to a neck-in effect to be at least one of a change in production, a change in width of the film, a change in distance between a die and chill roll or a change in vacuum box conditions. Of these four options, the ‘071 reference teaches that the marking of the film is instantiated by a change in production in the sense that a defect is the production of a portion of film other than what was specified. Furthermore, although not relied upon for the previous or above rejection, the ‘584 reference does teach that the marking is related to changes in thickness of the film. This argument is not persuasive.
No arguments are persuasive.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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/JPR/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743