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 .
Claim Objections
Claims 5, 7, 8, 10, 12-14, 22, 25, 28, 29 and 45-47 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claims have not been further treated on the merits.
It is further noted that claims 45-47 also depend from some claims that have been canceled.
Claim 38 current recites: Method according to claim 37 for working…a web of material” and should read “The method according to claim 37 for working…the web of material”
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, 2, 4, 30, 37, 38 and 42 are ejected 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.
Regarding claims 1, 30, 37, 38 the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 1, 30, 37, 38 the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 37 appears to lack a transitional phrase (e.g. “comprising”). A transitional phrase defines the scope of the claim in terms of what unrecited elements or method steps, if any, are excluded from the scope of the claim, as well as clearly separating the preamble of the claim from the body of claim. Accordingly, the lack of a transitional phrase renders the claim indefinite because the scope of the claim is not clearly defined. For the purposes of examination the claim will be interpreted as having an open transitional phrase (i.e. equivalent to “comprising”). Please see MPEP 2111.03.
The subject matter of claims 37, 38 and 42 are couched in a narrative format which does not lend itself to a clear understanding of the essential steps of the method. Positively setting forth the method as a series of steps with the essential features of each step being distinctly claimed would overcome the indefiniteness with regard to the inferential claimed provision. Applicant is respectfully reminded that to be entitled to patentable weight in method claims, the structural limitations recited therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure. See Ex parte Pfeiffer, 135 USPQ 31 (1961). A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced, e.g. it doesn't begin a step with "forming" or "moving" or some other -ing ending word that provides the active step.
Claim 37 recites: “wherein the web of material moves forward incrementally in the machine direction and is worked intermittently multiple times by individual tools during a work cycle, wherein there is more than one working stroke, with respect to the individual tools, for working the web of material during the work cycle.” Wherein statements are used to further define previously set forth elements. In this case, a wherein statement is used to further define an step that was not previously, positively set forth, which makes it unclear if the recited step is required by the claimed method.
Claim 38 recites: “wherein the web of material moves forward incrementally in the machine direction and is worked intermittently multiple times by individual tools during a work cycle, wherein the individual tools are activated and/or driven in a decentralised manner during this work cycle.” As previously noted, it is not clear if the limitations in the “wherein” clauses are mean to further define previous steps or introduce additional steps.
Claim 42 recites: “characterised in that fewer work steps are carried out on the web of material by means of the individual tools during the work cycle per working stroke relative to the web of material than there are individual tools present overall.” As previously coted that narrative format of this method step makes it unclear if this claim is meant to further define previously set forth method steps and it is further noted “work steps” were not previously set forth.
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, 2, 4, 37 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abel (EP 1759780), as best understood.
With regards to claim 1, Abel discloses an apparatus (M) for working a web of material, having:
a plurality of individual tools (15) for different manners of working the web of material with designated workpieces temporarily held therein, and
having a machine direction along which the web of material with the designated workpieces, [tunnel 12, as seen in at least Figures 1, 2 & 4], and the plurality of individual tools (15) can be moved incrementally [paragraph 0002] relative to one another in such a way that the web of material can be worked multiple times with-in one work cycle by means of the plurality of individual tools (15), as seen in at least Figure 2,
wherein each of the plurality of individual tools (15) are designed as individual modules (11) which can be fixed to one another to form an individual module cluster, as seen in Figure 3, but can be detached as well [as described in at least paragraph 0033].
With regards to claim 2, Abel discloses wherein each of the plurality of individual tools (15) are designed as individual module as seen in at least Figure 4, driven autonomously by a motor (hydraulic cylinders 26), of an individual module cluster and/or the individual tools (15) are designed as individual modules (15) having a distance measurement device (25) for controlling and/or regulating each of the individual tools [ as described in paragraph 0038].
With regards to claim 4, Abel discloses that the apparatus is configured to move workpieces to be produced by means of the web of material in the machine direction along a production line [via transfer system T, as seen in at least Figure 1].
With regards to claim 30, Abel discloses an individual module (10) for carrying at least one individual tool (15) for working a web of material with designated workpieces temporarily held therein, the individual module (10) having:
a working path (tunnel 12) along which the web of material can be transported incrementally in the machine direction [at least paragraphs 0002, Figure 4],
and/or a coupling device (13) with coupling elements for a fixed but detachable coupling to at least one further individual module [at least paragraphs 0033],
and/or an autonomously operating functional and/or drive unit (A) for directly driving the at least one individual tool (15) with respect to the working path,
and/or a distance measurement device (25) for controlling and/or regulating the autonomously operating functional and/or drive unit [at least paragraph 0038],
and/or the at least one individual tool (15).
With regards to claim 37, Abel discloses a method for working a web of material with designated workpieces temporarily held therein,
wherein the web of material moves forward incrementally in the machine direction and is worked intermittently multiple times by individual tools (15) during a work cycle [at least paragraphs 0002, 0023, Figure 4],
wherein there is more than one working stroke, with respect to the individual tools (15), for working the web of material during the work cycle [as described in at least paragraphs 0013 and 0040].
With regards to claim 38, Abel discloses wherein the web of material moves forward incrementally in the machine direction and is worked intermittently multiple times by individual tools (15) during a work cycle, wherein the individual tools are activated and/or driven (via cylinder 25) in a decentralised manner during this work cycle [described in at least paragraphs 0002, 0013 and 0035].
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.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Abel.
Abel discloses the invention substantially as claimed except for explicitly requiring a fewer number of work steps than there are individual tools. However, Abel does disclose that the machine is programable via a controller [paragraphs 0013-0014 and 0040]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to perform the particular claimed number of steps, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. It is noted that Applicant has not disclosed that having this particular number of steps provides an advantage, is used for a particular purpose, or solves a stated problem and since it appears to be an arbitrary design consideration which fails to patentable distinguish over Abel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and further show the state of the art: US Patent 6,520,074 and US 2002/0157556.
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/TERESA M EKIERT/Primary Examiner, Art Unit 3725