The arguments and amendments submitted 10/30/2025 have been considered. In light of amendments made, all prior claim objections and USC § 112(b) rejections are hereby withdrawn. The merits of the claims, however, remain unpatentable over the prior art as set forth below.
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.
Claims 34-42 and 44-50 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 pre-AIA the applicant regards as the invention.
Claim 34, line 13 recites "the extension of the channel". The term is not previously used in this claim and does not have proper antecedent basis. For the purpose of examination, claim 34, line 5 reads on "an extension of the channel". Dependent claims fall herewith.
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 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.
Because these claim limitation(s)are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 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 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 them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 34-42 and 44-50 are rejected under 35 U.S.C. 103 as being unpatentable over Alveskog (US Patent 5,948,201).
Regarding claim 34, Alveskog teaches a device for applying an adhesive to a longitudinal product (Figs. 16-19, claims 6-15, col. 8, lines 18-57), said device comprises:
a body (A in Figs. 16-17) comprising a guide member (guide member comprising angle-shaped plate 110 and bottom portion 107), wherein said guide member comprises a channel (122) for receiving and guiding said longitudinal product in relation to said guide member (col. 8, lines 36-44), said channel having a first end and a second end (e.g. left and right ends shown in Fig. 16);
wherein said guide member comprises a tape slot for guiding an adhesive tape into said channel (tape slot 120 in Fig. 17 and per col. 8, lines 40-42);
wherein said channel comprises a guide surface (103’), and wherein said tape slot extends through at least part of the material of said guide member and into said guide surface of said channel (col. 8, lines 40-42), thereby allowing feeding said adhesive tape through the material of said guide member and into said channel of said guide member (col. 8, lines 40-42);
wherein said tape slot extends into the channel in a direction which is essentially perpendicular to an extension of the channel (as shown in Fig. 17, tape slot 120 extends in the vertical direction in the figure which is perpendicular to the extension direction of channel 122 formed by surfaces 103 and 103’ which is into the plane of the figure), thereby allowing access into said channel along the extension of said tape slot (thus as shown in Fig. 17, the tape slot allows access into the channel along the vertical extension of the tape slot into the channel);
wherein said guide member comprises a first guide member part (103) and a second guide member part (103’);
wherein said guide member is being divided into said first guide member part and said second guide member part which are separate (as shown in Fig. 17) and can be taken apart at an interface (interface is the location where 103 and 103’ meet as shown in Fig. 17 with capability to be taken apart described as “The cover is easily disengaged for height adjustment with the aid of screw driver tracks 132, 134 in the flanges 128 and the rifles 130, respectively” per col. 8, lines 48-57), said interface arranged along said channel (as shown in Figs. 16 and 17), thereby intersecting said channel along a longitudinal direction thereof (as shown in Fig. 16 with longitudinal direction of channel from left to right in the figure).
For the embodiment of Figs. 16-17, Alveskog is silent regarding the feature that the tape slot is an open tape slot.
However, Alveskog teaches another embodiment of a device for applying an adhesive to a longitudinal product (Figs. 21-26) wherein the tape slot (82 in Fig. 24) is an open tape slot (col. 8, lines 62-63), extending into the channel (region inside housing 1 in Fig. 24) in a direction which is essentially perpendicular to the extension of the channel (as shown in Fig. 24, tape slot 82 extends along the plane of the figure, which is perpendicular to the extension direction of the channel which is into the plane of the figure), thereby allowing access into said channel along the extension of said tape slot (as shown in Fig. 24, the tape slot allows access into the channel along the extension of the tape slot into the channel).
Alveskog teaches that the configuration of Fig. 24 with an open tape slot allows use of a hinged paper remover 84 and tape pressing means 86, thereby enabling use of tape having protective paper with convenient removal of the protective paper (as shown in Fig. 25 and per col. 9, lines 1-3).
In view of Alveskog’s teachings, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of Figs. 16-17 to utilize the open tape slot configuration of Fig. 24 to predictably enable use of tape having protective paper with convenient removal of the protective paper from the tape prior to application to the longitudinal product.
Regarding claim 35, Alveskog teaches said channel of said guide member has an essentially linear extension (as shown in Fig. 16).
Regarding claim 36, Alveskog teaches said channel of said guide member is a through channel extending through the material of said guide member (col. 8, lines 36-44 and as shown in Figs. 16-17).
Regarding claim 37, Alveskog teaches said guide member is integrated with said body of said device (as shown in Figs. 16-17).
Regarding claim 38, Alveskog teaches said guide member is configured to be detachable mounted to said body of said device (col. 8, lines 19-40 and lines 48-57), and wherein said guide member comprises guide member attachment means (col. 8, lines 48-57); wherein said body attachment means and said guide member attachment means are adapted to be able to detachably enter into engagement with each other, thereby enabling exchange of said guide member on said body (col. 8, lines 48-57).
Regarding claim 39, Alveskog teaches said first guide member part comprises a first guide member engagement means (112, 114), and wherein said second guide member part comprises a second guide member engagement means (124); wherein said first guide member engagement means and said second guide member engagement means are configured to detachably enter into engagement with each other (col. 8, lines 44-47).
Regarding claim 40, Alveskog teaches an embodiment wherein the body comprises a first body member and a second body member; wherein said first body member and said second body member are being attached to each other in a pivoting fashion around a pivoting point (as shown in Fig. 24), thereby forming two jaws which, by rotation relative to each other, are configured to enable changing a configuration of said device between an open configuration and a closed configuration (as shown in Fig. 24).
In view of Alveskog’s teachings, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of Figs. 16-17 to include these features to predictably enable easier access to internal components for cleaning and/or maintenance.
Regarding claim 41, Alveskog teaches said first body member comprises first body attachment means; and wherein said second body member comprises second body attachment means (col. 8, lines 19-39); wherein said first guide member part comprises a first guide member attachment means; wherein said second guide member part comprises a second guide member attachment means (col. 8, lines 19-57); wherein said first body attachment means is being configured to detachably enter into engagement with said first guide member attachment means(col. 8, lines 19-57); and wherein said second body attachment means is being configured to detachably enter into engagement with said second guide member attachment means (col. 8, lines 19-57); wherein said channel thereby is being formed upon bringing said device into its closed configuration (col. 8, lines 48-55).
Regarding claim 42, Alveskog teaches said first body member comprises first body attachment means (col. 8, lines 19-57), wherein said first guide member part comprises a first guide member attachment means (col. 8, lines 19-57); wherein said first body attachment means is being configured to detachably enter into engagement with said first guide member attachment means (col. 8, lines 19-57); and wherein said second guide member part is integrated into said second body member (col. 8, lines 19-57).
Regarding claim 44, Alveskog teaches said channel is having a cross-sectional geometry with the geometry of a rectangle (as shown in Fig. 17 and per claim 10).
Regarding claim 45, Alveskog teaches an embodiment wherein a cross-section of said channel of said guide member comprises an essential circular curve comprising a notch (as shown near label 3 in Fig. 3), wherein said notch extends away from the center of said circular curve and into the material of said guide member (as shown in Fig. 3); optionally wherein said notch extends all the way along the longitudinal direction of said channel (as shown in Fig. 1).
The courts have held that a mere change in shape of an element is an obvious modification. See MPEP § 2144.04.IV.B. “The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.” In re Dailey, 357 F.2d 669,149 USPQ 47 (CCPA 1966).
In view of Aveskog’s teachings and the above considerations, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of Figs. 16-17 to include these features and shapes to predictably enable the device to process conduit products having similar shapes to the cross-section of the channel.
Regarding claim 46, Alveskog teaches said first body member and/or said second body member comprises a longitudinal recess, thereby forming said guide member as an integral part of said body; wherein said recess(s) thereby define(s) said channel (as shown in Fig. 1), when said first body member and said second body member are being brought into their closed configuration (as shown in Fig. 10); optionally wherein said first body member and said second body member comprises engagement means configured to enter into engagement with each other upon bringing said first body member and said second body member into their closed configuration, thereby preventing any lateral movement of the first body member and said second body member relative to each other when being in their closed configuration (as shown in Fig. 10).
Regarding claim 47, Alveskog teaches said device furthermore comprises a tape reel holder for holding a reel of adhesive tape (tape reel holder 6); optionally wherein said tape reel holder is having an orientation, relative to said tape slot of said guide member in a way enabling that once being loaded with said reel of adhesive tape, said reel of adhesive tape defines a plane which essentially intersects said tape slot (as shown in Fig. 16).
Regarding claim 48, Alveskog teaches said tape reel holder comprises a post having a proximal portion and a distal portion (as shown in Figs. 4-8), wherein said proximal portion is being attached to said body of said device and wherein said distal portion comprises reel holding means (as shown in Figs. 4-8), wherein said reel holding means is configured to allow a tape reel, once being mounted on said tape reel holder, to rotate relative to said post (as shown in Figs. 4-8).
Regarding claim 49, Alveskog teaches the device further comprising a roller, wherein said roller comprises first roller attachment means (as shown in Figs. 4-8), and wherein said body comprises second roller attachment means, wherein said first roller attachment means are configured to detachably enter into engagement with said second roller attachment means (as shown in Figs. 4-8).
Regarding claim 50, Alveskog teaches said guide member comprises an auxiliary tape slot for guiding a protective tape into said channel (20.2 in Fig. 8), said auxiliary tape slot extends through the material of the guide member into said channel at a position next to the said tape slot (as shown in Fig. 8).
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered and are addressed below.
Regarding claim 34, Applicant presents an argument contending that Alveskog does not teach first and second guide member parts which can be taken apart at an interface.
However, this argument is not persuasive because it fails to consider Alveskog’s explicit teachings where the capability to be taken apart is described as “The cover is easily disengaged for height adjustment with the aid of screw driver tracks 132, 134 in the flanges 128 and the rifles 130, respectively” per col. 8, lines 48-57
Regarding claim 34, Applicant presents an argument contending that Alveskog does not teach that the tape can be introduced into the channel in a direction that is perpendicular to the extension of the channel via the new recitation that the tape slot is “extending into the channel in a direction which is essentially perpendicular to the extension of the channel”.
However, this argument is not persuasive for the following reasons. First, this argument fails to consider the broadest reasonable interpretation of the feature that the tape slot is “extending into the channel in a direction essentially perpendicular to the extension of the channel” and that there are multiple directions that are essentially perpendicular to the longitudinal extension direction of the channel (e.g. there are horizontal, vertical, and diagonal directions, which are all perpendicular to the channel extension direction. Furthermore, this argument fails to consider Alveskog’s teachings of this feature, as cited in the rejection above. Lastly, the recitation that the tape slot is “extending into the channel in a direction which is essentially perpendicular to the extension of the channel” does not actually recite or limit tape introduction into the channel to only a direction that is perpendicular to the extension of the channel.
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 JIM R SMITH whose telephone number is (303)297-4318. The examiner can normally be reached Mon-Fri. 9-6 MST.
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/JRS/
Examiner
Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745