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 Claims 1-9, 16-17, and 19-23 in the reply filed on 30 April 2025 is acknowledged.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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:
“coating device” in Claim 1 (generic placeholder: “device,” functional language: “coating”). The term is not clearly associated with any structure.
“lacquer application device configured to apply a lacquer …” in Claim 1. (generic placeholder: “device,” functional language: “lacquer application . . . configured to apply lacquer . . .”). The term is associated with a nozzle, an inkjet print head or a roller [0010].
“structuring device configured to adjust a gloss value or a haptic property . . .” in Claim 1 ((generic placeholder: “device,” functional language: “structuring . . . configured to adjust a gloss . . .”) associated with an infrared lamp, a microwave source, an LED source, or an excimer lamp [0011].
“printing device configured to print on . . .” in Claim 2 (generic placeholder: “device,” functional language: “printing . . . configured to print on . . .”), associated with a print head [0009].
“conveying device configured to move the workpiece . . .” in Claim 5 (generic placeholder: “device,” functional language: “conveying … configured to move the workpiece . . .g”), associated with a belt or chain [0013].
“machining unit configured to trim the surface of the workpiece . . .” in Claim 6 (generic placeholder: “device,” functional language: “machining … configured to trim the surface of the workpiece . . .”), associated with a machining aggregate , which is itself a combination of generic placeholder, “aggregate” (synonymous with “unit”) and functional language, “machining”. It is not associated with sufficient structure.
“trimming aggregate” in Claim 7 (generic term: “aggregate,” functional language: “trimming) is not associated with sufficient structure.
“cleaning device configured to clean the coating material” in Claim 8 (generic placeholder: “device,” functional language: “cleaning … configured to clean the coating material”), associated with a cloth.
The term “plasma treatment device” in Claim 9 is considered to fall outside of 112(f), since it recites plasma and compressed air.
The term “finishing device” in Claim 7 falls outside of 112(f), because it defines sufficient structure (Claim 7: scraper and a structure which rotates. NOTE: the recited “trimming aggregate” alternative for a “finishing device” falls under 35 USC 112(f) and is not associated with sufficient structure.
The terms “finishing device” in Claim 7 and “plasma treatment device” in Claim 9 are considered to fall outside of 112(f), to the extent that they define sufficient structure (Claim 7: scraper and machining aggregate, which includes a structure which rotates; Claim 9: plasma and compressed air). NOTE: the recited “trimming aggregate” alternative for a “finishing device” falls under 35 USC 112(f) and is not associated with sufficient structure.
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 1-9, 16-17, and 19-23 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.
In Claim 1, the limitation “coating device” 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. The specification does not clearly associate the term with any structure that performs the function of coating. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Examiner considers the term “coating device” to be any structure capable of applying a material to a surface, including, but not limited to a nozzle, a roller, a brush, a printer, a pencil, a pen, a container, a trough, a laminating machine a machine capable of applying tape, a hopper. Additionally, prior art that teaches a similar term is considered to teach or fairly suggest it.
In Claim 6, the limitation “machining unit configured to trim the surface of the workpiece . . .” 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. The disclosure is devoid of any structure that performs the recited function of machining. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Examiner considers the limitation to include any structure capable of machining, including, but not limited to scissors, blade, saw, jointer, router, clippers, a straight edge, any sharp edge or point, a sander, any abrasive material capable of trimming, a grinder, a drill, grinder. Additionally, prior art that teaches a similar term is considered to teach or fairly suggest it.
In Claim 7, the limitation “trimming aggregate” 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. The disclosure is devoid of any structure that performs the recited function of trimming. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Examiner considers the limitation to include any structure capable of trimming, including, but not limited to scissors, blade, saw, jointer, router, clippers, a straight edge, any sharp edge or point, a sander, any abrasive material capable of trimming, a grinder, a drill. In addition, prior art that uses a similar term is considered to teach or suggest it. In addition, since the claimed “finishing device” includes the indefinite alternative of “trimming aggregate,” the term “finishing device” is also indefinite.
Applicant may:
(a) Amend the claims 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 2-9, 16-17, and 19-23 are rejected as depending from rejected claims.
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.
Claim(s) 1-3, 5-7,16-17, 19, and 22-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gauss et al. (US 2008/0152819).
Regarding Claim 1, Gauss et al. (US’819) teach an apparatus for treating a workpiece, comprising: a coating device (any of 10, 40, or 70) (e.g. nozzle/micro-nozzle) configured to apply (i.e. capable of applying) a strip-shaped coating material to a narrow side of a plate-shaped workpiece [0008-0009,0012,0021]; a lacquer application device configured to apply a lacquer to the coating material (any 10, 40, or 70 other than whichever one is considered a “coating device”) [0028,0034]; and a structuring device (e.g. any of 50 or one of two 60’s, where 10 is considered a “lacquer application device”; a first or second 60 where 40 is considered a “lacquer application device” or a second 60 where 70 is considered a “lacquer application device”) configured to adjust a gloss value or a haptic property of the surface provided with the lacquer (Fig. 1; [0028]).
Regarding Claim 2, US’819 teaches a printing device 40 capable of printing on a surface of the coating material [0003,0019-0020,0028,0034].
Regarding Claim 3, US’819 teaches lacquer application device can comprise a nozzle or an inkjet printer (Abstract; [0029]), each capable of applying lacquer.
Regarding Claims 5 and 17, US’819 teaches that the apparatus further comprises a conveying device (e.g. belt) [0027].
Regarding Claim 6, US’819 teaches a machining unit (milling unit) [0028].
Regarding Claim 7, US’819 teaches a finishing device, including a trimming aggregate capable of cutting [0021-0028].
Regarding Claim 16, the printing device (e.g. ink jet printer) [0028] necessarily has at least one print head.
Regarding Claim 19, the structuring device comprises an IR lamp [0020].
Regarding Claims 22-23, near IR (NIR) 50 is downstream and adjacent to 10, both UV curing 60 are downstream from both 10 and 40, one 60 is downstream and adjacent to 40 and the other 60 is downstream and adjacent to 70 (Fig. 1; refer to the rejection of Claim 1 above for other citations and further explanation).
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.
Claim(s) 4 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0152819) in view of Hoshino (US 2006/0028523).
Regarding Claim 4, US’819 teaches an ultraviolet (UV) light as the “structuring device” [0020]. US’819 fails to teach specifically an excimer lamp. Excimer lamps were widely-known and conventional sources of UV light for curing coatings at the time of invention. For example, Hoshino (US’523) teaches an excimer lamp for curing a coating on a substrate [0077]. It would have been obvious to a person of ordinary skill in the art to modify the apparatus of US’819 with an excimer lamp, because an excimer lamp was a well-known and conventional source of UV light for curing a coating and also because US’523 suggests using an excimer lamp as a source of light for curing a coating on a substrate.
Regarding Claim 21, US’819 teaches a structuring device which is a source of electromagnetic radiation (e.g. IR, UV) [0020,0028,0033]. US’819 fails to teach an LED. US’523 suggests an LED as a source of UV light for curing a coating [0077]. It would have been obvious at the time of invention to modify the apparatus of US’819 with an LED, because US’523 suggests an LED source of UV light.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0152819) in view of Schiele et al. (US 2015/0165468).
Regarding Claim 8, US’819 fails to teach a cleaning device, associated with a cloth. Schiele et al. (US’468) is in an analogous field of applying coating to a substrate with a coating apparatus (Abstract) and is pertinent to Applicant’s problem of applying a coating, free of contaminants. US’468 suggests a cloth for cleaning contaminants from a workpiece by relative movement between the cloth and the workpiece [0030,0051,0056] to provide a workpiece of consistent quality for coating [0056]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’819 with a cleaning device, because US’468 suggests a cloth for cleaning contaminants from a workpiece to be presented with consistent quality for coating.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0152819) in view of Gauss et al. (US 2008/0239042).
Regarding Claim 9, US’819 to Gauss fails to teach a plasma treatment device. Gauss et al. (US’042) is analogous art in the field of coating machines, which suggests, in addition to a coating device (e.g. Ink jet printer) [0021], a plasma treatment device 34 capable of generating a plasma and blowing the plasma onto a coating material applied to the workpiece with compressed air to improve adhesion of coating layers [0035,0037-0038,0040]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’819 with a plasma treatment device, because US’042 suggests a plasma treatment device capable of generating and blowing a plasma onto a coating material applied to a workpiece with compressed air to improve adhesion of coating layers.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0152819) in view of Killinger et al. (DE 102015206010 A).
Regarding Claim 20, US’819 teaches a structuring device which is a source of electromagnetic radiation (e.g. IR, UV) [0020,0028,0033]. US’819 fails to teach a source of electromagnetic radiation in the microwave range. Killinger et al. (DE’010) is analogous art in the field of coating apparatuses [0001], and suggests a structuring device which is a microwave source for activating an adhesive of a coating material [0037-0038]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’819 with a structuring device, which is a source of microwave energy, because DE’010 suggests using a structuring device, which is a source of microwave energy for activating an adhesive of a coating material.
Response to Arguments
Applicant’s submission of Fig. 1 overcomes the previous objections to the Abstract and to the Specification. The objections to the Abstract and specification have been withdrawn.
Applicant's arguments filed 1 October 2025 with respect to the rejections of Claims 1-9, 16-17, and 19-23 under 35 USC 112, 102, and 103 have been fully considered but they are not persuasive.
In response to Applicant’s argument that the “coating device” “can comprise a device that applies coating material ‘by pressing the coating material against a narrow side of the workpiece’” (Remarks, p. 6), the argument fails to address the issue under 35 USC 112(b) as it relates to 35 US 112(f), since 35 USC 112(f), requires a clear association of means-plus-function language (including generic placeholder-plus-function) with a structure. The quoted description describes the term “coating device,” interpreted under 35 USC 112(f) in functional language as does not resolve the question of what structure(s) should be associated with the term “coating device.” Similarly, the terms “machining unit” and “trimming device” are not clearly associated with structure. Applicant’s association of the term “trimming aggregate” with a scraper appears inaccurate; instead, the paragraph associates the term “finishing device” with a scraper OR trimming device, which is rather an alternative to a scraper. Paragraph [0033] reads, “The finishing device 40 may comprise a trimming aggregate and/or a scraper that is/are configured to cut off protruding coating material.”
In response to Applicant’s argument that Gauss does not apply a strip-shaped coating material (Remarks, p. 6), the argument is not persuasive, since the coating can be applied to a strip-shaped work-piece, and the apparatus is capable of performing the intended use [0021].
In response to Applicant’s argument that Gauss is not configured to apply a strip-shaped coating material to a narrow side of a plate-shaped workpiece (Remarks, p. 6), Applicant has provided no evidence or reasons to support the assertion. On the other hand, an ink-jet printing means is capable of providing strip-shaped coatings, including to a narrow side of a plate-shaped workpiece (Claim 28), which is an aspect of an intended use of which the claimed apparatus is capable. The intended use is not given patentable weight for the claimed apparatus of which a workpiece is not a structural feature.
Conclusion
No claim is allowed.
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712