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 .
Response to Amendment and Arguments
Applicant’s amendment and corresponding arguments, filed 12/01/2025, have been reviewed and considered. Claims 11-13 and 15-20 have been amended and claim 21 has been added. Therefore, claims 11-21 are currently pending.
In response to the previous Office Action, the applicant amended independent claims 11 and 16, to include that the cutout plate comprises “at least one opening the shape of which corresponds to a shape of a first label” wherein “an inner rim of said at least one opening being adapted to contain laterally, by form-fit coupling, said first label during sewing”. The applicant then argues that CONLEY (US 5,261,340) does not disclose or suggests these features (note pages 11-12 of REMARKS). Applicant’s amendment and corresponding arguments are NOT persuasive in overcoming the 35 U.S.C. 102(a)(1) rejection by CONLEY of the previous Office Action because the applicant’s amendment and corresponding arguments are directed at functional language. Note that the first label (and second label) and the fabric are directed at the functional use of the frame (and embroidery machine). The first label (and second label) and the fabric are NOT part of the structure of the frame (or embroidery machine) itself. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, if an exact-fit label was inserted into the at least one opening of the cutout plate of CONLEY, the inner rim thereof would be considered fully capable of functioning to laterally contain the exact-fit label by a form-fit-coupling as claimed. Accordingly, the prior art rejection is deemed proper and still stands. Additionally, the amended recitation that the shape of the at least one opening “corresponds to a shape of a first label” remains rejected under 35 U.S.C. 112(b) because the applicant is relating the size and shape of a structural component to a functional component.
Furthermore, the applicant removed the dependency statement from claim 19 as requested. However, the applicant failed to add the structure of the embroidery machine from claim 16 into claim 19. Accordingly, the applicant has removed all antecedent basis from the claims as related to the terminology therewithin. Therefore, claims 19-21 have been rejected under 35 U.S.C. 112(b) within the rejection below.
This Office Action is a Final Rejection.
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 11-21 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.
Regarding claims 11 and 16, the applicant claims the cutout plate comprising at least one opening, “the shape of which corresponds to a shape of a first label”. This recitation renders each of the claims indefinite because the applicant is relating the shape of the opening, which is a structural component of the clamping frame, to the shape of a label, which is a functional component.
Regarding claim 19, the applicant has removed the dependency statement as suggested; however, the applicant has failed to include the structure of the embroidery machine from claim 16 into claim 19. Accordingly, claim 19 (and claims 20 and 21) recites the limitations "the clamping frame", “said frame”, “the resting surface”, “the first label”, “said at least one opening”, “the cutout plate”, “said at least first sewing line”, and “the sewing head” wherein there is insufficient antecedent basis for these limitations in the respective claim.
All remaining claims are also rejected under 35 U.S.C. 112(b) as being dependent from a rejected base claim.
Claim Rejections - 35 USC § 102
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) 11-14, 16-17 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CONLEY, Jr. et al. (US 5,261,340).
Regarding claims 11 and 16, CONLEY discloses an embroidery machine (10) comprising a sewing head (portion of 18 wherein needle holder 26 is located) wherein the embroidery machine comprises a frame (98) for clamping a fabric (22), wherein the frame comprises a template (100; 102, 108) for sewing labels (14), said template (100) being movable transversely (note the ability of holder support 34, which supports the template 100, to move in multiple directions) (particularly, note elements 42, 45, 46 and 48) with respect to a resting surface (24) of a fabric (22) (note that fabric 22 rests on cloth plate 94 which rests on sewing surface 24; accordingly, the cloth plate 94 can be considered the “resting surface of a fabric” or the sewing surface 24 can be the “resting surface of a fabric”) (for future reference, note that resting a fabric on a surface is considered purely functional) and comprising at least one cutout plate (108), said plate (108) comprising at least one opening (as defined by 108-3) the shape of which can functionally match a first label (14) to be applied by sewing (12) to the fabric (22), the inner rim (108-3) of said at least one opening being functionally capable to contain laterally said first label (14) during sewing (Figures 1-5).
Regarding claim 12, CONLEY discloses wherein said template (100; 102, 108) further comprises a border (102) adapted to surround at least partly said cutout plate (108), so as to leave an interspace between the inner rim of said border (102) and the outer rim of said cutout plate (108) (note that the inner rim of the border 102 and the outer rim of the cutout plate 108 are spaced from one another because the outer rim of the cutout plate 108 extends beyond the inner rim of the border 102), said inner rim of said border (102) forming a lateral containment wall that is functional capable for allowing a second label to be applied to the fabric (Figures 3-6).
Regarding claim 13, CONLEY discloses said cutout plate (8) and said border (102) can move with respect to each other transversely to the resting surface (24) of the fabric (note that the cutout plate can be manually moved with respect to the border 102 as shown in figure 7) (additionally, note the movement of 34 as discussed above).
Regarding claim 14, CONLEY discloses wherein said cutout plate (108) and said border (102) are associated with a support (52) which can be fixed to means for moving the fabric clamping frame (98) of an embroidery machine (10) (Figures 1-4).
Regarding claim 17, CONLEY discloses wherein said clamping frame (98) can move automatically with respect to the sewing head (portion of 118) according to a stored embroidery program (note master controller operated according to a program as discussed within col. 6, line 53 – col. 7, line 50), said embroidery program comprising instructions for the application of at least one first sewing line (12) the shape of which substantially matches the shape of said first label (14), said clamping frame (98) being adapted to retain said fabric (22) at right angles to the resting surface of the fabric (24) and simultaneously to move said fabric (22) with respect to said sewing head (portion of 118) along said resting surface (24) according to the instructions of said embroidery program, said clamping frame (98) being adapted for the lateral containment of the first label (14) within said at least one opening (as defined within 108-3) of the cutout plate (108) during the application of said at least one first sewing line (12) along the peripheral region of said first label (Figures 1-4).
Regarding claim 19, CONLEY discloses a method for sewing labels on a fabric by means of the embroidery machine (10) as discussed above, wherein the method comprises the steps of: lifting the clamping frame (98) in order to interpose a fabric (22) between said frame (98) and the resting surface (24); lowering the clamping frame (98) onto the resting surface (24) in order to retain the fabric (22) in a direction at right angles to the resting surface (24); inserting at least the first label (14) in said at least one opening (as defined by and within 108-3) of the cutout plate (108) of the clamping frame (98), so that a form-fit coupling occurs between the first label (14) and said opening; and applying said at least one first sewing line (12) along the peripheral region of said first label (14) by means of the actuation of at least one needle (28) of the sewing head (portion of 118) and of the simultaneous movement of said clamping frame (98) with respect to said sewing head (portion of 118) according to an embroidery program (Figures 1-4) (col. 6, line 53-col. 7, line 37).
Note that the applicant removed the dependency statement from claim 19, but failed to add the structure of the embroidery machine of claim 16 thereto. Accordingly, CONLEY does not have to disclose “said cutout plate comprising at least one opening the shape of which corresponds to a shape of a first label to be applied by sewing to the fabric, an inner rim of said at least one opening being adapted to contain laterally, by form-fit coupling, said first label during sewing”. For future reference, please note KR 2011-0007253 which discloses a cutout plate (20) with an opening (21) having features (21a, 21b) which allow an inner rim of said opening to contain laterally, by form-fit coupling, a label (1) during sewing (Fig. 5).
Allowable Subject Matter
Claims 15, 18, and 20-21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 NATHAN E DURHAM whose telephone number is (571)272-8642. The examiner can normally be reached 8:00 am - 4:00 pm, Monday - Friday.
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NED
/NATHAN E DURHAM/Primary Examiner, Art Unit 3732