DETAILED ACTION
The communication dated 3/16/2026 has been entered and fully considered.
Claims 1-57, 60-62 and 66 are cancelled. Claims 78-81 are new. Claims 58-59, 63-65, 67-81 are pending.
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 Amendments and Arguments
The Applicant’s amendments have overcome the claim objections and § 112(b) rejections set forth in the office action of 9/17/2025. Therefore, the claim objections and § 112(b) rejections are withdrawn.
Applicant’s arguments, see pgs. 22-25, filed 3/16/2026, with respect to the rejection(s) of claim(s) 58 under § 102(a)(1) have been fully considered and are persuasive. The Applicant argues that RODI does not teach the newly amended limitations, such as an elongated alignment member and an elongated central member with side flanges. The Examiner agrees that RODI does not teach the newly amended limitations, such as an elongated alignment member or an elongated central member with side flanges. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Martin (U.S. PGPUB 2011/0197722), hereinafter MARTIN.
Claim Objections
Claim 58 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in lines 14-15. Appropriate correction is required.
Claim 58 objected to because of the following informalities: “central member” should read “elongated central member” in line 20 twice. Appropriate correction is required.
Claim 58 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 22. Appropriate correction is required.
Claim 58 objected to because of the following informalities: “central member” should read “elongated central member” in lines 24-25. Appropriate correction is required.
Claim 58 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 25. Appropriate correction is required.
Claim 58 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 27. Appropriate correction is required.
Claim 58 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 34. Appropriate correction is required.
Claim 58 objected to because of the following informalities: “the engagement member and the engagement flange” should read “the engagement member or the engagement flange” in lines 39-40. Appropriate correction is required.
Claim 59 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in lines 1-5. Appropriate correction is required.
Claim 64 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 3. Appropriate correction is required.
Claim 64 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 5. Appropriate correction is required.
Claim 67 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 3. Appropriate correction is required.
Claim 67 objected to because of the following informalities: “central member” should read “elongated central member” in lines 4-5. Appropriate correction is required.
Claim 68 objected to because of the following informalities: “central member” should read “elongated central member” in line 1. Appropriate correction is required.
Claim 68 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 2. Appropriate correction is required.
Claim 68 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 4. Appropriate correction is required.
Claim 69 objected to because of the following informalities: “central member” should read “elongated central member” in line 1. Appropriate correction is required.
Claim 69 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 1. Appropriate correction is required.
Claim 70 objected to because of the following informalities: “central member” should read “elongated central member” in line 3. Appropriate correction is required.
Claim 70 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 3. Appropriate correction is required.
Claim 70 objected to because of the following informalities: “central member” should read “elongated central member” in line 4. Appropriate correction is required.
Claim 71 objected to because of the following informalities: “central member” should read “elongated central member” in line 2. Appropriate correction is required.
Claim 71 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 2. Appropriate correction is required.
Claim 72 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in lines 2-3. Appropriate correction is required.
Claim 72 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 4. Appropriate correction is required.
Claim 73 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 7. Appropriate correction is required.
Claim 73 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 9. Appropriate correction is required.
Claim 78 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in lines 4-5. Appropriate correction is required.
Claim 79 objected to because of the following informalities: “central member” should read “elongated central member” in line 2. Appropriate correction is required.
Claim 79 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 2. Appropriate correction is required.
Claim 80 objected to because of the following informalities: “central member” should read “elongated central member” in line 2. Appropriate correction is required.
Claim 80 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 2. Appropriate correction is required.
Claim 80 objected to because of the following informalities: “alignment member” should read “elongated alignment member” in line 3. 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:
(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 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: “alignment member” in claims 58-61 and 65-72; “body member” in claim 58 and 71-72; “engagement member” in claims 58, 62-63, 67 and 72-74; “central member” in claims 61 and 67-71.
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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 58-59, 63-65, 67, 73-78 and 81 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rodi (U.S. 9,303,666), hereinafter RODI, in view of Martin (U.S. PGPUB 2011/0197722), hereinafter MARTIN.
Regarding claim 58, RODI teaches: A tool for engaging a tool holder (RODI teaches a tool [Abstract]), the tool holder defining an abutment face, and having an elongated receiving groove of T-shape transverse cross-section formed into the abutment face of the tool holder and extending into the tool holder from a proximal end of the tool holder and terminating in the tool holder in a distal end defining a distal arcuate limit stop, and a tension bolt having an inclined work face and being located in the tool holder to one side of the receiving groove and spaced apart proximally from the distal arcuate limit stop thereof and being urgeable into the tool holder for securing a tool to the tool holder (The Examiner is interpreting all the language before “the tool comprising” to be part of the preamble of the claim.), the tool comprising a body member (RODI teaches a body member (8) [Figs. 8, 10]) defining a major working face of the tool (RODI shows a major working face of the tool (8), which Examiner is interpreting as the bottom surface of tool (8, furthest away from the holder (4)) [Fig. 10].) and a major engagement face of the tool (RODI shows a major engagement face of the tool (8), which the Examiner is interpreting the top surface of the tool (8, closest surface to the holder (4)) [Fig. 10].), the working face and the engagement face of the tool facing in opposite directions away from each other (RODI shows the working face and the engagement face are in opposite directions of each other [Fig. 8]), the engagement face being adapted to abut the abutment face of the tool holder (RODI shows the engagement face being adapted to abut an abutment face of the tool holder (4) [Fig. 10].), an . . . alignment member of T-shape cross-section extending from a proximal end to a distal end mounted on the engagement face of the tool and defining an alignment plane extending perpendicularly from the engagement face of the tool (RODI teaches the alignment means (40) is an elongated member defining the alignment plane (which the Examiner is interpreting the line in the middle of the member (40)) and extending from and along the engagement face of the tool [Figs. 8-10]. RODI shows the alignment member (40) extends from a proximal end to a distal end [Figs. 8-10]. RODI teaches the T-slot (52) is designed in such a way that the head part (42) of the clamping bolt (38) can slide along the T-slot (52) all the way to the end stop of the T-slot in a guided manner [Figs. 8-10; Col. 5, lines 55-59].), the alignment member comprising an . . . central member extending from a proximal end to a distal end and defining the alignment plane mounted on and extended longitudinally along the abutment face of the tool (RODI teaches the T-slot (52) is designed in such a way that the head part (42) of the clamping bolt (38) can slide along the T-slot (52) all the way to the end stop of the T-slot in a guided manner [Figs. 8-10; Col. 5, lines 55-59].), and a pair of side flanges extending from a proximal end to a distal end longitudinally along the central member and sidewardly outwardly from the central member on respective opposite sides thereof (RODI shows the distal end of the side flanges of the alignment member terminate in the engagement flange of the engagement member (42) [Figs. 8-10; Col. 5, lines 11-12].), the side flanges being spaced apart from the engagement face of the tool (RODI teaches the engagement flange (42) of the engagement member (38) slides into the groove (52) [Col. 5, lines 55-60].), the alignment member being adapted to slideably engage the receiving groove in the tool holder with the alignment plane aligned with the receiving groove for aligning the tool with the tool holder in a direction transversely of the receiving groove (RODI teaches an alignment means (40) mounted on the engagement face of the tool (8) and adapted to engage the receiving groove in the tool holder (4) [Fig. 10]. RODI teaches the alignment means can slide along the slot [Col. 5, lines 55-59].), the distal end of the central member of the alignment member forming an engagement member extending from the engagement face of the tool (RODI teaches the alignment member is part of the engagement member [Col. 5, lines 10-12; Figs. 8-10]. RODI teaches the distal end of the alignment member forms the engagement member [Figs. 8-10; Col. 5, lines 10-12].), and the distal ends of the side flanges of the alignment member terminating in an engagement flange extending outwardly from the engagement member and spaced apart from the engagement face of the tool (RODI teaches an engagement member (38) mounted on and extending from the engagement face of the tool and terminating in an engagement flange extending outwardly from the engagement face of the tool and terminating in an engagement flange extending outwardly therefrom and spaced apart from the engagement face of the tool [Fig. 8]. RODI teaches the engagement member (38) is located adjacent the distal end of the alignment member (40) [Fig. 8; Col. 5, lines 10-12]. RODI shows the end terminates in the engagement member [Figs. 8-9; Col. 5, lines 10-12].), the engagement flange defining an engagement surface facing the engagement face of the tool and diverging therefrom (RODI shows the engagement flange defining an engagement surface facing the engagement face of the tool and diverging therefrom [Figs. 8-10]), the engagement surface of the engagement flange being adapted to engage the work face of the tension bolt (RODI teaches the engagement surface of the engagement flange being adapted to engage the work face of the tension bolt (56) [Figs. 8-10; Col. 6, lines 4-5]), the engagement member or the engagement flange being adapted to engage the distal arcuate limit stop of the receiving groove (RODI teaches the engagement member and the engagement flange thereof being adapted to engage in a groove that has a limit stop [Fig. 5; Col. 5, lines 55-59].), so that with the alignment member, the engagement member and the engagement flange thereof in the receiving groove and the engagement member adjacent the distal end of the receiving groove, on the tension bolt being urged into the tool holder with the work face thereof in engagement with the engagement surface of the engagement flange the tool is secured in the tool holder with the engagement face of the tool in tight abutting engagement with the abutment face of the tool holder and the one of the engagement member and the engagement flange urged into tight engagement with the distal arcuate limit stop of the receiving groove with the tool aligned in the tool holder (RODI teaches with the alignment means, the engagement member, engagement flange and the tension bolt, all are tightly abutted against each other and are secured in the tool holder [Fig. 9; Col. 6, lines 58-67 – Col. 7, lines 1-2; Col. 7, lines 20-21]. Furthermore, it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 ( Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. in re Best, 195 USPQ 430, 433 (CCPA 1977)).
RODI is silent as to an elongated alignment member, an elongated central member and side flanges that extend the central member. In the same field of endeavor, tool holders, MARTIN teaches: an elongated alignment member (MARTIN teaches an elongated alignment member (301) [Fig. 1].), the alignment member comprising an elongated central member extending from a proximal end to a distal end and defining the alignment plane mounted on and extended longitudinally along the abutment face of the tool (MARTIN teaches the elongated alignment comprises an elongated central member extending from a proximal end to a distal end and defining the alignment plane mounted on and extend longitudinally along the abutment face of the tool [Fig. 1].), and a pair of side flanges extending from a proximal end to a distal end longitudinally along the central member and sidewardly outwardly from the central member on respective opposite sides thereof (MARTIN shows a pair of side flanges extending from a proximal end to a distal end longitudinally along the central member and sidewardly outwardly from the central member on respective opposite sides thereof [Figs. 1-3, 8].), the alignment member being adapted to slideably engage the receiving groove in the tool holder with the alignment plane aligned with the receiving groove for aligning the tool with the tool holder in a direction transversely of the receiving groove (MARTIN teaches the alignment member (301/300) being adapted to slideably engage the receiving groove [Figs. 1-3, 8].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify RODI, by having an elongated alignment member with side flanges and an elongated central member, as suggested by MARTIN, in order to have a tool holder in an efficient and inexpensive manner [0013] and for application of a tool to a workpiece [0010].
Regarding claim 59, RODI teaches: in which the alignment member is located on the engagement face of the tool relative to the working face thereof, so that when the tool is secured in the tool holder, the working face of the tool is aligned in position relative to the tool holder (RODI teaches the alignment member (40) is located on the engagement face of the tool relative to the working face [Figs. 8-10]. RODI teaches when the tool is secured, the working face is aligned in position relative to the tool holder [Figs. 1-2; Col. 7, lines 14-20].).
Regarding claim 63, RODI teaches: in which the engagement member or the engagement flange defines an arcuate abutment surface for engaging the distal arcuate limit stop of the receiving groove of the tool holder (RODI teaches the engagement member and flange define an abutment surface for engaging the distal arcuate limit stop (56) [Fig. 9; Col. 6, lines 21-24; Col. 5, lines 55-59]. RODI teaches the abutment surface would have a radius as it’s a curved due to its circular shape and the center of the radius would coincide with a main axis extending perpendicularly from the engagement face of the tool (8) and lying in the alignment plane [Fig. 9].).
Regarding claim 64, RODI teaches: in which the engagement surface of the engagement flange is located proximally of a transverse plane containing the main axis and extending transversely of the alignment plane defined by the alignment member (RODI shows the engagement surface of the engagement flange is located proximally of a transverse plane containing the main axis and extending transversely of the alignment plane [Fig. 8]), and the engagement surface of the engagement flange is located to one side of the alignment plane defined by the alignment member and spaced apart therefrom (RODI teaches the engagement surface of the engagement flange is located to one side of the alignment plane and spaced apart from the alignment plane [Fig. 8]).
Regarding claim 65, RODI teaches: in which the engagement surface of the engagement flange is located to lie on a straight line joining the main axis with a central geometric axis defined by the tension bolt in the tool holder when the tool is secured in the tool holder (RODI teaches the engagement surface of the engagement flange is located to lie on a straight line joining the main axis [as can be shown in FIG. 9] and with a central geometric axis defined by the bolt [Fig. 9]. RODI teaches the engagement flange (42) extends partly around the engagement member (38) [Fig. 9; Col. 5, lines 11-12].).
Regarding claim 67, RODI teaches: in which the distal end of one of the side flanges of the alignment member adjacent the engagement flange is relieved inwardly towards the central member to accommodate engagement of the tension bolt with the engagement surface of the engagement flange (RODI shows the distal end of the side flange is relieved inwardly of the alignment member on one side thereof to accommodate engagement of the bolt (56) [Figs. 8-10]. RODI shows the engagement flange defines an outer curved edge adjacent the engagement surface [Figs. 6-10].).
Regarding claim 73, RODI teaches: in which the alignment means comprises a plurality of alignment pins extending from the abutment face of the tool and spaced apart along and defining the alignment plane (RODI teaches a plurality of alignment pins (46, 50) that extend from the tool face and are spaced apart the alignment plane [Fig. 5; Col. 5,lines 20-21; Col. 5, lines 42-46].), the alignment pins being adapted to engage the receiving groove of the tool holder (RODI teaches an alignment pin is adapted to engage the groove (52) of the tool [Fig. 5; Col. 7, lines 26-29].), and preferably, the alignment means is adapted to cooperate with the receiving groove of the tool holder during entry of the tool in the tool holder for guiding the tool into the tool holder with the alignment means aligned with the receiving groove (RODI teaches alignment means are adapted to cooperate with the receiving groove (52) [Col. 7, lines 11-29].), and advantageously, the alignment means is adapted to cooperate with the receiving groove of the tool holder for aligning the tool with the tool holder from the commencement of entry of the alignment means into the tool holder, and preferably, the alignment means is adapted to cooperate with the receiving groove of the tool holder for aligning the tool with the tool holder from the commencement of engagement of the engagement member with the receiving groove of the tool holder (RODI teaches just before reaching a depth stop (68), the small groove (48) in the tool cooperates with the register pin (50) to correct alignment of the tool jointly with the positioning pin (46) [Col. 7, lines 11-29].).
RODI discloses the claimed invention except for the duplication. It would have been obvious to one having ordinary skill in the art at the time the invention was made to duplicate a pin in the groove, since it have been held that a mere duplication of working parts of a device involves only routine skill in the art. One would have been motivated to duplicate a pin for the purpose of correctly aligning the tool [Col. 7, line 19]. See MPEP 2144.04(VI)(C). See also In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (The court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
Regarding claim 74, RODI teaches: in which the main axis defined by the engagement member coincides with the centre of a working area of the working face of the tool (RODI shows the main axis defined by the engagement member (38) coincides with the center of a working area of the working face of the tool [Figs. 8-9, 11-14].).
Regarding claim 75, RODI teaches: in which the working area of the working face of the tool comprises or is adapted to receive formations or components for forming, shaping or otherwise working a sheet of material to be formed, shaped or worked by the tool (RODI teaches the working area of the working face of the tool is for working on sheet material to be worked by the tool [Col. 4, lines 8-19]. RODI teaches the working on sheet webs can be in the production of blister packs [Col 4, lines 16-19].).
Regarding claim 76, RODI teaches: A pair of tools, each tool comprising a tool as claimed in Claim 58, the tools being adapted to cooperate with each other in the forming, shaping or working material by the working faces of the respective tools (RODI teaches a pair of tools (6, 8) as the tool in claim 58 that are adapted to cooperate with each other in forming, shaping, or working material by the working faces of the respective tools [Figs. 1-2; Col. 4, lines 8-19].).
Regarding claim 77, RODI teaches: A pair of tools as claimed in Claim 76 in which the tools are adapted to engage respective spaced apart tool holders of tool holders in a blister packing machine (RODI teaches the tools are adapted to engage spaced apart tool holders with tools configured to accommodate sheet webs to be worked by the tool [Col. 4, lines 8-19]. RODI teaches the area can be a production of blister packs [Col. 4, lines 15-17]. RODI teaches the tools can be used in a production of blister packing and would therefore meet the claimed limitation [Col. 4, lines 15-17]. Furthermore, The Examiner is interpreting the limitations “for packing pharmaceutical solid dose healthcare products” as intended use of the claimed apparatus. It is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim; therefore, RODI teaches the claimed structure and is capable of performing the claimed use. See In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963) (The manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself, In re Casey 152 USPQ 235). RODI teaches the tool is secured to the tool holder (4) [Col. 7, lines 5, lines 50-55]).
Regarding claim 78, RODI teaches: in which the arcuate abutment surface defined by the one of the engagement member and the engagement flange thereof defines a centre of radius, the centre of radius coinciding with a main axis extending perpendicularly from the engagement face of the tool and lying in the alignment plane defined by the alignment member (RODI teaches the abutment surface would have a radius as it’s a curved due to its circular shape and the center of the radius would coincide with a main axis extending perpendicularly from the engagement face of the tool (8) and lying in the alignment plane [Fig. 9].).
Regarding claim 81, RODI teaches: in which the tool is adapted for forming, shaping or working a film material in the blister packing of products (RODI teaches the tools are adapted to engage spaced apart tool holders with tools configured to accommodate sheet webs to be worked by the tool [Col. 4, lines 8-19]. RODI teaches the area can be a production of blister packs [Col. 4, lines 15-17]. RODI teaches the tools can be used in a production of blister packing and would therefore meet the claimed limitation [Col. 4, lines 15-17]. Furthermore, The Examiner is interpreting the limitations “for packing pharmaceutical solid dose healthcare products” as intended use of the claimed apparatus. It is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim; therefore, RODI teaches the claimed structure and is capable of performing the claimed use. See In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963) (The manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself, In re Casey 152 USPQ 235). RODI teaches the tool is secured to the tool holder (4) [Col. 7, lines 5, lines 50-55].).
Claim(s) 68-72 and 79-80 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rodi (U.S. 9,303,666), hereinafter RODI, and Martin (U.S. PGPUB 2011/0197722), hereinafter MARTIN, as applied to claim 68 above, and further in view of Ruf et al. (U.S. PGPUB 2011/0056628), hereinafter RUF, as evidenced by Matthews (U.S. PGPUB 2005/0145587), hereinafter MATTHEWS.
Regarding claim 68, RODI teaches all of the claimed limitations as stated above, but is silent as to: in which the central member of the alignment member defines a locating portion adjacent the proximal end thereof, the locating portion being adapted to engage a locating portion of an entry slot of the receiving groove of the tool holder for aligning the alignment member with the receiving groove of the tool holder. In the same field of endeavor, tools, RUF teaches a central member of the alignment member [Fig. 4] that defines a locating portion (32) adapted to engage a locating portion of the entry slot of the receiving groove of the tool holder for aligning [0032]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify RODI, by having the location portion, as suggested by RUF, in order to have a highly precise support with no need for any readjustments [0018].
Regarding claim 69, RODI teaches all of the claimed limitations as stated above, but is silent as to: the locating portion of the central member of the alignment member is adapted to engage the locating portion of the entry slot of the receiving groove of the tool holder with a snug sliding fit. In the same field of endeavor, tools, RUF teaches: in which the locating portion of the central member of the alignment member is adapted to engage the locating portion of the entry slot of the receiving groove of the tool holder with a snug sliding fit (RUF teaches the locating portion would be guided into the groove [Figs. 1-5; 0032].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify RODI, by having the location portion, as suggested by RUF, in order to have a highly precise support with no need for any readjustments [0018].
Regarding claim 70, RUF further teaches: in which the locating portion is of width in a transverse direction relative to the alignment plane greater than the transverse width of the central member of the alignment member from the distal end of the locating portion to the distal end of the central member (RUF shows the width of the guide elements (36) are wider than the central alignment member [Figs. 4-5]. RUF shows the locating portion extends from the central portion of the alignment member [Figs. 1, 4-5]. RUF shows the locating portion of the central member extends from the engagement face of the tool to the flanges [Figs. 1, 4-5]. RUF shows the locating portion of the central member of the alignment member is symmetrical about the alignment plane [Figs. 4-5].).
Regarding claim 71, RUF further teaches: in which the locating portion of the central member of the alignment member defines opposite locating faces thereof slideably and snugly engageable with corresponding faces of the entry slot of the receiving groove of the tool holder adjacent the proximal end thereof (RUF teaches the locating portion of the central member defines opposite locating faces engageable with corresponding faces of the entry slot adjacent the proximal end and extends longitudinally to a distal end [Fig. 1].).
Regarding claim 72, RODI teach all of the claimed limitations as stated above, including, advantageously, the alignment member, including the engagement member and the engagement flange are of metal material (RODI teaches bolts as the engagement member and flange, which is known in the art to be made of metal, as evidenced by MATTHEWS [0039]), but is silent as to: in which the body member of the tool extends from a proximal end to a distal end, and the proximal end of the alignment member substantially coincides with the proximal end of the body member of the tool, and the distal end of the alignment member is located intermediate the proximal and distal ends of the body member of the tool.
In the same field of endeavor, tools, RUF teaches: in which the body member of the tool extends from a proximal end to a distal end (RUF teaches the locating portion of the central member defines opposite locating faces engageable with corresponding faces of the entry slot adjacent the proximal end and extends longitudinally to a distal end [Fig. 1].), and the proximal end of the alignment member substantially coincides with the proximal end of the body member of the tool (RUF teaches the proximal end of the alignment member (32) substantially coincides with the proximal end of the body member of the tool (4) [Fig. 4; 0032].), and the distal end of the alignment member is located intermediate the proximal and distal ends of the body member of the tool (RUF teaches the distal end of the alignment member is located intermediate between the proximal and distal ends of the body member tool [Figs. 1-4].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify RODI, by having the end of the alignment member coincides with the proximal end of the body member, as suggested by RUF, in order to have a highly precise support with no need for any readjustments [0018].
Regarding claim 79, RUF further teaches: in which the locating portion extends longitudinally along the central member of the alignment member a distance of at least 5 mm (RUF further teaches the locating portion extends at a distance of 10 mm [Col. 7, lines 66-67 – Col. 8, lines 1-3].).
Regarding claim 80, RUF further teaches: in which the locating portion of the central member of the alignment member extends from the engagement face of the tool to the respective side flanges of the alignment member (RUF further teaches the locating portion extends longitudinally along the central member [Figs. 1-5].).
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.
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/C.B./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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