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
Applicant amendment filed 03/11/2026 has been entered and is currently under consideration. Claims 1 and 3-8 remain pending in the application.
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eichler et al. (US3645299 of record) hereinafter Eichler.
Regarding claim 1, Eichler teaches:
A stretching device for stretching a plastic film in its the transport direction (Fig 4-5: stretching stand 32; col 1, ln 12-15), comprising a first roller (SD) over which the plastic film can be guided (Fig 4-5: stretching roll 40) and which can be driven with a first drive and which can be rotated at a first circumferential speed (col 2, ln 71-col 3, ln 1; col 5, ln 2-3), and comprising a second roller (FD) over which the plastic film can be guided (Fig 4-5: stretching roll 40’) and which can be driven with a second drive and which can be rotated at the second circumferential speed (col 2, ln 71-col 3, ln 1; col 5, ln 2-3), wherein the second circumferential speed is greater than the first circumferential speed (col 5, ln 2-3),
wherein the second roller is arranged downstream of the first roller in the transport path of the plastic film, so that the plastic film can be stretched in the free region between the first and the second roller (Fig 4-5; col 2, ln 73-74), characterized in that
at least one first electrode (Fig 4-5: needle electrode 41”), to which a first electrical potential can be applied and which is arranged in the angular region of the first roller on which the plastic film rests, and/or upstream of said angular region (Fig 4-5; col 5, ln 27-30),
that a second electrical potential can be applied to the first roller (col 5, ln 27-30),
at least one second electrode (Fig 4-5: needle electrode 41’), to which a third electrical potential can be applied and which is arranged in the angular region of the second roller on which the plastic film rests and that a fourth electrical potential can be applied to the second roller (Fig 4-5; col 5, ln 27-30),
wherein the first and second rollers rotate in opposite direction so that the rear side of the film can be applied with the third electrical potential.
Eichler does not explicitly recite wherein the polarity of the third electrical potential is opposite to that of the first electrical potential.
However, "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See MPEP 2114. Since the prior art apparatus teaches the claimed structure of an electrode capable at operating at a range of voltages, one of ordinary skill in the art would reasonably expect the prior art apparatus to be capable of performing the claimed functions as well. Furthermore, Eichler teaches voltages at which to operate the electrodes (col 5, ln 27-30) which inherently possess an opposite/reverse potential that exists.
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.
Claim(s) 3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eichler.
Regarding claim 3, Eichler teaches the apparatus of claim 1.
In the embodiment cited above, Eichler does not teach at least one third electrode is provided to which a fifth electrical potential can be applied and which is arranged in the angular region of the second roller, on which the plastic film rests, and downstream of the second electrode, wherein the fifth electrical potential has a reverse polarity compared to the third electrical potential.
However, in alternative embodiments, Eichler teaches that each roller may be allocated one or more electrodes to which an electrical potential can be applied which is arranged in an angular region of the second roller (col 5, ln 18-30). Eichler further teaches placing the electrodes consecutively in an angular region of a roller, on which the plastic film rests (Fig 4-5) for the motivation of overlapping the electrostatic fields to ensure coverage of the film on the roller (col 5, ln 24-27).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the apparatus as taught by Eichler to include multiple electrodes for the second roller, and to arrange the electrodes consecutively in the angular region of the second roller in order to overlap the electrostatic fields to ensure coverage of the film on the roller.
Eichler does not explicitly recite wherein the fifth electrical potential has a reverse polarity compared to the third electric potential.
However, "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See MPEP 2114. Since the prior art apparatus teaches the claimed structure of an electrode capable at operating at a range of voltages, one of ordinary skill in the art would reasonably expect the prior art apparatus to be capable of performing the claimed functions as well. Furthermore, Eichler teaches voltages at which to operate the electrodes (col 5, ln 27-30) which inherently possess an opposite/reverse potential that exists.
Regarding claim 5, Eichler teaches the apparatus of claim 1.
Eichler further teaches a distance of at least one of the first and second electrodes to the film (Fig 5).
Eichler does not teach the distance of at least one of the first and second electrodes to the film is variable.
It has been broadly held that making a prior art device adjustable is obvious. See MPEP 2144.04(V)(D).
Eichler further teaches that the stretching process alters the thickness of the foil (col 4, ln 56-58). Therefore there is a motivation to adjust the distance of at least one of the first and second electrodes to the film to accommodate this change in thickness.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the at least one of the first and second electrodes to have the distance between the at least one electrode and the film be adjustable in order to accommodate a change in thickness of the foil.
Regarding claim 6, Eichler teaches the apparatus of claim 1.
Eichler further teaches a width of at least one of the first and second electrodes (col 5, ln 14-16).
Eichler does no teach the width of at least one of the first and second electrodes is variable.
It has been broadly held that making a prior art device adjustable is obvious. See MPEP 2144.04(V)(D).
Eichler further teaches that the electrodes extends over the entire width of the stretching roll (col 5, ln 14-16). Therefore there is a motivation to adjust the width of the at least one of the first and second electrodes to accommodate stretching rolls having different widths.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the at least one of the first and second electrodes to have the width of the at least one electrode be adjustable in order to accommodate stretching rolls having different widths.
Regarding claim 7, Eichler teaches the apparatus of claim 1.
Eichler further teaches an angular position of at least one of the first and second electrodes, which are arranged in an angular region of a roller on which the film rests (Fig 5).
Eichler does no teach the angular position of at least one of the at least one of the first and second electrodes, which are arranged in an angular region of a roller on which the film rests, is variable.
It has been broadly held that making a prior art device adjustable is obvious. See MPEP 2144.04(V)(D).
Eichler further teaches that it is desirable to provide different amounts of electrode angular coverage to the stretching roll and foil (col 5, ln 24-27). Therefore there is a motivation to adjust the angular position of at least one of the first and second electrodes to provide different angular coverage to the stretching roll and foil.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified at least one of the first and second electrodes to have the angular position of the electrodes be adjustable in order to provide different angular coverage to the stretching roll and foil.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eichler as applied to claim 1 above, and further in view of Johnston et al. (US2008/0014410) hereinafter Johnston.
Regarding claim 4, Eichler teaches the apparatus of claim 1.
Eichler does not teach at least one fourth electrode is provided to which a sixth electrical potential can be applied, wherein the fourth electrode is arranged downstream of the second roller.
In the same field of endeavor regarding stretching devices, Johnston teaches an electrode provided downstream of a stretching device for the motivation of defining the film as an electret ([0194]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the apparatus as taught by Eichler to include the downstream electrode as taught by Johnston in order to define the film as electret.
Response to Arguments
Applicant's arguments filed 03/11/2026 have been fully considered but they are not persuasive.
Applicant argues that Eichler does not teach the polarity of the third electrical potential is opposite to that of the first electrical potential. However, the examiner notes that the claim requires “at least one second electrode, to which a third electrical potential can be applied… wherein the third electrical potential is opposite to that of the first electrical potential” (emphasis added). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See MPEP 2114. Since the prior art apparatus teaches the claimed structure of an electrode capable at operating at a range of voltages, one of ordinary skill in the art would reasonably expect the prior art apparatus to be capable of performing the claimed functions as well. Furthermore, Eichler teaches voltages at which to operate the electrodes (col 5, ln 27-30) which inherently possess an opposite/reverse potential that exists.
For at least the above reasons, the application is not in condition for allowance.
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 ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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/ALEXANDER A WANG/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741