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 .
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 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 claim 1 and 8, it is unclear if there is a single paper splicing time or more than one as the control device step has the paper splicing times of the two splices, but the second and third splicing devices refer to “the paper splicing time” implying a single splicing time. For he purposes of examination, this is considered to mean there are two splicing times, one each for the second and third splicer.
Allowable Subject Matter
Claim 2 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach or reasonably suggest the specific distances as written in claim 2. The distances overcome the 101 rejection because they effectively require the controller to use the splice location detected to do something, i.e. to set the splices a specific distance apart.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 3-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) a detection unit which detects a paper splice. The limitation of detecting a paper splice as drafted, is an apparatus that, under its broadest reasonably interpretation covers performance of the limitation in the mind but for the recitation of generic sensor components. For example, except for the “detection unit” language, “detecting” in the context of the claim encompasses the user seeing the paper splice. Step 2A: This judicial exception is not integrated into a practical application because the other claimed components are recited at a high level of generality(i.e. as a generic corrugator having generic splicers, a control unit that controls the splicing) such that it amounts to no more than mere instructions to apply the exception using a generic sensor and controller component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The data collected, i.e. the location of the splice does not appear to be used once it is collected. The claim does not integrate the exception into a practical application because it does not require using the exception to do anything. The data from the splice detector is not required in order to have a third splice downstream of a second splice. This naturally occurs as both sheet have to be spliced. Each splice is both upstream and downstream from the other as there is no maximum distance between splices. The claim is directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception(step 2B) because the additional elements of a controller and splicers amounts to no more than mere instructions to apply the exception using a generic component. Mere instructions to apply an exception using a generic component cannot provide an inventive concept. The controller only controls that splicing occurs because there is no limit on the distance between the two splices. No matter how often the rolls are changed, one splice is always downstream of the other, even if the second sheet is replaced ten times before the third sheet is replaced, the third sheet splice will be downstream of the next ten second sheet splices. The splicers are “well-understood, routine, and conventional” as is a controller for them. The claim is not patent eligible.
Regarding claims 3 and 9, The limitation of setting the splice times as drafted, is an apparatus that, under its broadest reasonably interpretation covers performance of the limitation in the mind but for the recitation of generic control components. For example, except for the “splice time setting unit” language, “setting” in the context of the claim encompasses the user performing the calculations mentally. This judicial exception is not integrated into a practical application because the other claimed components are recited at a high level of generality(i.e. as a control unit that controls the splicing) such that it amounts to no more than mere instructions to apply the exception using a generic controller component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. The claim is not patent eligible.
Regarding claims 4-7, the claim(s) recite(s) a detection unit which detects a paper splice, a calculation unit that calculates a retention amount of single faced web at the bridge, and a determination unit which determines the relationship between splices. The limitation of calculating a retention amount and determining the relationship between splices as drafted, is an apparatus that, under its broadest reasonably interpretation covers performance of the limitation in the mind but for the recitation of generic computer components. For example, except for the “calculation unit” language, “calculating” in the context of the claim encompasses the user performing mathematical calculations, except for the “detection unit” language, “detecting” in the context of the claim encompasses the user seeing the paper splice, and except for the “determination unit” language, determining in the context of the claim language encompasses the user seeing the relationship between splices and deciding to or deciding not to calculate the retention amount. This judicial exception is not integrated into a practical application because the other claimed components are recited at a high level of generality(i.e. a bridge unit for retaining single faced web) such that it amounts to no more than mere instructions to apply the exception using a generic sensor and controller component. Accordingly. These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The data collected, i.e. the location of the splice and the retention amount do not appear to be used once it is collected. The claim is directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of a bridge amounts to no more than mere instructions to apply the exception using a generic component. Mere instructions to apply an exception using a generic component cannot provide an inventive concept. The claim is not patent eligible.
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: Such claim limitation(s) is/are: the splice detection unit in claims 1, 4, and 7, the splice time setting unit in claims 3 and 9, the on-bridge calculation unit in claims 4 and 7, and the determination unit in claims 5 and 6.
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 § 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) 1 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masuda(US Publication 2010/0163154).
Masada discloses a device for making corrugated board comprising a corrugator, bridge, and double backer wherein the device includes an ultrasonic sensor which detects a change in the thickness of the board.([0002];[0045]) While the reference does not explicitly state the presence of a controller for the splicer, it does have press bars, knives and various rolls which would need to be controlled in order to perform a splice.[0080] It would have been obvious to one of ordinary skill at the time of filing to have a controller to control the splice formation since there are a number of devices that need to be coordinated to perform a splice.[0080] The claims to not require any specific distance between the splices so at any point a third web splice would be 5, 50, or 5000 feet downstream from a second web splice. It is noted that all webs need to be spliced eventually so there would be splicing units for all the webs. A controller that controls a splicer so it splices would inherently have a splice of the second sheet both upstream and downstream from the third splice as the claims do not require any distance between the splices.
Response to Arguments
Applicant's arguments filed 12/24/25 have been fully considered but they are not persuasive.
Regarding applicant’s argument that the claims do not recite an abstract idea, they require detection of a splice, which can be done visually, which is considered done in the brain. The core of the claimed invention is detecting the location of a splice and locating another splice in relation to it. The detecting is an abstract idea, and the using the location of the splice to form another splice is not claimed. At no point do the claims indicate the controller uses the detection of the third splice to determine when to splice the second sheet. At no point does the claim state based on the splice detection; x occurs.
Regarding applicant’s argument that the claim requires a machine which has parts, or a process which has steps, examiner agrees. However, recent case law has indicated this is not sufficient to prevent a 101 rejection. Example 45 of the 101 examples is directed to an injection mold with a controller, both of which are parts and yet it in ineligible. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the controller and splicers does not affect this analysis.(MPEP 2106.05(I)) The question is whether the claim has more than elements that are “well-understood, routine, and conventional”.(Step 2B, Prong 2) The elements listed, paper splicing devices, and a controller to control the splicing, are in general extremely well-understood, routine, and conventional in the corrugating arts. They are therefore, not “significantly more”. Examiner’s position is that, as written, claims 1 and 8 only require the controller to cause splicing to occur when splicing is needed, i.e. when the rolls run out. For example, a corrugator splices a second sheet, then a second sheet again, then a third sheet, then a second sheet again. The third splice is downstream of at least one of the second splices. It does not state the controller controls the splicing so that the splice is downstream by 100-600mm as required by claim 2. It could be 500 feet and meet the claim. If the controller splices when the sheets run out, it would still be splicing the third sheet downstream of a second paper splice as well as upstream of a second paper splice because there is no limit on how far apart the splices can be.
The controller does not USE the detection of the splice to determine when to splice the third sheet, it simply splices it and there is no limit on how far downstream the third splice can be from the second splice. It does not say the paper splicing time determined by the control device is at all related to the detection of the splice.
Examiner is not characterizing “controlling splicing time to position splice parts downstream” as an abstract idea as argued by applicant, and examiner does not understand where applicant gets that idea. Examiner is arguing that “detecting the splice” is an abstract idea.
Examiner agrees the concept as written in the specification demonstrates a practical utility, but she does not agree that the claims as written overcome the 101.
Regarding applicant’s argument that Masuda’s core goal is preventing breakage of a corrugated sheet, did applicant look at the wrong reference? Masuda does not mention breaking of the corrugated sheet. It is directed to a better method of detecting the splice so it can be removed. Regarding applicant’s argument that Masuda does not disclose splicers for the different sheets, sheets are NOT continuous. One of ordinary skill in the art would understand this, and would understand that splicers would be present for each web. The controller is not required to use the splice location data in ANY manner. It is only required to have the third splice downstream of the second splice. This inherently occurs as the different sheets are spliced, the second is downstream of the third, then the third is downstream of the second etc. The claims do not require any specific distance between the splices so if the third web is spliced and 500 feet later, the second web is spliced because it has run out, that still meets the claims. Examiner is not sure where applicant is seeing Masuda talk about corrugating uniformity as she cannot find it in the reference. While applicant mentions adjusting the splicing time based on a desired target splice position, i.e. presumably a relative position of the splices based on the detection of the splice, the claims do not require this at all.
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 BARBARA J MUSSER whose telephone number is (571)272-1222. The examiner can normally be reached 7:30-4:30 M-Th; 7:30-3:30 second Fridays.
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 Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BARBARA J. MUSSER
Primary Examiner
Art Unit 1746
/BARBARA J MUSSER/Primary Examiner, Art Unit 1746
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