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’s amendments, filed 8/3/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to claim 1 and addition of new claims 10-11. Claims 1-11 are pending.
Response to Arguments
Applicant’s arguments, filed 8/3/2026, have been fully considered and reviewed by the examiner but are directed to newly added claim requirements that are specifically addressed hereinafter.
Fett discloses “the adjusting rods/adjusting spindles can be operated manually or automatically” (see column 3, lines 60-62) and thus meets this requirement, i.e. automatically as instantly claimed. Additionally, as the spindles rotate, the strap will move relative to the substrate and therefore meet the claim requirement. Even in the event that the applicant’s disagree, the examiner notes that automating would have been obvious to one of ordinary skill in the art at the time of the invention, since it has been held that broadly providing a mechanical or automatic means to replace manual activity which has accomplished the same result involves only routine skill in the art. In re Venner, 120 USPQ 192.
At the very least, examiner cites here WO 2015064685, hereinafter WO 685, which discloses a similar coating apparatus for strip shaped pattern and preventing deposition in certain areas of the substrate via a strip/strap, same as taught by Fett, and WO 685 discloses the strip/strap is provided to the substrate automatically via rollers to automatically lift the substrate by the guide member and automatically move the guide member towards and away from the substrate (and encompasses automatically move the strap to be disengaged from substrate to a position that the strap is engaged with the substrate). Therefore, at the very least, taking the references collectively it would have been obvious to have modified Fett with the automatic nature of the strap as specifically taught by WO 685 as Fett discloses using a strap to selectively prevent deposition onto the substrate and WO 685 discloses a strap can be automatically moved toward and away from the substrate so as to provide the strap to prevent coating on the selected areas.
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.
Claim 11 is 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.
Claim 11 appears to include additional clauses unintended to be incorporated therein, see page 4 of the filed claims which appears to include a clause “an adjustment mechanism to automatically move the guide member toward and away from the substrate, wherein said automatic moving the guide member towards the substrate moves the guide member from a position where the guide member is disengaged from the substrate to at least one other position where the guide member is engaged with the substrate.” This clause appears improper and will be ignored for the purposes of examination. Applicant is requested to cancel said material in the reply to this office action.
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) 1-6, 8-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent 7849813 by Fett et al.
Claim 1: Fett discloses am apparatus to selectively lift a part of a substrate away from a transfer member (4, lifts substrate away from roller 2) when the substrate is advancing in a substrate coating system relative to the transfer member, such that, across a width of the substrate, a first part of the substrate is coated by the transfer member (see abstract, “liquid applied to the surface is transferred to the moving web where the moving web contacts the surface”) and a second part of the substrate, that is lifted by the apparatus, remains uncoated (see abstract “where the shields extend between the moving web and the surface there is generally no transfer of the liquid from the surface to the moving web”) (see Figure 1 and accompanying text). As to the intended use of the claims, while the prior art discloses a certain use that meets the claimed intended use, the intended use is merely that, intended and not required by the structure, only that the structure of the prior art is capable of performing the function. It has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Fett discloses guide member (see e.g. shield) and the substrate is lifted by the guide member remains uncoated and the substrate coating system includes an adjustment mechanism to move the guide member from a position of disengaged from the substrate to a position where the guide member is engaged with the substrate (see adjustment spindles and clips as adjustment mechanism to position the shields from engaged or not engage to selectively to block/engage substrate to prevent deposition, see Figures 3-5 and accompanying text). Fett discloses the guide members move towards and away from the substrate (see e.g. Figure 1, Figure 2) and moving the guide member towards the substrate moves the guide member from a position where the guide member is disengaged to a position where the guide member is engaged (see Figure 1).
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Here, Figure 2 illustrates the guide member is disengaged from the substrate, and Figure 1 illustrates that the guide member is being moved towards the substrate and then is capable of being engaged with the substrate. As to the intended use of the claims, while the prior art discloses a certain use that meets the claimed intended use, the intended use is merely that, intended and not required by the structure, only that the structure of the prior art is capable of performing the function. It has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Fett discloses “the adjusting rods/adjusting spindles can be operated manually or automatically” (see column 3, lines 60-62) and thus meets this requirement, i.e. automatically as instantly claimed.
Claim 2: Fett discloses a member to direct the force to a portion of the second part of the substrate (see e.g. 4, member directs “a force” to the portion of the sheet).
Claim 3: Fett discloses the member is to physically engage with and wipe a surface of the portion (see Figure 1 and accompanying text, 4, member both physical engages the substrate and wipes the surface by nature of the movement).
Claim 4: Fett discloses a plurality of members, wherein each member is to wipe and lift a portion of a respective second part of the substrate, wherein each second part forms an uncoated lane (see e.g. Figure 1). Additionally, the use of the member “i.e. to wipe” is mere intended use of the apparatus and the member (4) of Fett is capable of functioning in the manner as claimed.
Claim 5: Fett discloses the member comprises a plurality of elements (see Figure 1, Figure 5B and accompanying text), wherein each element is to wipe and lift the same second part of the substrate, wherein the second part forms an uncoated lane.
Claim 6: Fett discloses one of the elements is spaced apart from another one of the elements, and wherein each element is to direct a force to a respective portion of the second part of the substrate (see Figures 5A-5c and accompanying text, see Column 2, lines 41-49).
Claim 8: Fett discloses the member comprises an arcuate portion to cause a gradual lift of the substrate across the member (see Figure 4, member 4 includes arcuate portion).
Claim 9: Fett discloses “the adjusting rods/adjusting spindles can be operated manually or automatically” (see column 3, lines 60-62) and thus meets this requirement, i.e. automatically based on an undefined signal from an undefined controller or by a signal from the operator, i.e. within the scope of the broadly drafted controller.
Claim 10: Fett discloses the guide members are between the substrate and the roller and thus will resist an opposing force from the substrate as instantly claimed, i.e. resist the force of gravity pushing the substrate against the roller (see Figure 1). Additionally, the force of the substrate is intended use and as to the intended use of the claims, while the prior art discloses a certain use that meets the claimed intended use, the intended use is merely that, intended and not required by the structure, only that the structure of the prior art is capable of performing the function. It has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Claim 11: Fett discloses a system comprising:
a transfer member (2);
a guide member to lift a part of a substrate away from the transfer member when the substrate is advancing relative to the transfer member (see Figure 1 and accompanying text); and an adjustment mechanism to automatically move the guide member toward and away from the substrate (Fett discloses “the adjusting rods/adjusting spindles can be operated manually or automatically” (see column 3, lines 60-62))
,wherein across a width of the substrate, a first part of the substrate is coated by the transfer member and a second part of the substrate, that is lifted by the guide member when the guide member is automatically moved by the adjustment mechanism, remains uncoated (background, “ To leave uncoated strips on the web, it is further known to provide a plurality of covering elements or shields that engage between the web and respective portions of the application surface so that no contact can take place between the fabric web and application surface in these shielded regions, and no fluid transfer can be effected.”). Fett discloses the guide members move towards and away from the substrate (see e.g. Figure 1, Figure 2) and moving the guide member towards the substrate moves the guide member from a position where the guide member is disengaged to a position where the guide member is engaged (see Figure 1).
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Here, Figure 2 illustrates the guide member is disengaged from the substrate, and Figure 1 illustrates that the guide member is being moved towards the substrate and then is capable of being engaged with the substrate. As to the intended use of the claims, while the prior art discloses a certain use that meets the claimed intended use, the intended use is merely that, intended and not required by the structure, only that the structure of the prior art is capable of performing the function. It has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fett alone or further with WO 2015064685, hereinafter WO 685.
Claims 1-6, 9, 10-11: While the examiner maintains the position as set forth above regarding the broadly drafted automatic, the examiner notes that automating would have been obvious to one of ordinary skill in the art at the time of the invention, since it has been held that broadly providing a mechanical or automatic means to replace manual activity which has accomplished the same result involves only routine skill in the art. In re Venner, 120 USPQ 192.
At the very least, examiner cites here WO 2015064685, hereinafter WO 685, which discloses a similar coating apparatus for strip shaped pattern and preventing deposition in certain areas of the substrate via a strip/strap, same as taught by Fett, and WO 685 discloses the strip/strap is provided to the substrate automatically via rollers to automatically lift the substrate by the guide member and automatically move the guide member towards and away from the substrate (and encompasses automatically move the strap to be disengaged from substrate to a position that the strap is engaged with the substrate). Therefore, at the very least, taking the references collectively it would have been obvious to have modified Fett with the automatic nature of the strap as specifically taught by WO 685 as Fett discloses using a strap to selectively prevent deposition onto the substrate and WO 685 discloses a strap can be automatically moved toward and away from the substrate so as to provide the strap to prevent coating on the selected areas.
Claim 7: Fett discloses all that is taught above; however, fails to disclose the width of the member to physically engage the substrate is less than or equal to 5mm. However, Fett illustrates that the width is a variable specifically adjustable based on the size of the region to be uncoated (see Figures 5A-5C and accompanying text, column 4, lines 63-67, “the widths of the shielded regions can be adjusted continuously and precisely, the minimum strip width being the width of the narrowest strap and the maximum strip width being the sum of the widths of all the straps”), relating to the adjusting the number, overlap, and location/width of the individual shields to prevent deposition in the desired region and therefore taking the reference collectively, it would have been obvious to one of ordinary skill in the art at the time of the invention to determine the optimum width of the shield through routine experimentation to provide the desired coating and uncoated regions.
Claim 9: Fett discloses “the adjusting rods/adjusting spindles can be operated manually or automatically” (see column 3, lines 60-62) and thus while the examiner maintains the position as set forth above, to be automatically adjusted it would have been obvious to perform automatic adjustment via a signal from the operator, i.e. within the scope of the broadly drafted controller. As to the intended use of the claims, while the prior art discloses a certain use that meets the claimed intended use, the intended use is merely that, intended and not required by the structure, only that the structure of the prior art is capable of performing the function. It has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fett alone or with WO 685 taken collectively with US 3032006 by Kahn et al.
While the examiner maintains the position with respect to the broadly drafted claims, for the sake of compact prosecution, the examiner cites here Khan, also in the art of coating a web and shielding a portion of the web from coating using a shield (see e.g. column 1, lines 10-14). Kahn discloses automatically controlling a shield to prevent deposition on a portion of the web and discloses using a controller to move the shield based on signal (Figure 1 and accompanying text, column 1, lines 4-25, column 3-4). Therefore, as Frett discloses automatically adjusting the shields and Kahn discloses automatically adjusting the shield using a controller and a signal, it would have been obvious to one of ordinary skill in the art to provide a controller and automatically moving the shield based on a signal from the controller as such is taught by Kahn as a well-known method of controlling the shield during coating processing automatically.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/ Primary Examiner, Art Unit 1718
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