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 .
Election/Restrictions
Applicant's election with traverse of Group A (Claims 1-2, 4, 10, and 16) in the reply filed on 12-29-2025 is acknowledged. The traversal is on the ground(s) that the groups share a special technical feature because Claim 1 defines over the art.
Unity of invention (not restriction) practice is applicable in national stage applications submitted under 35 U.S.C. 371. MPEP § 1893.03(d). During the national stage as a Designated or Elected Office under 35 U.S.C. 371, PCT Rules 13.1 and 13.2 will be followed when considering unity of invention claims. MPEP § 1850, item I.
PCT Rule 13.1 states: The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept ("requirement of unity of invention").
PCT Rule 13.2 states: Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
Relevant portions of section II of MPEP §1850 Unity of Invention, states: An international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (PCT Rule 13.1). With respect to a group of inventions claimed in an international application, unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" is defined in PCT Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. The determination is made on the contents of the claims as interpreted in light of the description and drawings (if any).
Whether or not any particular technical feature makes a "contribution" over the prior art, and therefore constitutes a "special technical feature," should be considered with respect to novelty and inventive step. For example, a document discovered in the international search shows that there is a presumption of lack of novelty or inventive step in a main claim, so that there may be no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept.
Lack of unity of invention may be directly evident "a priori," that is, before considering the claims in relation to any prior art, or may only become apparent "a posteriori," that is, after taking the prior art into consideration. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art.
In judging the propriety of the restriction requirement, a lack of unity of invention must be either directly evident “a priori”, that is, before considering the claims in relation to any prior art, or may only become apparent “a posteriori”, that is, after taking the prior art into consideration.
Here, the Examiner notes that each of the groups listed in the requirement restriction list a different special technical feature. The lack of unity of invention is illustrated after taking the prior art into account, below. Because the elected claims are rejected below, there is a lack of unity a posteriori, since the features claimed in Group A is/are not a technical feature that defines a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3, 5-9, 11-15, 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12-29-2025.
The Examiner notes that should claim 1 eventually be found allowable, withdrawn dependent claims would be revived and issued with the case.
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: a securing mechanism in Claim 1; a gripping mechanism in Claim 1; a turning mechanism in Claim 1; and a separating mechanism in Claim 1; a feeding mechanism in Claim 2; a separating piece insertion mechanism in Claim 4; a transferring mechanism in Claim 10.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3,631,750 to Hanni.
In re Claim 1, Hanni teaches a workpiece cutting device that cuts a sheet-shaped or thin plate-shaped workpiece (see Fig. 1, sheet workpiece #8) formed into a sheet shape by partially coupling a plurality of small pieces of CFRP or GFRP to each other along seams into a first-side workpiece and a second-side workpiece (the Examiner notes that the claims are apparatus claims directed to the structure of the cutting device and do not require a particular workpiece – further, the Examiner notes that the structure of Hanni is capable of cutting a CFRP or GFRP sheet), the device comprising:
a securing mechanism that secures the first-side workpiece (see Fig. 1, #7);
a gripping mechanism that grips the second-side workpiece (see Fig. 1, #28 and #22 between which the workpiece #8 is positioned) ;
a turning mechanism that turns the second-side workpiece gripped by the gripping mechanism about a boundary with the first-side workpiece as an axis (see Figs. 1-2, #50/40/41, and phantom lines in Fig. 2); and
a separating mechanism that separates the first-side workpiece and the second-side workpiece at a vulnerable portion formed at the boundary through a turning operation of the second-side workpiece performed by the turning mechanism (see Figs 1-2, #4 – see also Col. 3, ll. 12-69). .
In re Claim 4, Hanni teaches wherein the separating mechanism is a separating piece insertion mechanism that inserts a thin plate-shaped separating piece into the vulnerable portion to separate the first-side workpiece and the second-side workpiece (see Fig. 1, knife #4 is a thin plate-shaped separating piece the is inserted into the workpiece – the Examiner notes that the claims are directed to the structure of the ‘workpiece cutting device” and do not affirmatively claim the workpiece – the structure of is capable of cutting the workpiece having a vulnerable portion to separate the workpiece into a first-side workpiece and a second side workpiece) .
Claim Rejections - 35 USC § 103
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over US 3,631,750 to Hanni in view of US 6,601,490 to Gross.
In re Claim 2, Hanni is silent as to a feeding mechanism that moves the first-side workpiece in a state where securing by the securing mechanism has been released toward the turning mechanism by a predetermined amount.
However, Gross teaches that it is known in the art of moving web-type structure to provide a feeding mechanism (see Gross, Fig. 2, and 5, #15) that moves the first-side workpiece in a state where securing by the securing mechanism has been released toward the turning mechanism by a predetermined amount.
In the same field of invention, cutting devices for web-type materials, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add the feed cradle #15 of Gross to the device of Hanni. Doing so positions the workpiece in the cutting device without requiring manual movement by the user.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 3,631,750 to Hanni in view of US 1,489,166 to Spiess.
In re Claim 10, Hanni teaches a transferring mechanism (see Fig. 2, support rollers #30 facility movement of the cut workpiece) that transfers the second-side workpiece.
Hanni is silent as to the work pieces being transferred to a stacking jig for stacking the second-side workpiece separated from the workpiece and stacks the second-side workpiece.
However, Spiess teaches that it is known in the web cutting art to stack the cut workpieces on a jig (see Spiess showing a stack of workpieces #5 on table/jig #4). In the same field of invention, cutting webs, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to stack the cut workpieces on a jig/table, as taught by Spiess. Doing so collects all the cut workpieces in one location thereby organizing the work products and preventing them from being lost or moved in a different location.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over US 3,631,750 to Hanni in view of DE 19625800 B4.
In re Claim 16, Hanni teaches A workpiece cutting method comprising, when a sheet-shaped or thin plate-shaped workpiece (see Hanni, Fig. 1-3, #8) formed into a sheet shape (see Hanni, Figs. 1-3, #8) is cut into a first-side workpiece and a second-side workpiece by the workpiece cutting device according to claim 4:
a securing step of securing the first-side workpiece by the securing mechanism (see Fig. 1, #7; see also Col. 3, ll. 5-12);
a gripping step of gripping the second-side workpiece by the gripping mechanism (see Fig. 1, #28/22; see also Col. 2, ll. 7-23 );
a folding step of turning the second-side workpiece gripped by the gripping mechanism about a boundary with the first-side workpiece as an axis by the turning mechanism (see Fig. 2, phantom lines; see also Col. 3, ll. 12-32 teaching that the piston is moved, or initiated movement during the cutting); and
a separating step of separating the first-side workpiece and the second-side workpiece by the separating mechanism at a vulnerable portion formed at the boundary in the folding step (see Fig. 1-3, #4 and Col. 3, ll. 11-32).
Hanni is silent as a sheet shape by partially coupling a plurality of small pieces of CFRP or GFRP to each other along seams. However, DE 19625800 B4 teaches that it is known to use a cutting device to cut a fiber blank (see DE 19625800 B4, Figs. 1-2, and the specification which states: To cut out the blank means are provided from the semifinished product, for example a cutting device). In the same field of invention, cutting devices it would have been obvious to one of ordinary skill in the art, at the earliest effective filling date, to use the cutting device of Hanni to cut any sheet, including a fiber sheet. Doing so is the substation of one known cutting device for another known cutting device to cut a web or sheet (see MPEP 2143, I B).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN RILEY whose telephone number is (571)270-7786. The examiner can normally be reached Monday - Friday, 8:30 AM - 5:00 PM.
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/JONATHAN G RILEY/Primary Examiner, Art Unit 3724