Notice of 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
Claims 17-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/22/2026.
Once the claims of group I have been indicated as allowable, a rejoinder of claims 17-24 can occur once all limitations of the allowable subject matter have been incorporated by claims 17-24.
Applicant's election with traverse of group I claims 1-16 in the reply filed on 5/22/2026 is acknowledged. The traversal is on the ground(s) that there is no search burden between groups. This is not found persuasive because there are distinct limitations in each group resulting in a search burden.
The requirement is still deemed proper and is therefore made FINAL.
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 2,8-16 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.
Claim 2 recites - “the edge protection material guides” and “the material” and “so that it is displaced” in line 2, this is unclear whether the outer or inner guide is being referred to and what material is recited and what “it” refers to, appropriate correction required.
Claim 8 recites “it” in line 10 – and it is not clear what “it” refers to.
Claim 8 recites the limitation "the wrapping" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites “it” in line 2 -and it is not clear what “it” refers to.
Claim 15 recites “it” in line 6 -and it is not clear what “it” refers to.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 2 of prior U.S. Patent No. 12,371,209. This is a statutory double patenting rejection.
Claim 1 instant application
Claims 1-2 USPN 12,371,209
Claim 1: An edge protection mounting device for use in a system for sheet coil packaging,
wherein the edge protection mounting device comprises a mounting arm arrangement comprising
an outer edge protection material guide,
configured to feed out and guide edge protection material into a correct position along an outer edge of a sheet coil,
and an inner edge protection material guide, configured to feed out and guide edge protection material into a correct position along an inner edge of a sheet coil.
1. An edge protection mounting device for use in a system for sheet coil packaging,
wherein the edge protection mounting device comprises a mounting arm arrangement comprising
at least one edge protection material guide, configured to feed out and guide edge protection material into correct positions along at least one edge of a sheet coil, wherein the at least one edge protection material guide is shaped to guide the edge protection material so that it is displaced sideways from the mounting arm arrangement.
2. The edge protection mounting device according to claim 1, wherein the mounting arm arrangement comprises an outer edge protection material guide, configured to feed out and guide edge protection material into a correct position along an outer edge of a sheet coil,
and an inner edge protection material guide, configured to feed out and guide edge protection material into a correct position along an inner edge of a sheet coil.
Claim 2 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 2 of prior U.S. Patent No. 12,371,209. This is a statutory double patenting rejection.
Claim 2 instant application
Claims 1-2 USPN 12,371,209
Claim 2. The edge protection mounting device according to claim 1,
wherein
the edge protection material guides are shaped to guide the material so that it is displaced
sideways from the mounting arm arrangement.
1. An edge protection mounting device for use in a system for sheet coil packaging,
wherein the edge protection mounting device comprises a mounting arm arrangement comprising
at least one edge protection material guide, configured to feed out and guide edge protection material into correct positions along at least one edge of a sheet coil, wherein the at least one edge protection material guide is shaped to guide the edge protection material so that it is displaced sideways from the mounting arm arrangement.
2. The edge protection mounting device according to claim 1, wherein the mounting arm arrangement comprises an outer edge protection material guide, configured to feed out and guide edge protection material into a correct position along an outer edge of a sheet coil,
and an inner edge protection material guide, configured to feed out and guide edge protection material into a correct position along an inner edge of a sheet coil.
Claims 8-9 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 9 of prior U.S. Patent No. 12,371,209. This is a statutory double patenting rejection.
Claim 8 instant application
Claims 8-9 USPN 12,371,209
Claim 8. A system for sheet coil packaging, the system comprising:
a sheet coil wrapping arrangement, arranged for wrapping a sheet coil;
a sheet coil rotating arrangement, arranged to rotate the sheet coil while it is wrapped by the sheet coil wrapping arrangement; and
two edge protection mounting devices, each comprising a mounting arm arrangement
comprising
an outer edge protection material guide, arranged to feed out and guide edge protection material into a correct position along an outer edge of a sheet coil,
and an inner edge protection material guide, arranged to feed out and guide edge protection material into a correct position along an inner edge of a sheet coil, as the sheet coil is rotated by the sheet coil rotating
arrangement, while it is wrapped by the sheet coil wrapping arrangement, thereby fixing the edge
protection material to the edges of the sheet coil by the wrapping.
Claim 9: The system according to claim 8, wherein the edge protection material guides are shaped to guide the material so that it is displaced sideways from the mounting arm arrangement.
8. A system for sheet coil packaging,
the system comprising:
a sheet coil wrapping arrangement, arranged for wrapping a sheet coil;
a sheet coil rotating arrangement, arranged to rotate the sheet coil while it is wrapped by the sheet coil wrapping arrangement; and
two edge protection mounting devices, each comprising a mounting arm arrangement comprising at least one edge protection material guide, arranged to feed out and guide edge protection material into correct positions along at least one edge of a sheet coil, as the sheet coil is rotated by the sheet coil rotating arrangement, while it is wrapped by the sheet coil wrapping arrangement thereby fixing the edge protection material to the edges of the sheet coil by the wrapping, wherein the at least one edge protection material guide is shaped to guide the edge protection material so that it is displaced sideways from the mounting arm arrangement.
9. The system according to claim 8, wherein each mounting arm arrangement comprises
an outer edge protection material guide, arranged to feed out and guide edge protection material into a correct position along an outer edge of the sheet coil,
and an inner edge protection material guide, arranged to feed out and guide edge protection material into a correct position along an inner edge of the sheet coil.
“wherein the at least one edge protection material guide is shaped to guide the edge protection material so that it is displaced sideways from the mounting arm arrangement.” (claim 8)
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 4 are recited in patented claim 6.
Claim 4 instant application
Claim 6 USPN 12,371,209
Claim 4. The edge protection mounting device according to claim 1, wherein
the edge protection material comprises slits along both sides, and is folded before being guided
into the correct positions along the edges of the sheet coil.
6. An edge protection mounting material adapted to be used in an edge protection mounting device in a system for sheet coil packaging,
wherein the edge protection material comprises slits along both longitudinal sides, so that a series of tongues are formed on both longitudinal sides, wherein the length of the tongues is adapted to the width of an edge protection material guide, thereby making the edge protection material easily guidable through said edge protection material guide to be displaced sideways in a folded state into correct positions along the edges of a sheet coil.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 5 are recited in patented claim 5.
Claim 5 instant application
Claim 5 USPN 12,371,209
Claim 5. The edge protection mounting device according to claim 1,
wherein the edge protection material is wound up in a folded state on an edge protection material coil
carried by the mounting arm arrangement.
5. The edge protection mounting device according to claim 1,
wherein the mounting arm arrangement carries an edge protection material coil, comprising edge protection material that is thin enough to be wound up in a folded state.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 6 are recited in patented claim 3.
Claim 6 instant application
Claim 3 USPN 12,371,209
Claim 6, The edge protection mounting device according to claim 1, wherein
the mounting arm arrangement comprises a hinge arrangement, arranged to allow the part of the
mounting arm arrangement that comprises the edge protection material guides to be moved out
of the way when the edge protection material guides are not used.
.
3. The edge protection mounting device according to claim 1, wherein
the mounting arm arrangement comprises a hinge arrangement, arranged to allow the part of the mounting arm arrangement that comprises the at least one edge protection material guide to be moved out of the way when the at least one edge protection material guide is not used.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 7 are recited in patented claim 4.
Claim 7 instant application
Claim 4 USPN 12,371,209
Claim 7. The edge protection mounting device according to claim 1, wherein
the edge protection mounting device comprises an arm support which carries the mounting arm
arrangement, wherein the arm support comprises a horizontal adjusting arrangement and a
vertical adjusting arrangement.
4. The edge protection mounting device according to claim 1, wherein
the edge protection mounting device comprises an arm support which carries the mounting arm arrangement, wherein the arm support comprises a horizontal adjusting arrangement and a vertical adjusting arrangement.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 11 are recited in patented claim 13.
Claim 11 instant application
Claim 13 USPN 12,371,209
Claim 11. The system according to claim 8, wherein the edge protection
material comprises slits along both sides, and is folded before being guided into the correct
positions along the edges of the sheet coil.
13. The system according to claim 8, wherein the edge protection material comprises slits along both longitudinal sides, so that a series of tongues are formed on both longitudinal sides, and is guided in a folded state into correct positions along the edges of the sheet coil.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 12 are recited in patented claim 12.
Claim 12 instant application
Claim 12 USPN 12,371,209
Claim 12: The system according to claim 8, wherein the edge protection
material is wound up in a folded state on an edge protection material coil carried by the
mounting arm arrangement.
12. The system according to claim 8, wherein the mounting arm arrangement carries an edge protection material coil, comprising edge protection material that is thin enough to be wound up in a folded state.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 13 are recited in patented claim 10.
Claim 13 instant application
Claim 10 USPN 12,371,209
Claim 13 (Original): The system according to claim 8, wherein the mounting arm
arrangement comprises a hinge arrangement, arranged to allow the part of the mounting arm
arrangement that comprises the edge protection material guides to be moved out of the way when
the edge protection material guides are not used.
10. The system according to claim 8, wherein each mounting arm arrangement comprises a hinge arrangement, arranged to allow the part of the mounting arm arrangement that comprises the at least one edge protection material guide to be moved out of the way when the at least one edge protection material guide is not used.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 14 are recited in patented claim 11.
Claim 14 instant application
Claim 11 USPN 12,371,209
Claim 14: The system according to claim 8, wherein the edge protection
mounting devices each comprises an arm support which carries the mounting arm arrangement,
wherein the arm support comprises a horizontal adjusting arrangement and a vertical adjusting
arrangement.
11. The system according to claim 8, wherein the edge protection mounting devices each comprise an arm support which carries the mounting arm arrangement, wherein the arm support comprises a horizontal adjusting arrangement and a vertical adjusting arrangement.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 15 are recited in patented claim 15.
Claim 15 instant application
Claim 15 USPN 12,371,209
Claim 15: The system according to claim 8, wherein the sheet coil wrapping
arrangement comprises
first and second industrial robots, having first and second robot arms,
arranged to wrap the sheet coil using a wrapping tool, using sequences of the first robot arm
inserting the wrapping tool into a central hole of the sheet coil and handing over the wrapping
tool to the second robot arm, and the second robot arm transporting the wrapping tool along the
outside of the sheet coil and handing it back to the first robot arm, as the sheet coil is rotated by
the sheet coil rotating arrangement.
15. The system according claim 8, wherein the sheet coil wrapping arrangement comprises
first and second industrial robots, having first and second robot arms, arranged to wrap the sheet coil using a wrapping tool, using sequences of the first robot arm inserting the wrapping tool into a central hole of the sheet coil and handing over the wrapping tool to the second robot arm, and the second robot arm transporting the wrapping tool along the outside of the sheet coil and handing it back to the first robot arm, as the sheet coil is rotated by the sheet coil rotating arrangement.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,371,209. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown below all the limitations of instant claim 16 are recited in patented claim 16.
Claim 16 instant application
Claim 16 USPN 12,371,209
Claim 16 (Original): The system according to claim 8, further comprising a further sheet
coil rotating arrangement and two further edge protection mounting devices, in order to enable
the sheet coil wrapping arrangement to wrap sheet coils in two different positions.
16. The system according to claim 8, further comprising a further sheet coil rotating arrangement and two further edge protection mounting devices, in order to enable the sheet coil wrapping arrangement to wrap sheet coils in two different positions.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 1-2, and 4-16 would be allowable if 112(b) rejections and Double Patenting rejections are overcome.
Regarding claim 1, Olsson et al. (US 2023/0227188; "Olsson") is the most
relevant prior art. Olsson discloses an edge protection mounting device (210) for use in a system for sheet coil packaging (100), wherein the edge protection mounting device (210) comprises a mounting arm arrangement (108, 109) .
Olsson fails to disclose the mounting arm arrangement comprising at least one edge protection material guide, configured to feed out and guide edge protection material into correct positions along at least one edge of a sheet coil, wherein the at least one edge protection material guide is shaped to guide the edge protection material so that itis displaced sideways from the mounting arm arrangement.
Regarding claim 8, Olsson et al. (US 2023/0227188; "Olsson") is the most relevant prior art. Olsson discloses a system for sheet coil packaging (100), the system comprising: a sheet coil wrapping arrangement, arranged for wrapping a sheet coil: a sheet coil rotating arrangement, arranged to rotate the sheet coil while it is wrapped by the sheet coil wrapping arrangement; and two edge protection mounting devices (210), each comprising a mounting arm arrangement (108, 109).
Olsson fails to disclose a mounting arm arrangement comprising at least one edge protection material guide, arranged to feed out and guide edge protection material into correct positions along at least one edge of a sheet coil, as the sheet coil is rotated by the sheet coil rotating arrangement, while it is wrapped by the sheet coil wrapping arrangement thereby fixing the edge protection material to the
edges of the sheet coil by the wrapping, wherein the at least one edge protection material guide is shaped to guide the edge protection material so that it is displaced sideways from the mounting arm arrangement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY C HIBBERT-COPELAND whose telephone number is (571)270-0601. The examiner can normally be reached M-TH 9am -5pm.
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/MARY C HIBBERT-COPELAND/Examiner, Art Unit 3731
/VERONICA MARTIN/Primary Examiner, Art Unit 3731
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