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 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.
Claims 1 and 9 limitation “one or more cutting elements configured to apply uniform cuts…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation 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.
First, "element" is a generic substitute for “means”; second, the "element" is modified by functional language including “configured to apply uniform cuts…”; and third, the "element" is not modified by sufficient structure to perform the recited function because "cutting" preceding element describes the function, not the structure of the element.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 1 and 9 have been interpreted to cover the corresponding structure described in the specification that achieves 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 § 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 3 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 3 “a track is configured to enable movement of the cutting device…” is unclear. Looking at Figures, it appears the cutting device is operating or moving by manually. The track, figure 1 helps or guides the cutting device that moves along the track, not enable movement of the cutting device. It appears the handle 130 is configured to enable movement of the cutting device, not the track as seen in figure 4.
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.
Claims 1, 6-10, 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abdela (US 2950532).
Regarding claim 1, Abdela shows an apparatus for preparing thin-film specimens (Figures 1-2, blades 11 can be able to cut thin-film specimens since as the claim is written, it is not clear what’s specimen structures be), the apparatus comprising:
a cutting device (the blades 11) that is configured to cut thin-film specimens, wherein the cutting device comprises a plurality of cutting elements (11) configured to apply uniform, straight, and parallel cuts into a thin-film specimen sheet as the cutting device is moved over the thin-film specimen sheet (see Abdela’s Figures 1-2, parallel blades 11 are on a frame 8 can be cut the film evenly and straight).
Regarding claim 6, Abdela shows that the cutting device comprises a handle (12) for moving the cutting device when applying the cuts.
Regarding claims 7-8, Abdela shows that the plurality of cutting elements comprise rotating blades (see blades 11 in Figures 1-2) and being evenly spaced (Figures 1-2).
Regarding claim 9, Abdela teaches a method for preparing thin-film specimens (see Figures 1-2 and claim 1 above), the method comprising:
engaging a thin-film specimen sheet and a cutting device (Figures 1-2 and see claim 1 above),
wherein the cutting device comprises a plurality of cutting elements configured to apply uniform, straight, and parallel cuts into the thin-film specimen sheet as the cutting device is moved over the thin-film specimen sheet (see the discussion in claim 1 above); and
operating the cutting device to create a plurality of thin-film specimen strips from the thin-film specimen (Figures 1-2. Please note that this device is a manual operation, the sheet can be cut into a plurality of strips).
Regarding claim 10, Abdela teaches securing the cutting device onto the thin- film specimen sheet during the applying of the cuts (Figures 1-2 and see the device as discussed in claim 1 above).
Regarding claim 15, Abdela teaches that the cutting device comprises a handle for moving the cutting device when applying the cuts (see the discussion in claim 6 above), and wherein operating the cutting device comprises using the handle to move the cutting device over the thin-film specimen sheet (Figures 1-2).
Regarding claim 16, Abdela teaches that the cuts are evenly spaced (see the discussion in claims 1 and 9 above).
Claims 1-4, 6-13, 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown (US 6612035).
Regarding claim 1, Brown shows an apparatus (Figures 1-4) for preparing thin-film specimens, the apparatus comprising:
a cutting device (24) that is configured to cut thin-film specimens, wherein the cutting device comprises a plurality of cutting elements (two cutting wheels 32, Figure 1) configured to apply uniform, straight, and parallel cuts into a thin-film specimen sheet as the cutting device is moved over the thin-film specimen sheet (as the claim is written, it requires the cuts being parallel, not spaced from each other, therefore, see Figure 1, both cutting wheels are cut into the same cutting line 40 which means both cuts from both cutting wheels are uniform, straight, overlap and parallel to each other).
Regarding claim 2, Brown shows a cutting base (20, Figure 1) that is configured for placement on top of the thin-film specimen sheet (S, Figure 1), wherein the cutting base is configured to maintain the thin-film specimen sheet as the cutting device is moved to apply the cuts (Figure 1).
Regarding claim 3, as best understood, Brown shows that the cutting base comprises a track (28) that is configured to enable “movement” or guidance of the cutting device during the applying of the cuts (Figure 1).
Regarding claim 4, Brown shows that the cutting base and the cutting device are separate components (Figure 3).
Regarding claim 6, Brown shows that the cutting device comprises a handle (64) for moving the cutting device when applying the cuts.
Regarding claims 7-8, Brown shows that the plurality of cutting elements comprise rotating blades (two cutting wheels 32) and are evenly spaced (see both wheels are on evenly spaced or arms 38).
Regarding claim 9, Brown teaches a method for preparing thin-film specimens, the method comprising: engaging a thin-film specimen sheet (as it is written, it is unclear size and material of the sheet is, therefore, the sheet S, Figure 2, meets this limitation) and a cutting device (24, see the discussion in claim 1 above),
wherein the cutting device comprises a plurality of cutting elements (see the discussion above) configured to apply uniform, straight, and parallel cuts into the thin-film specimen sheet as the cutting device is moved over the thin-film specimen sheet (see the discussion in claim 1 above); and
operating the cutting device to create a plurality of thin-film specimen strips from the thin-film specimen (this manual cutting device is operated to create a plurality of strips from the sheet “including the sheet being cut as seen in figure 2” if operator needs).
Regarding claim 10, Brown teaches securing the cutting device onto the thin-film specimen sheet during the applying of the cuts (see Figure 1).
Regarding claim 11-12, Brown teaches using a cutting base (20, see the discussion in claim 2 above) that is configured for placement on top of the thin-film specimen sheet for securing the cutting device onto the thin-film specimen sheet, wherein the cutting base is configured to maintain the thin-film specimen sheet as the cutting device is moved to apply the cuts (Figure 1), wherein the securing comprises placing the cutting base on top of the thin-film specimen sheet (Figure 1).
Regarding claim 13, Brown teaches that the cutting base and the cutting device are separate components (see claim 4 above), and further comprising engaging the cutting base and the cutting device after placing of the cutting base on top of the thin-film specimen sheet (see Figure 3, this cutting device is manual and it can be performed this step).
Regarding claim 15, Brown teaches that the cutting device comprises a handle (64) for moving the cutting device when applying the cuts, and wherein operating the cutting device comprises using the handle to move the cutting device over the thin-film specimen sheet (see Figures 1-4).
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Brown.
Regarding claim 16, Brown teaches all of the limitations as stated above except that the cuts are evenly spaced.
See the discussion above; this manual cutting device is operated to create a plurality of even strips or cuts from the sheet if operator needs.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the method of Brown to have a plurality of even cuts or strips from the sheet, in order to have even strips if the operator need them.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See new art above.
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
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 NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 12/3/2025