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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on April 23, 2026 is acknowledged. The traversal is on the ground(s) that the newly amended method claims cannot be performed by another and materially different apparatus and cannot be performed by hand. Based on the amendments to claim 17 the restriction is withdrawn, claims 1-18 and 21-22 will be examined for patentability.
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:
“jaw unit configures for guiding” in claim 1 [corresponding structure is upper jaw and lower jaw 2a, 2b in figure 1];
“lock feeding unit configured for providing a lock element” in claim 1 [no corresponding structure is provided];
“pushing and pulling unit configured for pushing and for the subsequent retraction” in claim 1 [corresponding structure is toothed motor that engages toothed strap; see paragraph 0041 & figure 1];
“sensor unit configured for detecting” in claim 1 [no corresponding structure is provided];
“cutting unit configured for separating” in claim 1 [corresponding structure is a blade 9a; see paragraph 0042]; and
“control unit configured to preset” in claim 1 [no corresponding structure is provided].
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 § 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 1-22 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.
With regards to claim 1, the claim limitation “lock feeding unit configured for providing”, the claim limitation “sensor unit configured for detecting”, and the claim limitation “control unit configured to preset” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. While paragraphs 0040 and 0042 disclose the tool having these elements the disclosure fails to set forth the structure that is encompassed within the lock feeding unit, sensor unit and control unit. It is further noted that the drawings fails to clearly illustrate the structural elements of these units as well. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
With regards to claims 2, 4-10, 12-14 and 21-22, the claims state “the control unit is designed to” or “the control unit is adapted to”, this renders the claim indefinite since it is unclear what the metes and bounds of “designed to” and “adapted to” are with respect to the function of the control unit. Specifically, it is unclear if the control unit is required to perform the claimed function or if the control unit just needs to have the capability to perform the functions. For examination purposes the limitation is being interpreted as having the capability to perform the functions.
With regards to claim 16, the claim states “wherein the jaw unit is an exchangeable jaw unit that further comprises at least two different jaw units of different sizes”, this renders the claim indefinite since it is unclear how the tool is to have two different jaw units of different sizes at the same time. Clarification and/or correction is required. Examiner notes that no art has been applied to claim 16 because “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art” [see MPEP 2173.06.II].
With regards to claim 17, the claim states “determining a number of motor stops of the feed motor required for pushing the end section into the end position”, this renders the claim indefinite since it is unclear how this is to occur after the pushing of the end section through the end position. Specifically, the pushing has already been performed in the method thus how does the determining result in discovering the number of motor steps required to perform the pushing if the pushing has already occurred, is it determining the number for a subsequent pushing operation? Clarification and/or correction is required.
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) 1-15, 17-18 and 21-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Busch (DE 102018110184A1; cited by Applicant).
In reference to claim 1, Busch discloses a bundling tool (1) for bundling a bundling good through use of a strap, the bundling tool comprising
a jaw unit (9) configured for guising an end section of the strap (85) around the bundling good [see figure 7],
a lock feeding unit (5) configured for providing a lock element (63) for the strap [see abstract; figure 7],
a pushing and pulling unit (89) configured for pushing, utilizing a motor (27), the end section of the strap along a path through the lock element, along the jaw unit with the bundling good gripped by the jaw unit (7), around the bundling good, ad back into the provided lock element, the pushing and pulling unit further configured for subsequent retraction of the end section of the strap [see paragraph 0042-0043],
a sensor unit (92) configured for detecting the end section pushed back into the lock element [see paragraph 0033],
a cutting unit (59) configured for separating the end section arranged around the bundling good from a remaining section of the strap, the remaining section remaining in the bundling tool [see paragraph 0027] and
a control unit (30) configured to preset, for the pushing and pulling unit during pushing in a normal operating mode, a greater pushing speed of the end section for a first path portion of the path than for a second path portion following the first path portion, the second path portion comprising a part of the path running back into the lock element [see paragraph 0043].
In reference to claim 2, the control unit is capable being designed to in a calibration operating mode for the first path portion for the pushing and pulling unit, preset a lower pushing speed of the end section than in the normal operating mode, and in the calibration operating mode, determine an equivalent of distance for at least the first path portion [it is noted that the control unit of Busch has the capability of perform these modes by a change in programing of the control unit].
In reference to claim 3, the pushing speed during the calibration operating mode is substantially equal to the pushing speed of the second path portion in the normal operating mode.
In reference to claim 4, the control unit is capable of being adapted to determine, in the calibration operation mode, the equivalent of distance with a counting of motor steps in the motor of the pushing and pulling unit during pushing of the end section [see paragraphs 0014-0015 & 0033].
In reference to claim 5, the control unit is capable of being designed to deactivate the calibration operating mode automatically after the equivalent of distance has been determined at least once.
In reference to claim 6, the control unit is capable of being designed to activate the calibration operating mode automatically after the bundling tool is switched on.
In reference to claim 7, the control unit is capable of being designed to deactivate the calibration operating mode automatically after the equivalent of distance has been determined at least once.
In reference to claim 8, the control unit is capable of being designed to deactivate the calibration operating mode after the equivalent of distance has been determined twice.
In reference to claims 9 and 10, the control unit is capable of being designed to deactivate the calibration operating mode automatically after the bundling tool is switched on.
In reference to claim 11, the control unit, in the normal operating mode, is configured to
detect an equivalent of time at which the end section pushed back into the lock element is detected by the sensor unit, check whether the detected equivalent of time coincides with an equivalent of time stored for pushing by the pushing and puling unit, and continue in the normal operating mode only if the two equivalents of times coincide [see paragraphs 0014 & 0033].
In reference to claim 12, the control unit is capable of being adapted to determine the equivalent of time by counting motor steps in the motor of the pushing and pulling unit during pushing of the end section [see paragraphs 0014-0015].
In reference to claims 13 and 14, the control unit is capable of being designed to, in the event of a deviation of the two equivalent of times from one another, at least one of activate the calibration operating mode, or check whether the detected equivalent of time is greater or smaller than the stored equivalent of time, and , in the case of a greater detected equivalent of time, to increase the first path portion with the greater pushing speed of the end section, and, in the case of a smaller detected equivalent of time, to decrease the first path portion with the greater pushing speed of the end section.
In reference to claim 15, the jaw unit is an exchangeable jaw unit that comprises a fully mechanical jaw unit (7) [it is noted that the jaw unit is connected by a pivotable shaft which is removable therefore allowing for the jaw unit to be removable as well].
In reference to claim 21, Busch further discloses the pushing speed during the calibration operating mode is substantially equal to the pushing speed of the second path portion in the normal operating mode, and wherein the control unit is capable of being adapted to determine, in the calibration operation mode, the equivalent of distance with a counting of motor steps in the motor of the pushing and pulling unit during pushing of the end section.
In reference to claim 22, the control unit is capable of being designed to deactivate the calibration operating mode automatically after the equivalent of distance has been determined at least once, and activate the calibration operating mode automatically after the bundling tool is switched on.
In reference to claim 17, Busch discloses a method for automatically calibrating a bundling tool configured to bundle a bundling good via an end section of a strap, with the end section being cut of a remaining section of the strap by a cutting unit (59) of the bundling tool, the method comprising
pushing, utilizing a feed motor (27), an end section of the strap along a path through a lock element (63) and along a jaw unit (7) of the bundling tool back into the lock element by a pushing and pulling unit,
detecting a reaching of an end position of the end section pushed into the lock element by a sensor unit [see paragraphs 0014-0015],
determining a number of motor steps of the feed motor required for pushing the end section into the end position,
setting a first pushing speed for the motor steps corresponding to a first path position of the path for a future pushing by a control unit (30) [see paragraph 0013],
setting a second pushing speed, lower than the first pushing speed, for the motor steps of the future pushing corresponding to a second path portion of the path following the first path portion by the control unit [see paragraph 0013, it is noted that although Busch discloses not explicitly state an action of “calibrating”, Busch does meet the claimed steps of the method and therefore meets the phrase of “automatically calibrating” since this action is defined by the claimed steps].
In reference to claim 18, Busch further discloses during pushing the end section is punched around the bundling good.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725
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