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 .
DETAILED ACTION
Election/Restrictions
Applicant's election of Group I, Species B, in the reply filed on 5/6/26 is acknowledged. The applicant stated the election is with traverse. The applicant’s traversal to the Species Restriction is on the grounds that Species B is allowable. This is not a proper traverse because it fails to point out the supposed errors upon which the applicant relies for his or her conclusion that the requirement is in error. Asserting the elected invention is allowable is not a proper traversal. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the Species election has been treated as an election without traverse (MPEP § 818.01(a)).
With respect to Group I, applicant asserts amended claim 18 requires all the limitations of claim 1 and thus should be included in Group I. This is not found persuasive because claim 18 does not require the housing to function as a counter during welding. Applicant then asserts claim 16 is dependent on claim 1. This is not correct, as claim 1 is directed to an apparatus and claim 16 is directed to a method. Claim 3 is withdrawn without traverse. Claims 16-20 are withdrawn with traverse.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The claims recite an apparatus with structural limitations and material worked upon by the apparatus. While there is nothing wrong with claiming the material worked upon, such limitations are only given weight to the extent that they limit the structure of the claimed apparatus. See MPEP 2115. See In re Rishoi (94 USPQ 71), In re Smith (3 USPQ 315), and In re Young (25 USPQ 69).
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
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 1-2 and 4-15 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.
Regarding claims 1 and 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, the examiner will assume the limitations following “preferable” are not part of the claimed invention.
Regarding claim 5, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, the examiner will assume the limitations following “for example” are not part of the claimed invention.
As to claims 8, the limitation “the interior” lacks proper antecedent basis.
As to claim 11, it’s not clear what constitutes a “linear-type” machine. The claims and specification do not provide objective criteria to enable the examiner to distinguish the claimed “linear-type” machine from a “linear” or “non-linear-type” machine.
In claim 15, it’s not clear if “a welding step” is associated with the welding step previously recited in claim 1.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 9-11 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by FR 1333340 (of record, text citation refer to machine translation of record).
As to claim 1, FR340 discloses A welding unit (fig 1) for a machine for forming capsules having a pleated capsule body and a reinforcing element, said welding unit comprising: a welding housing 7 configured to accommodate said reinforcing element and said pleated capsule body coaxially during welding; a welder 1/3, configured to be inserted coaxially with respect to said welding housing within (fig 1, p. 2-3) said welding housing and to weld said reinforcing element to said pleated capsule body; wherein said welding housing acts as a counter element for said welder during welding (fig 1, L87-95); and wherein said welding unit further comprises: elastic means 9 (L87-110) coupled to said welding housing in such a way that said welding housing is elastically movable and/or elastically deformable by a thrust of said welder (figs 1-2, L87-185).
As to claim 9, FR 340 discloses actuating means 11/23 configured to move said welding housing and/or said welder so as to insert said welder into said welding housing (L111-125)
As to claims 10-11, FR340 discloses a machine for forming capsules having a pleated capsule body and a reinforcing element, said machine being of a linear type and comprising one or more welding units (fig 1, p. 2-5).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2 and 4-6 and 8-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rapparini (US 2018/0215120) in view of Lee et al. (US 2006/0231981).
As to claim 1 and 6, Rapparini disclose a welding unit (fig 7, para 77) a machine for forming capsules having a pleated capsule body and a reinforcing element, said welding unit comprising: a welding housing 171 configured to accommodate said reinforcing element and said pleated capsule body coaxially during welding; a welder 160 with a thruster 161, configured to be inserted coaxially with respect to said welding housing within said welding housing and to weld said reinforcing element to said pleated capsule body (fig 7-13, para 97-128); wherein said welding housing acts as a counter element for said welder during welding; and wherein said welding unit further comprises (fig 7-13, para 25, 47, 97-128).
Rapparini does not disclose an elastic spring coupled to said welding housing in such a way that said welding housing is elastically movable and/or elastically deformable by a thrust of said welder
Lee discloses a forming device for forming a reinforcing element with a former/thruster 48 (fig 5-8, para 46), a housing 26 into which the former can be inserted for forming a reinforcing element (fig 5-8, 13a-13c, para 41-53), and an elastic means 54 (para 48-49, 54 is a spring) coupled to said housing in such a way that said housing is elastically movable and/or elastically deformable by a thrust of said former (fig 5-8. Para 12, 49-52).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Rapparini such that an elastic spring is coupled to said welding housing in such a way that said welding housing is elastically movable and/or elastically deformable by a thrust of said welder as taught by Lee above as such enables the adjustment of the diameter/width of recess of the welding housing to form a product with a desired shape and/or physical properties (para 48-54)
As to claim 2, Rapparini as modified by Lee discloses the unit wherein: during a welding step, as a result of the elastic movement of said welding housing and/or as a result of the elastic deformation of said welding housing, at least one diameter of said welding housing coincides with at least one diameter of said welder along a welding zone so as to weld said capsule body to said reinforcing element at said diameters (Lee figs 5-8, 45-52).
As to claim 4, Rapparini as modified by Lee discloses said elastic means are configured to elastically vary the position of said welding housing in a plane perpendicular to an axis in which said welder and said welding housing are coaxial (Lee figs 5-8, 45-52 discloses position varied along horizontal plane, which is perpendicular to the coaxial axis).
As to claim 5, Rapparini as modified by Lee discloses said elastic means are configured to elastically vary at least one diameter of said welding housing, for example said elastic means are placed laterally with respect to said welding housing (Lee figs 5-8, 45-52)..
As to claim 8, Rapparini as modified by Lee discloses the unit further comprising: suction means configured to suck the interior of said welding housing so as to retain said reinforcing element in said welding housing (Lee para 52, fig 9-9b, suction pulled through 66)
As to claim 9, Rapparini as modified by Lee discloses actuating means configured to move said welding housing and/or said welder so as to insert said welder into said welding housing (Rapparini, para 103-105, fig 7).
As to claims 10-11 Rapparini as modified by Lee discloses a linear-type machine for forming capsules having a pleated capsule body and a reinforcing element, said machine comprising: one or more welding units according to claim 1 (Rapparini, fig 3-7, associated text
As to claims 12 and 13, Rapparini discloses transport housings 131 configured to position said pleated capsule body and said reinforcing element so that they are coaxial with each other and with respect to said welding housing and said welder, and arranged between said welding housing and said welder along an axis of coaxiality (para 77, 91-96. (fig 7-12)
As to claim 14, Rapparini discloses transport housings comprise first transport housings for transporting said pleated capsule body (para 91-92) and second transport housings for transporting said reinforcing element (para 77, 91-96, plurality of housings 131) .
As to claim 15, Rapparini discloses said second transport housings are further configured to accommodate said pleated capsule body and said reinforcing element during welding and to transport the capsule after a welding step has been completed (para 94-96).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rapparini and Lee, as applied to claim 1 above, and further in view of Ignell (US 3555652).
Ignell discloses an elastic circlip 59 inside a housing, said clip enabling the diameter of the housing to be varied (clip 59 causes expansion – fig 13-14, C16, L70 – C 17, L50
At the time the invention was made it would have been obvious to one of ordinary skill in the art for the unit of Rapparini and Lee to comprise an elastic member comprising a circlip, placed in said welding housing so that at least one diameter of said welding housing is elastically variable due to the elastic deformation of said circlip as taught by Ignell above as is a known elastic means in the art and has a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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