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 .
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Stannek (US 4,858,974) in view of Curhan et al. (US 11,738,893 B2) and Sugito et al. (US 6,256,868 B1).
Claim 1: Stannek discloses a workpiece installation system, that includes and a pickup device (as depicted in Figure 10 for picking up the workpiece, the pickup device includes a pair of clamping claws (13 of Figure 1) and a holding device (21 of Figure 1), the clamping claws gripping the workpiece from a left side and a right side of the workpiece (33 of Figures 5), the holding device holding the workpiece at a predetermined position to prevent movement of the workpiece when the work piece is gripped by the clamping claws (as depicted in Figures 3-5; Col. 3, Lines 17-48).
While Stannek discloses a portion of the limitations recited in claim 1, Stannek fails to disclose that the workpiece is an elastic clip that is loaded on a tray, and that the holding device is a claw.
However, Curhan et al. teaches a pickup device that includes two sets of claws (130,132 of Figure 4a) wherein one set of claws 132 is used to initially grip a workpiece and lift the workpiece prior to the other set of claws 130 grips the workpiece (Figures 7A – 11A and 32B-32F).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute a set of jaws for the suction device of Stannek because it is prima facie obvious to substitute one known prior art element for another to achieve predictable results (MPEP 2143(B)). In this instant case the predictable results would be that the device of Stannek would be equipped with the clamping jaws 13 and second set of jaws that would lift or hold in place the workpiece instead of the suction device.
While Stannek as modified above by Curhan et al. discloses a portion of the limitations recited in claim 1, Stannek/Curhan et al. fails to disclose that the workpiece is an elastic clip and that the elastic clip is loaded on a tray.
However, Sugito et al. teaches that it is known in the art to provide workpieces (615 of Figure 1) in trays (69 of Figure 1) and to pick them up and move them using a gripping device (11 of Figure 1)
Therefore, it would have been to one of ordinary skill in the art to modify the device of Stannek such that the workpiece was provided on a tray. This modification would have been advantageous because the workpiece would be organized and contained in the tray such that it would be more easily presented to the pickup device.
While Stannek as modified by Curhan et al. and Sugito et al. disclose a portion of the limitations recited in claim 1, Stannek/Curhan et al./Sugito et al. fail to disclose that the workpiece is an elastic clip.
However, this limitation has been treated as merely the intended use of the pickup device. Since the apparatus of Stannek/Curhan et al./Sugito et al. is capable of performing the recited intended use of picking up an elastic clip from a tray, the device of Stannek/Curhan et al./Sugito et al. meets the limitations of the claim. The recitation of a new intended use for an old product does not make a claim to an old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim 2: Stannek further discloses that the pickup device includes an installation block (12 of Figure 1) formed with an installation slot (slot in which 17 is located) and an elastic member (17 of Figure 2) arranged in the installation slot.
Allowable Subject Matter
Claims 3-20 are 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.
Response to Arguments
Applicant's arguments filed 04/20/2026 have been fully considered but they are not persuasive. Applicant contends that modifying the pickup device of Stannek such that it included the set of claws of Curhan et al. would not be a simple substitution because it would require a redesign of the pick-up device of Stannek. This is not convincing because, as stated previously, it is prima facie obvious to substitute one known prior art element for another to achieve predictable results (MPEP 2143(B)). In this instant case the predictable results would be that the device of Stannek would be equipped with the clamping jaws 13 and second set of jaws that would lift the workpiece instead of the suction device. While a redesign may be required to bodily incorporate the set of jaws within the apparatus of Stannek, the substitution of one know prior art element for another is prima facie obvious. Further such a redesign would have been well within the ability of one ordinary skill in the art to complete because one of ordinary skill in the art would be one who practices in the art of designing and manufacturing pickup devices for robotic systems such as that of Stannek and Curhan et al.
Further applicant contends that modifying Stannek by substituting the set of claws of Curhan et al. does not provide an apparatus that meets the limitations of the claim because the claim recites “a holding claw” that is capable of “holding the elastic clip at a predetermined position”. This argument is also not convincing because the claim is limited such that it comprises a holding claw and is not limited to only one holding claw. The modification of Stannek in view Curhan et al. provides a claw and a set of claws both of which or in combination are capable of holding an elastic clip at a predetermined position.
Therefore, the combination of Stannek in view of Curhan does form a prima facie case of obviousness on claim 1, and the action is made final.
Conclusion
THIS ACTION IS MADE FINAL. 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 JASON L VAUGHAN whose telephone number is (571)270-5704. The examiner can normally be reached Mon-Friday 8:30 - 5:00.
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/JASON L VAUGHAN/Primary Examiner, Art Unit 3726
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