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 of claims 1-12, 14-20 and 22 in the reply filed on 03/20/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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) 1-2, 5-6, 8, 11-12, 14-17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Takahashi et al (US 2003/0136523).
Regarding claim 1, Takahashi discloses an ultrasonic welding system having an ultrasonic stack assembly, the system comprising:
an ultrasonic stack assembly (bonding tool 14) including an ultrasonic horn (horn 15) and a first transducer (transducer 17) arranged to impart a first ultrasonic energy into the ultrasonic horn, the ultrasonic horn having a first part-interfacing surface configured to contact a part to be joined, the ultrasonic horn having a major surface adjacent to the first part-interfacing surface and an ultrasonic booster having a generally flat shape and a major surface that is generally coplanar with the major surface of the ultrasonic horn (see Figs. 1 and 2A);
one or more controllers (controller 50) operatively coupled to the ultrasonic stack assembly, the one or more controllers operatively being configured to:
apply the first ultrasonic energy through the ultrasonic horn via the first transducer to cause the first part-interfacing surface to move back and forth along its length as the first ultrasonic energy is applied by the first transducer to the horn (see Fig. 6).
Regarding claim 2, Takahashi discloses wherein the ultrasonic horn and the ultrasonic booster are machined from a single plate of metal such that the ultrasonic horn and the ultrasonic booster constitute a single, integrated piece (shown in Figs. 1 and 2A).
Regarding claim 5, Takahashi discloses wherein the ultrasonic horn has a length along a side thereof and a width along an end thereof, the length being longer than the width, and the ultrasonic booster extending away from the end of the ultrasonic horn, the end being interfaced with the first transducer, and wherein the ultrasonic horn and the ultrasonic booster have a generally flat profile along coplanar surfaces thereof (see Fig. 2A).
Regarding claim 6, Takahashi discloses wherein a weld or seal is formed at the first part-interfacing surface without application of any external heat energy toward the weld or seal.
Regarding claim 8, Takahashi shows bearing mounts (elements 13 and 15C in Figs. 2A-B).
Regarding claims 11-12 and 16, Takahashi discloses wherein the ultrasonic horn includes compliant tabs that are internal to the horn and configured to connect with a plate arranged on an exterior of the ultrasonic horn in the manner claimed by the applicant (see paragraph [0023]).
Regarding claims 14-15 and 20, Takahashi discloses wherein the portion of the ultrasonic booster that passes through the fixed bearing mount modifies a vibrational amplitude passing between the first transducer and the ultrasonic horn such that the portion of the ultrasonic booster has a reduced width dimension relative to an overall width dimension of the ultrasonic horn and wherein the modification is a tuned half-wave component relative to the first ultrasonic energy (see Fig. 3 and paragraphs [0032]-[0034]).
Regarding claim 17, Takahashi discloses wherein the ultrasonic booster is coupled to the ultrasonic horn and to the first transducer, the ultrasonic booster having a generally square or rectangular cross-section (see Figs. 2A-B).
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.
Claim(s) 3-4, 7, 9-10, 18-19 and 22 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al (US 2003/0136523) as described above.
It is the examiner’s position that employing multiple horns, transducers, boosters and controllers represents a mere duplication of essential working parts whish is within the purview of one having ordinary skill in the art. For this reason, it is the examiner’s position that it would have been obvious to one having ordinary skill in the art to employ such multiple horns, transducers, boosters and controllers in the apparatus of Takahashi.
Double Patenting
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.
Claims 1-12, 14-20 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,397,462. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of applicant’s claims are contained within or made obvious by claims 1-19 of US Patent 12,397,462.
In particular, ‘397 claims an ultrasonic system, the system comprising:
an ultrasonic cut stack assembly including an ultrasonic cutting horn and a first transducer arranged to impart a first ultrasonic energy into the ultrasonic cutting horn, the ultrasonic cutting horn having a first cutting feature configured to contact a part to be cut, the ultrasonic cutting horn having a major surface adjacent to the cutting feature and an ultrasonic booster having a flat shape and a major surface that is coplanar with the major surface of the ultrasonic cutting horn;
one or more controllers operatively coupled to the ultrasonic cut stack assembly, the one or more controllers operatively being configured to:
apply the first ultrasonic energy through the ultrasonic cut horn via the first transducer to cause the first cutting feature to move back and forth along its length as the first ultrasonic energy is applied by the first transducer to the cutting horn (claim 1).
Claims 1-12, 14-20 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. 2025/0345962. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of applicant’s claims are contained within or made obvious by claims 1-13 of US 2025/0345962.
In particular, ‘962 claims an ultrasonic weld-cut system having an ultrasonic cut stack assembly, the system comprising:
an ultrasonic cut stack assembly including an ultrasonic cutting horn and a first transducer arranged to impart a first ultrasonic energy into the ultrasonic cutting horn, the ultrasonic cutting horn having a first cutting feature configured to contact a part to be cut, the ultrasonic cutting horn having a major surface adjacent to the cutting feature and an ultrasonic booster having a generally flat shape and a major surface that is generally coplanar with the major surface of the ultrasonic cutting horn;
one or more controllers operatively coupled to the ultrasonic cut stack assembly, the one or more controllers operatively being configured to:
apply the first ultrasonic energy through the ultrasonic cut horn via the first transducer to cause the first cutting feature to move back and forth along its length as the first ultrasonic energy is applied by the first transducer to the cutting horn (claim 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D SELLS whose telephone number is (571)272-1237. The examiner can normally be reached M-Th 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES D. SELLS
Primary Examiner
Art Unit 1745
/JAMES D SELLS/ Primary Examiner, Art Unit 1745
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