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 Objections
Claim 1 is objected to because of the following informalities: the phrase “place tape” in line 6 should be written as –place a tape— for grammatical clarity and consistency in claim language. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: the phrase “where the machine comprising an automation system” in lines 2-3 should be written as –where the machine [[comprising]]comprises an automation system— for grammatical clarity. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: the phrase “the mobile roller” in line 4 should be written as –the at least one mobile roller— for consistency in claim language. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: the phrase “the tape dispenser” in line 4 should be written as –the tape dispenser system— for consistency in claim language. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the phrase “where the least one pressure roller” in lines 2-3 should be written as –where the at least one pressure roller— for grammatical clarity. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: the phrase “according to wheel model” in lines 3 should be written as –according to a wheel model— for grammatical clarity. Appropriate correction is required.
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 4 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.
Regarding claim 4, the phrase “at least one roller of the at least three rollers having a larger diameter than the other two rollers of the at least three rollers” in lines 7-8 is unclear. The claim recites “at least three rollers” wherein “at least one roller” has a larger diameter than the other two. However, if there are more than three rollers then it becomes unclear how the diameters vary amongst the rollers. For example, if there are four rollers, and at least one roller has a diameter larger than the other two, it does not make sense because there are more than two other rollers (i.e., there are three other rollers). Can two rollers (i.e., satisfying at least one roller) have a larger diameter than two rollers? Is only one roller meant to have a larger diameter than two rollers, and the remaining roller may be the same diameter as the two or be an entirely different third diameter from either the one or two roller sets? Further clarification is requested.
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.
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) 1, 3, 5-8, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruyff et al. (NL 1022202, see updated machine translation provided) (of record) and Neale et al. (GB 567169) (of record).
Regarding claim 1, Cruyff discloses an automatic rim tape application machine including a wheel (Fig. 1: 1) comprising: a positioning and retention system (Figs. 1-2, 6: 5A, 5B) for rotating the wheel (Fig. 1: arrow A showing rotation); a tape dispenser system (Figs. 1-2, 6: see where tape is dispensed from onto rim) to place a tape (Fig. 6: 37) in an interior of a rim (Fig. 2: 27) as the wheel is rotated by the positioning and retention system; a shaping system for the tape comprising at least one heat dispenser facing the wheel to heat the tape (Page 4 Paragraphs 3, 5: wherein the tape is connected to the rim by a heating element, i.e., the tape is shaped and glued to the interior of the rim via the heat dispenser and rollers); and at least one pressure roller (Figs. 1-2, 6: 29) that can be moved towards the interior of the rim to exert pressure on the heated tape to adhere the tape to the interior of the rim (Page 4 Paragraphs 3, 5: wherein the tape is connected to the rim by a heating element, i.e., the tape is shaped and glued to the interior of the rim via the heat dispenser and rollers).
While Cruyff does not expressly recite that the wheel is placed on a stand, but because Cruyff discloses a generic illustration of the wheel and machine components floating in air (Fig. 1), one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized, or at least found obvious, that the vertically provided wheel and the machine components must be placed on something on which to support them, such as a stand.
Additionally, Neale also discloses an automatic rim tape application machine where a wheel is placed on a stand (Figs. 1-2: a) and is fixed by means of a positioning and retention system (Figs. 1-2: d, e) that allows the wheel to rotate to place tape (Figs. 1-2: j, j1) in an interior of a rim (Figs. 1-2: f) by means of a tape dispenser system (Figs. 1-2: see where j, j1 pass through dispenser including k, k1) (Page 2 lines 58-88). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Cruyff in order to place the wheel and the machine components on a stand in order to perform rim tape application as is generally known in the substantially similar art, as taught by Neale.
The limitation “to exert pressure on the heated tape to adhere the tape to the interior of the rim” is a recitation of intended use that does not require any additional structure to the machine that differentiates it from the machine disclosed by modified Cruyff. The recitation does not result in structural difference between the claimed invention and the prior art because modified Cruyff discloses a tape dispenser, a heat dispenser, and a pressure roller which is capable of exerting pressure on the heated tape to adhere the tape to the interior of the rim.
Regarding claim 3, Cruyff further discloses the positioning and retention system comprises a fixed roller (Fig. 1: 4) in a lower part of the stand under the wheel (Fig. 1: 1), and thereby in a lower part of the stand, and at least one mobile roller (Figs. 2, 6: 28) movable by a longitudinal guide (Figs. 2, 6: 25) above the wheel, and thereby in an upper part of the stand.
While Cruyff does not expressly recite there may be at least two fixed rollers in the lower part of the stand, case law holds that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04. One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide as many rollers as was necessary for stability of the wheel on the stand.
Regarding claim 5, Cruyff further discloses the tape dispenser system can be moved (Figs. 1, 2, 6: see how unit dispensing tape is moved up and down via cylinder 24) from a resting position in an upper part of a front surface toward a contact position with the wheel (Figs. 1, 2, 6).
While Cruyff does not expressly recite that the tape dispenser system can be moved by a guide groove parallel to a longitudinal guide, case law holds that shifting the position of a component would have been obvious absent a showing that the rearrangement modified the operation of the device. See MPEP 2144.04.
Regarding claim 6, Cruyff further discloses the tape dispenser system is connected to a cutting system comprising a pneumatic piston (Figs. 1-2: 11) that is attached to a blade (Fig. 6: 31) (Page 5 Paragraph 3). Because the components are attached to the stand surface, the piston may be on a rear surface of the stand, as is also taught by Neale (Fig. 2).
Regarding claim 7, Cruyff further discloses the at least one pressure roller (Figs. 2, 6: 29) of the shaping system can be moved (Figs. 2, 6), from a resting position at one outer end of a front surface of the stand towards an active position in contact with the interior of the rim (Figs. 2, 6).
Although Cruyff does not expressly recite the movement of the pressure roller is laterally by a lateral guide, case law holds that shifting the position of a component would have been obvious absent a showing that the rearrangement modified the operation of the device. See MPEP 2144.04.
Regarding claim 8, while Cruyff does not expressly recite the at least one pressure roller is interchangeable according to wheel model and dimensions, shape, or size of the rim, case law holds that changes in shape are matters of design choice that a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed invention is significant. See MPEP 2144.04.
Regarding claim 10, Cruyff further discloses the machine comprises a protection system by means of sensors (Fig. 1: 2) (Page 3 Paragraph 6; Page 4 Paragraph 5).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruyff et al. (NL 1022202, see updated machine translation provided) (of record) and Neale et al. (GB 567169) (of record) as applied to claim 1 above, and further in view of Jordan et al. (US 20190001763) (of record).
Regarding claim 2, Cruyff further discloses the machine comprises a control (i.e., automation system) for a setting of taping parameters that is connected to the positioning and retention system, to the tape dispenser system, to a cutting system, and to the shaping system (Page 3 Paragraphs 1, 6).
However, Cruyff does not expressly recite the automation system includes a touch screen.
Jordan discloses a pressure measuring device for a bicycle, comprising a rim tape that is mounted around the circumference of the rim ([0044]), wherein a user interface for providing data and/or signal communications from elements may be a touch screen, among a variety of other user interfaces as well ([0098]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Cruyff in order to provide the automation system with a touch screen as is generally known in the similar art, as taught by Jordan.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruyff et al. (NL 1022202, see updated machine translation provided) (of record) and Neale et al. (GB 567169) (of record) as applied to claims 1 and 3 above, and further in view of Frederick (US 20140130983) (of record).
Regarding claim 4, Cruyff further discloses the tape dispenser system is located above the wheel (Fig. 1), and thereby in an upper part of the stand parallel to a mobile roller (Figs. 2, 6: 28) and comprises a roll of tape (Fig. 1: 19) attached to a tensing system (Fig. 1: 18), which comprises at least three rollers (Fig. 1: 16), located between the wheel (Fig. 1: 1) and the roll of tape (Fig. 1: 19).
Although Cruyff does not expressly recite at least one roller of the at least three rollers having a larger diameter than the other two rollers of the at least three rollers, case law holds that changes in shape are matters of design choice that a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed invention is significant. See MPEP 2144.04.
However, Cruyff does not expressly recite a retention system on a rear surface of the stand connected to an axle of the roll of tape.
Frederick, which is within the art of tape dispensers, discloses using a stop plate (Fig. 2: 15) (i.e., a retention system) on the axle of a roll of tape so as to prevent the side of the tape roll from sticking to the backbone frame during unrolling ([0063]). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Cruyff in order to provide a retention system on a rear surface of the stand connected to an axle of the roll of tape so as to support the roll of tape while also preventing the side of the tape roll from sticking to the backbone frame during unrolling, as taught by Frederick.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruyff et al. (NL 1022202, see updated machine translation provided) (of record) and Neale et al. (GB 567169) (of record) as applied to claim 1 above, and further in view of any one of Wang (CN 113124985, see machine translation) (of record) and/or Tarasov et al. (RU 2734212, see machine translation) (of record).
Regarding claim 9, Cruyff further discloses the machine comprises a hole punch (Fig. 1: 3) that can be moved along a guide (Page 3 Paragraph 6; Page 5 Paragraph 3).
However, Cruyff does not expressly recite a projection laser.
Wang discloses using a marking device including a projection laser (Page 4). Additionally or alternatively, Tarasov also discloses using a projection laser to align and mark rolls for cutting (Page 5). Both Wang and Tarasov are in the tire art and teach using lasers for marking and alignment. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Cruyff so as to use a projection laser with the hole punch in order to mark and align the components appropriately prior to hole punching, as taught by Wang and Tarasov.
Response to Arguments
Applicant's arguments filed 08/18/2026 have been fully considered but they are not persuasive.
On pages 10-11 of the Remarks, Applicant argues that Cruyff does not disclose a shaping system comprising a heat dispenser to heat up the tape and a pressure roller to exert pressure on the heated tape to adhere the tape to the interior of the rim. Applicant argues Cruyff instead discloses a heating element to glue tape ends together.
Cruyff discloses a machine comprising a heat dispenser that heats up a tape and a pressure roller that exerts pressure on the heated tape onto the rim (Page 4 paragraphs 3, 5). Because the tape, even at a portion (i.e., overlap of the ends), is having heat and pressure applied thereon, it will necessarily be shaped because the tape is being melted to an extent by the heat and pressed upon by the roller.
Furthermore, it is noted that the features upon which applicant relies (i.e., the heat dispenser of the invention acts as a shaper for the tape to adhere to the rim interior after heat has been applied for more than just the ends of the tape) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim language does not require all of the tape be adhered to all of the rim interior via the heat dispenser and pressure roller, and does not exclude only a portion of the tape being heated, wherein being heated and having a pressure roller applied thereon will necessarily also adhere the tape to the rim interior.
On pages 11-12 of the Remarks, Applicant argues that the claimed characteristics provide improved and optimized shaping and sealing of the tape. Applicant further argues the heating element of Cruyff is used for a completely different purpose than the claimed invention, wherein the heat dispenser of the invention acts as a shaper for the tape to adhere to the rim interior after heat has been applied, but Cruyff uses the heating element to activate glue that binds two ends of the tape together and does not adhere the tape to the interior of the rim.
The prior art of record discloses all of the current claim limitations as discussed in the detailed rejection above. The reasoning or use in the prior art references does not need to be the same or identical to those discovered by Applicant so long as the prior art discloses all of the structural claim limitations and there is some teaching, suggestion, or motivation to make the combination, which the prior art references provide. Accordingly, it does not matter that Cruyff is using a heating element and pressure roller for a different reason than Applicant, Cruyff discloses the structural limitations for the machine as discussed above, including the heating element and the pressure rollers.
Moreover, any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. See MPEP 716.02. The burden is on Applicant to establish that the results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." See MPEP 716.02(b). Applicant has the burden of explaining any data they proffer as evidence of non-obviousness. See MPEP 716.02(b)(II). Moreover, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." Applicant has merely alleged that the claimed characteristics provide improved and optimized shaping and sealing of the tape without providing any further evidence or explaining how the machine of Cruyff having all of the same structural features could not possibly achieve the same effects.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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