DETAILED ACTION
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.
The applicant’s claim 23 recites “control means” which invokes 112(f) as this feature is not modified by structure and is provided to perform functions of the claimed apparatus.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The applicant’s claimed “control means” is not disclosed in the original disclosure. It is noted in the remarks that synchronization and coordination are disclosed and understood to require control functionality, however as claimed and noted above, this is claimed in 112(f) format which requires explicit disclosure.
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 23 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 23, the applicant’s recitation of “control means” is not disclosed in the applicant’s specification and also written in 112(f) form which requires the specification to provide explicit disclosure of the claimed means. As the specification is silent to such a feature, the metes and bounds of the claimed element cannot be determined.
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) 11, 15-21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Steinkogler et al (US Pat No 6,623,001) in view of Michler et al (US Pub No 2003/0021668).
Regarding claim 10 and 23, Steinkogler discloses a method for stacking flat items in order to form stacks with a predefined number of flat items by means of a single stacking wheel, having the following steps:
a) introducing flat items into compartments of the single stacking wheel (2, e.g. via transport system 5),
b) transporting the flat items in the compartments of the single stacking wheel (shown in fig. 1),
c) removing the flat items from the compartments of the single stacking wheel (e.g. via fence 4) and forming a stack with the predefined number of flat items (3), and
It is noted that Steinkogler fails to disclose removing the stack of flat items. However, Michler discloses a similar stacking device including a means (54) for removing the stack of flat items (60). It would have been obvious to one having ordinary skill in the art to have modified the device taught by Steinkogler with the teaching of Michler to achieve the predictable result of having a full system for stacking and removing the stack after the stack has been completed.
The combination discloses after introduction of the predefined number of flat items into the compartments of the stacking wheel, no flat item is introduced into at least one subsequent compartment of the stacking wheel (noted at least by [0058] of Michler noting the use of empty compartments, and teaching by Steinkogler with the relating of placing sheets in desired slots, see column 6, lines 10-27), and repeating steps a) through d) using the single stacking wheel, and
wherein a drive of the single stacking wheel is configured to increase rotational speed of the single stacking wheel so that no flat item is transported into the respective at least one subsequent compartment of the single stacking wheel, the drive being further configured to restore the rotational speed of the single stacking wheel to be synchronized with a transport device, or a drive of a transport device is configured to reduce the transport speed of the transport device so that no flat item is transported into the respective at least one subsequent compartment of the single stacking wheel, and the synchronized transport speed is then restored the drive being further configured to restore the transport speed of the transport device to be synchronized with the single stacking wheel (noted by Steinkogler where the sheets feed to the stacking wheel can be sped up or slowed, or the kinematics of the stacker wheel itself can be controlled in the desired manner such that sheets are deposited into the desired slot, or no slot, see column 4, lines 6-15).
It is noted that the combination doesn’t explicitly disclose that no flat item is deposited between groups of items determined to be a stack (i.e. last item of a previous stack and first item of the next stack). However, it would have been obvious to one having ordinary skill in the art to have produced the claimed method since the disclosures of Steinkogler and Michler disclose very similar elements (i.e. the ability to adjust the speeds of the intake, wheel to accommodate flat items in each slot taught by Steinkogler, and skipping a slot taught as well as the teaching of separating batches by Michler).
Regarding claim 11, Steinkogler discloses a device for stacking flat items by means of
only a single stacking wheel (1), for forming stacks with a predefined number of flat items,
a transport device (5) for transporting the flat items into compartments of the single stacking wheel, for which purpose the transport speed of the transport device and the rotational speed of the stacking wheel are synchronized,
a stripper (4) for removing the flat items from the compartments of the single stacking wheel,
a tray (3) on which the flat items removed from the compartments of the single stacking wheel are deposited and stacks with the predefined number of flat items are formed.
It is noted that Steinkogler fails to disclose removing the stack of flat items. However, Michler discloses a similar stacking device including a means (54) for removing the stack of flat items (60) wherein the stack is configured to be removed with the predefined number of flat items from the tray by the stack transport device so that a subsequent stack can be formed (see [0057]). It would have been obvious to one having ordinary skill in the art to have modified the device taught by Steinkogler with the teaching of Michler to achieve the predictable result of having a full system for stacking and removing the stack after the stack has been completed.
The combination discloses after introduction of the predefined number of flat items into the compartments of the stacking wheel, no flat item is introduced into at least one subsequent compartment of the stacking wheel (noted at least by [0058] of Michler noting the use of empty compartments, and teaching by Steinkogler with the relating of placing sheets in desired slots, see column 6, lines 10-27).
It is noted that the combination doesn’t explicitly disclose that no flat item is deposited between groups of items determined to be a stack (i.e. last item of a previous stack and first item of the next stack). However, it would have been obvious to one having ordinary skill in the art to have produced the claimed method since the disclosures of Steinkogler and Michler disclose very similar elements (i.e. the ability to adjust the speeds of the intake, wheel to accommodate flat items in each slot taught by Steinkogler, and skipping a slot taught as well as the teaching of separating batches by Michler).
Regarding claim 15 and 16, it is noted that Steinkogler is silent as to the size of the gap needed and shows gap (ta) being smaller than the size of item 7A. It would have been obvious to one having ordinary skill in the art to have modified the gap size to either be a fraction, size of a article or multiple thereof since it merely requires routine experimentation to figure out an optimal size of a gap to be provided for a stacker wheel.
Regarding claim 17, as noted in the rejection of claim 11, Michler notes the use of empty compartments can be present and that “any number” of slots can remain empty. As such, it’s obviated that two, three, four or five compartments remaining empty as Michler notes that a plurality is capable of being used. Further, the applicant’s disclosure fails to provide criticality to any particular number.
Regarding claim 18, Steinkogler discloses the compartments of the stacking wheel have a curved, rectilinear, or helical profile along their profile or a section of the profile (as shown in figure 1).
Regarding claim 19, Michler discloses a first tray (46) is configured to be removed from a stacking location by moving downwards with the stack to provide space for introducing a second tray (38) above the stack formed on the first tray; or pivoting the first tray together with the stack away from the stacking location (as shown in figures 4-11). It would have been obvious to one having ordinary skill in the art to have modified the device of Kluge with the teachings of Michler to achieve the predictable result of constantly depositing sheets defining and moving them away from the stacking device (noted at least in abstract).
Regarding claim 20, Michler wherein the stack is removed with the predefined number of flat items onto a first tray (46); wherein the first tray is configured to be removed with the predefined number of flat items from a stacking location below the single stacking wheel; wherein, after removing the first tray from the stacking location, a second tray (38) is configured to be introduced at the stacking location for receiving a subsequent stack of flat items.
Regarding claim 21, the combination discloses the first tray is configured to be removed from the stacking location by moving downwards with the stack to provide space for introducing the second tray above the stack formed on the first tray in order to receive the subsequent stack by the second tray (shown in figures 4-11).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Kluge et al in view of Michler et al, further in view of BOHM et al (US Pub No 2022/0223919).
Regarding claim 22, it is noted that the combination fails to disclose pivoting of the stacking tray. However, BOHM discloses the tray is configured to be removed from the stacking location by pivoting the first tray together with the stack away from the stacking location and pivoting the second tray into the stacking location (shown in figure 1, and paragraph [0051]).
It would have been obvious to one having ordinary skill in the art to have modified the combination with the additional aspect of pivoting to allow the stack to be removed from the tray with the assistance of gravity, wherein the stack is then conveyed by the designated conveyor (e.g. 30).
Response to Arguments
Applicant's arguments filed 6/24/26 have been fully considered but they are not persuasive.
In response to the applicant’s argument that neither Steinkogler and Michler fail to disclose the claimed invention. It is noted that each prior art alone fail to disclose the claimed invention. However, the rejection is a modification wherein the prior art is combined to suggest the claimed invention. As such, the teachings of adjusting the timing in when flat items arrive, what slot they’re fed into and another device specifically designed for stacking batches of items are combined to achieve the concept of the applicant’s claimed invention. The concept of generating a free slot is noted in Michler and the kinematic control taught by Steinkogler with the disclosure that multiple possibilities of kinematics to impart on the incoming feed to the speed of the stacker wheel enable multiple varieties of using the stacker wheel concludes the aspect that controlling these features would be obvious to enable alternate formations.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Patrick Cicchino whose telephone number is (571)270-1954. The examiner can normally be reached Monday-Friday, 8:30AM to 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Patrick Cicchino/Primary Examiner, Art Unit 3619
Prosecution Insights