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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claims 1-6,11-12:
“milling unit for machining” (generic placeholder: “unit”, functional language: “milling . . . for machining”), associated with a machining unit or milling tool [0021]
“patterning unit” (generic placeholder: “unit”, functional language: “patterning . . . for patterning”), associated with a “drop-on-demand printing unit” including a piezo or jet print head print head [0013,0030]
“conveying unit” (generic placeholder: “unit”, functional language: “conveying . . . for inducing a relative movement”), associated with a belt or chain [0024]
Claim 9:
“monitoring unit” (generic placeholder: “unit”, functional language: “monitoring . . . for monitoring”), associated with a camera [0016]
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 2 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.
Claim 2 recites the limitation “the conveying” in line 1. The limitation is indefinite, because it is not clear whether a word is omitted or whether the limitation is meant to refer to a process step, not given patentable weight as an intended use. For some reason, the word “unit” which was in the previous set of claims is omitted in the present claims and there are no appropriate markings to show a change. Examiner interprets the limitation to include the interpretation “the conveying unit” as previously presented.
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.
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, 5-6, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Pankoke (WO 2012/168020) and Gauss et al. (US 2008/0152819).
Regarding Claim 1, Gauss et al. (US’042) teaches an apparatus for finishing a workpiece, comprising a milling unit for machining the workpiece (i.e. “grinding module 12” or “grinding and roughening module 31,” including a circular or rectangular grinding means or belt, functional equivalents of a “milling unit”) [0024,0031-0033], a patterning unit for patterning a surface of the workpiece (printing device 50, including one with drop-on-demand functionality) [0021], a conveying unit for inducing a relative movement (chain or belt conveyor 60) between the workpiece and the milling unit as well as between the workpiece and the patterning unit [0022], and a control unit connected to the milling unit, the patterning unit, and the conveying unit and configured to control (i.e capable of controlling) the milling unit, the patterning unit, and the conveying unit [0024,0031,0047,0050].
US’042 fails to teach that the control unit is configured to set (i.e. capable of setting) at least one parameter of the patterning unit taking into account a conveying speed of the conveying unit. Pankoke (WO’020) is analogous art in the field of patterning/ printing workpieces, and teach a control unit capable of setting a parameter of the patterning unit taking into account a conveying speed to account for fluctuations of actual delivery speed of the work piece (Abstract; [0019]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’042 with a control unit capable of setting a parameter of the patterning unit based on a conveying speed, because WO’020 suggests such a control unit to account for fluctuations in actual delivery speed of the work piece.
The combination of US’042 in view of WO’020 fails to teach a milling unit. Gauss et al. (US’819) is analogous prior art in the field of coating workpieces, and as in US’042, including machining and patterning wood workpieces on a conveyor belt or chain (Abstract; Figure 1; [0003, 0017,0021]). US’819 suggests that machining can be performed in any combination of a plurality of techniques, including, for example, cutting, milling, smoothing, and sanding [0028,0031]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of WO’020 with a milling unit (some milling tool), because US’819 suggests a milling unit among machining units in an analogous apparatus.
Regarding Claim 2, US’042 fails to teach a specific speed. WO’020 provides evidence that a conveyor rate of between 15 and 25 m/min was conventional at the time of invention [0039] and suggests a speed of 20 m/min, for example [0007]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of WO’020 and US’819 so that it is capable of achieving a conveyor speed greater than 10 m/min, because WO’020 suggest a conveyor speed of 20 m/min and provides evidence that a rate between 15-25 m/min was conventional at the time of invention. Additionally, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the conveyor speed to optimize tradeoffs between accuracy, error rate, and speed.
Regarding Claim 5, US’042 fails to teach that the control unit is configured to change the target conveying speed of the conveying unit if the control unit cannot determine suitable operating parameters. Pankoke (WO’020) is analogous art in the field of patterning/ printing workpieces, and teach a control unit capable of setting a parameter of the patterning unit taking into account a conveying speed to account for fluctuations of actual delivery speed of the work piece (Abstract; [0019]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of WO’020 and US’819 with a control unit capable of setting a parameter of the patterning unit based on a conveying speed, because WO’020 suggests such a control unit to account for fluctuations in actual delivery speed of the work piece and such a controller is capable of changing a target conveying speed of the conveying unit if the parameters are actually not in fact suitable.
Regarding Claim 6, in US’042 the patterning unit comprises a drop-on-demand printing unit, which is capable of variably setting an output droplet size or frequency by virtue of having drop-on-demand functionality [0021].
Regarding Claim 12, US’042 teaches a method for finishing a workpiece using an apparatus according to Claim 1 (see rejection of Claim 1 above under this heading), comprising the steps of inducing a relative movement between the workpiece and the milling unit and between the workpiece and the patterning unit via the conveying unit (handling unit 60), machining (i.e. grinding and/ or roughening) the workpiece by means of the milling unit [0024,0031-0033] and patterning the workpiece by means of the patterning unit [0021, wherein the control unit controls (i.e. is connected to) the milling unit, the conveying unit and the patterning unit during the method for finishing [0047-0050].
US’042 fails to teach that the control unit is configured to set (i.e. capable of setting) at least one parameter of the patterning unit taking into account a conveying speed of the conveying unit. Pankoke (WO’020) is analogous art in the field of patterning/ printing workpieces, and teach a control unit capable of setting a parameter of the patterning unit taking into account a conveying speed to account for fluctuations of actual delivery speed of the work piece (Abstract; [0019]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the method of US’042 with a control unit capable of setting a parameter of the patterning unit based on a conveying speed, because WO’020 suggests such a control unit to account for fluctuations in actual delivery speed of the work piece.
The combination of US’042 in view of WO’020 fails to teach a milling unit. Gauss et al. (US’819) is analogous prior art in the field of coating workpieces, and as in US’042, including machining and patterning wood workpieces on a conveyor belt or chain (Abstract; Figure 1; [0003, 0017,0021]). US’819 suggests that machining can be performed in any combination of a plurality of techniques, including, for example, cutting, milling, smoothing, and sanding [0028,0031]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the method of the combination of US’042 in view of WO’020 with a milling unit (some milling tool), because US’819 suggests a milling unit among machining units in an analogous apparatus.
Claim(s) 2 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Pankoke (WO 2012/168020) and Gauss et al. (US 2008/0152819) as applied to Claim 1 above, and further in view of Vermeulen et al. (US 2015/0239230).
Regarding Claim 2, US’042 fails to teach a conveyor speed. WO’020 provides evidence that a conveyor rate of between 15 and 25 m/min was conventional at the time of invention [0039] and suggests a speed of 20 m/min, for example [0007]. Vermeulen et al. (US’230) is analogous art in the field of processing workpieces, including patterning (printing) [0002-0004], and suggests conveyor speeds up to 300 m/min, including between 120 m/min to 180 m/min [0077]. Additionally, US’230 provides evidence that conveyor speed is a result-effective variable, affecting accuracy [0041, 0077]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of WO’020 and US’819 to be capable of handling work pieces for printing at speeds of at least 10 m/min, because US’230 is analogous art, suggesting conveying workpieces for printing with a throughput greater than 10 m/min. Additionally, it would have been obvious to a person of ordinary skill at the time of invention to modify the apparatus of US’042 with a conveyor capable of speeds greater than 15 m/min through routine optimization, considering tradeoffs of output volume vs. accuracy.
Regarding Claims 9-11, WO’020 teaches a camera for monitoring the speed or position of a workpiece being printed [0016,0067]. The combination of US’042 in view of WO’020 and US’819 fails to teach a camera for monitoring a surface of a workpiece patterned by a patterning unit. US’230 teaches a camera for monitoring the surface of a workpiece patterned by the patterning unit (combination of first and second printing modules, Abstract) the monitoring unit being connected to a control unit capable of correcting at least one operating parameter of the patterning unit based on the monitoring result of the monitoring unit (e.g. capable of patterning over a first pattern to correct the first pattern) [0008]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of WO’020 and US’819 with a camera connected to a control unit, because US’230 suggests a camera to monitor patterning of a patterning unit and a control unit connected to the camera and capable of correcting at least one operating parameter of the patterning unit based on the monitoring result of the monitoring unit.
Claim(s) 3 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Pankoke (WO 2012/168020) and Gauss et al. (US 2008/0152819) as applied to Claim 1 above, and further in view of Brooks (US 2005/0175424).
Regarding Claims 3 and 14, the combination of US’042 in view of WO’020 and US’819 fails to teach a top pressure member (i.e. rollers). A setup of feed rollers or hold down rollers were conventional at the time of invention. For example, Brooks (US’155) is analogous art in the field of processing workpieces, including machining workpieces, and suggests a top pressure member, including a plurality of hold-down rollers above a belt to serve the purpose of holding down workpieces on a conveyor belt and provides evidence that such a setup is conventional (Fig. 4; [0019]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of WO’020 and US’819 with a conventional top pressure member comprising a conventional plurality of rollers for a conventional conveyor belt.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Pankoke (WO 2012/168020) and Gauss et al. (US 2008/0152819) as applied to Claim 1 above, and further in view of Adkins (US 6,379,444).
Regarding Claims 6-7, the combination of US’042 in view of WO’020 and US’819 fails to teach any specific drop size. Adkins (US’444) is analogous art in the field of drop on demand printing and is reasonably pertinent to inventor’s problem of patterning with drop on demand printing and teaches a drop size of about 10 to 150 pL for a resolution of between 200 and 300 dpi (Claim 37; col. 7, line 66 to col. 8, line 4). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of WO’020 and US’819 so that the droplet size can be variably set to values smaller than 200 pL, because US’444 suggests these values for drops on demand to achieve a desirable resolution.
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Pankoke (WO 2012/168020) and Gauss et al. (US 2008/0152819) as applied to Claim 1 above, and further in view of Okuda (US 2002/0135638).
Regarding Claims 6-8, the combination of US’042 in view of WO’020 and US’819 fails to teach details of drop on demand printers. Okuda (US’638) is analogous art in the field of drop-on-demand inkjet printers and pertinent to inventor’s problem of patterning work pieces [0004]. US’638 teaches an inkjet head capable of stable ejection at an ejection frequency of 16 kHz for a droplet volume of 25 pL [0085]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of WO’020 and US’819 with a drop-on-demand ink jet heads capable of ejection of 25 pL droplets at a frequency of 16 kHz to achieve a stable ejection at a desirable resolution.
Claim(s) 11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Pankoke (WO 2012/168020), Gauss et al. (US 2008/0152819), and Vermeulen et al. (US 2015/0239230) as applied to Claims 9 and 10 above, and further in view of Lehnhoff (WO 2019/234147, citing US 2021/0245493 as an English translation).
Regarding Claims 11 and 13, the combination of US’042 in view of WO’020, US’819, and US’230 fails to teach a hyperspectral camera. Lehnhoff (WO’147) is analogous art in the field of patterning a work piece and is reasonably pertinent to inventor’s problem of monitoring a patterning process (Abstract; [0005]. WO’147 teaches a hyperspectral camera capable of capturing an image of a pattern after patterning a work piece with a patterning unit (e.g. inkjet printer), whose data can be sent to a control unit (e.g. computer) of the patterning unit to correct at least one patterning parameter of the patterning unit based on the monitoring result (image) of the monitoring unit (camera) [0003,0065,0109-0110], because a hyperspectral camera is capable of recording and storing very high detail accuracy and resolution [0014]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of WO’020, US’819, and US’230 with a hyperspectral camera connected to the control unit, wherein the control unit is configured to correct at least one operating parameter of the patterning unit based on the monitoring result of the monitoring unit, because US’230 teaches a camera connected to the control unit and because WO’147 suggests capturing an image of a pattern patterned with a patterning unit with a hyperspectral camera, capable of recording and storing high detail accuracy and resolution, and sending image data of the captured image of the patterned pattern to the control unit to correct an operating parameter of the patterning unit.
Response to Arguments
Applicant’s amendment to the claims, filed 29 June 2026, with respect to the objection to the drawings has been fully considered and overcomes the objection. The objection to the drawings has been withdrawn.
Applicant’s amendment to the claims, filed 29 June 2026, with respect to the rejection of Claims 1, 3, and 5-12 under 35 USC 112(b) has been fully considered and overcomes the rejection of Claims 1,3, and 5-12 under this paragraph. The rejection of Claims 1, 3, and 5-12 under 35 USC 112(b) has been withdrawn.
Applicant’s amendment to the claims, filed 29 June 2026, with respect to the rejection of Claims 1, 6, and 12 under 35 USC 102 has been fully considered and overcomes the rejection of Claims 1,6, and 12 under this paragraph. The rejection of Claims 1, 6, and 12 under 35 USC 102 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the incorporation of subject matter previously rejected under 35 USC 103 into Claims 1 and 12.
Applicant's arguments filed 29 June 2026 with respect to the rejections of Claims 2-5,7-11, and 13 under 35 USC 103 as they now apply to present claims 1-3 and 5-14 have been fully considered but they are not persuasive.
In response to Applicant’s argument concerning the limitation “milling unit” (Remarks, p. 5), the limitation is still recited in terms of generic placeholder plus function under 35 USC 112(f). See “Claim Interpretation” section above.
In response to Applicant’s argument that grinding is distinct from milling and that the rejections do not teach or suggest a milling unit (Remarks, pp. 6, 9, Gauss et al. (US 2008/0152819) is now cited to show the obviousness of modifying the apparatus and process with a milling unit to perform machining by milling.
In response to Applicant’s argument that WO’020 teaches printing speed governed by a measured conveying speed (Remarks, p. 8), Claims 1 and 12 require that the control unit sets an operating parameter by taking into account a target conveying speed. They do not preclude a measured conveying speed as a target conveying speed.
Conclusion
No claim is allowed.
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/ Primary Examiner, Art Unit 1712
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