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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/26/2025 has been entered.
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.
Claims 1-3 and 6-8 are 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 latest filed amendment on 11/26/2025 referring to “two upper roller and a single lower roller facing both of the upper rollers” has no sufficient support in the filed specification. No where in the originally filed specification is supporting such amendments.
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.
Claims 1-3 and 6-8 are 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.
The amended claim 1 referring to “two upper roller and a single lower roller facing both of the upper rollers”, is vague and confuse as it is not clear how or in which orientations the upper rollers and single lower roller will be facing each other’s!
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed “two upper roller and a single lower roller facing both of the upper rollers” must be shown in a clear manner or the feature(s) canceled from the claim(s).
The filed drawings of Fig. 2 show multiple rollers facing each other’s, but not clear if there is any showing “two upper roller and a single lower roller facing both of the upper rollers”.
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Urso (U.S. Patent No. 4,650,448) in view of Nakamura (JP-2019-099369) and further in view of Stolkin et al. (U.S. Pat. No. Re. 29,442)
Regarding claim 1: Urso discloses a folding apparatus comprising:
a conveying device including an upper roller and a lower roller facing the upper roller, the upper roller and the lower roller holding and conveying a sheet placed between the upper roller and the lower roller, see for example (Figs. 9-10; via upper roller 322 and lower roller 270/272 to convey sheet 362); and
a folding device that folds the sheet conveyed by the conveying device (Figs. 9, 17, and 18; via the folding mechanisms 340, 332, 334), wherein the folding device includes:
a holding part that holds the sheet on a conveying path (Figs. 17-18; via vacuum surface of 270/272 holding the sheet); and
an approximating part that approximates a folding piece of the sheet to a position opposite a held piece of the sheet held by the holding part (Fig. 9; via 330 mechanism) and/or Fig. 15; via side conveyor/support 232), and
the conveying device includes a retreating part that retreats the roller from the conveying path when the sheet is folded by the folding device, see for example (Figs. 9-10; via 322);
the lower roller has a length in a width direction longer than a length of the upper roller in the width direction perpendicular to a conveyance direction of the conveying device, see for example (Figs. 9-10; via the lower roller 270/272 having width longer than the upper roller 322).
Urso does not suggest a retreating part includes a moving part that moves an axis rotatably supporting the upper roller toward an outside of the conveying path by swinging the axis with a swinging shaft as a pivoting center, rather using a vertical moving mechanism to move the roller up/down. However, Nakamura discloses similar apparatus with the use of swinging mechanism of a conveying rollers, see for example (Figs. 4 & 11; via swinging mechanism 90 to swing rollers 43a).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Urso’s moving part to be a swinging part, instead of moving in linear vertical direction only, as suggested by Nakamura, as a matter of design choice to be made, in order to save vertical space and/or simplify the movements mechanism of the moving part.
Urso in view of Nakamura do not disclose the amended claims filed on 11/26/2025 referring to “two upper roller and a single lower roller facing both of the upper rollers” along a conveyance path along which the sheet is conveyed. However, Stolkin discloses similar folding/conveying apparatus using two upper roller and a single lower roller facing both of the upper rollers, see for example (Figs. 1-2; via upper rollers 34 in the middle section are facing lower single roller 40).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Urso in view of Nakamura’s rollers mechanism to have two upper rollers facing a single lower roller, as suggested by Stolkin, as a matter of design choice to be made, in order to provide improved conveying mechanism to the sheet and minimize installation efforts/coast and to be operated at low cost (column 1, lines 50-60).
Regarding claim 2: Urso discloses that in the approximating part includes a rotating part that rotates the folding piece toward the held piece centering a crease formed on the sheet as a rotation center, see for example (Fig. 9; via the rotating part 334).
Regarding claim 3: Urso disclose that the sheet has a longitudinal crease along a conveyance direction of the conveying device and a transverse crease along a width direction perpendicular to the conveyance direction (Fig. 11; via stack of blanks 20 shows crease lines in the X and Y directions), and the folding device folds the sheet at the longitudinal crease or at the transverse crease (Figs. 9 & 17-18 the shown folding mechanism to fold the flaps of blank 20).
Regarding claim 6: Nakamura discloses that the swinging shaft extends along the conveyance direction (Figs. 5 & 11; via the shown swinging shaft extending across wise along the conveyance direction, which is holding rollers 43a).
Regarding claim 7: Nakamura discloses that the retreating part moves the rollers from a conveyance position at which a rotating shaft of the roller is along the width direction perpendicular to the conveyance direction of the conveying device to a retreat position at which the rotating shaft is in a direction that intersects with the width direction, see for example (Figs. 5 & 11; via the swinging shaft of the retreating part position rollers 43 either perpendicular to the conveyance direction and/or along the conveyance direction).
Regarding claim 8: Nakamura discloses that the rotating shaft is along an up-down direction at the retreat position, see for example (Figs. 5 & 11; via the swinging shaft with rollers 43).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 and 6-8 have been considered but are moot because the new ground of rejection adjusted to address the newly added claims limitations.
The Office as set forth above believes that the amended and argued upon issue of having two upper rollers fully facing a single lower roller is something old and known in the art, and clearly suggested by Stolkin ’442 (Figs. 1-2; via upper two rollers 34 facing a single lower roller 40, at least at the middle section).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, the cited arts in the PTO-892 related to the same type of the claimed folding apparatus comprising; a conveying device, a folding device that folds the sheet conveyed by the conveying device, and/or a holding mechanism to hold and secure the conveyed articles to the conveyor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMEH TAWFIK whose telephone number is (571)272-4470. The examiner can normally be reached Mon-Fri. 8:00 AM - 4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelle Self can be reached on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMEH TAWFIK/Primary Examiner, Art Unit 3731
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