Notice of Pre-AIA or AIA Status
1. 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
2. Applicant's election with traverse of the restriction between Groups I and II (method and apparatus claims) in the reply filed on 3/9/2026 is acknowledged. The traversal is on the ground(s) that the statement in the restriction requirement that the process as claimed can be performed by a materially different apparatus or that the apparatus as claimed can perform a materially different process is conclusory and doesn’t establish that a materially different apparatus could perform the claimed process. This is not found persuasive because the lifting step in method claim 1 could be performed by hand, rather than using a lifting mechanism. Claims 11-19 require a lifting mechanism. Also, the method in claim 20 could be performed by an apparatus that does not have one or more processors coupled to one or more memories and configured to cause the automated racking system to adjust angles of the sheet based on the lengthwise position determined by the first sensor, as required in claims 11-19. The method in claim 20 does not require any specific lengthwise position or widthwise position to be determined with sensors, as required in apparatus claims 11-19. In addition, the methods in claims 1 and 20 could be performed without one or more processors coupled with the one or more memories and individually or collectively configured to, in association with executing the code, cause the automated racking system to move the sheet, as claimed. No option of collective performance between processors and memories while executing code is required in any of the method claims 1-10 and 20. The method claims and apparatus claims are patentably distinct from one another. Different searches are needed for the method claims and the apparatus claims. It is undue burden on the examiner to examine all of the claims in one application.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-10 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/9/2026.
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.
3. Claim 11-19 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.
Claim 11 recites the limitation "the first sensor". There is insufficient antecedent basis for this limitation in the claim. Claim 17 also recites the first sensor. Claims 12-19 depend from claim 11, and therefore, have the same indefiniteness issue as outlined above with regard to claim 11.
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.
4. Claims 11-12 and 14-19, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2008/0250959 (Van de Straete) (hereinafter “Van de Straete”) in view of U.S. Patent Application Publication No. 2022/0055393 (Diekmann e al.) (hereinafter “Diekmann”).
Regarding claim 11, Figs. 6-10 of Van de Straete show an automated racking system (Fig. 6) comprising:
a set of sensors (L1 and L2);
a second sensor (L3);
a lifting mechanism (including 4A, 4B and 5);
one or more processors (6) configured to cause the automated racking system (Fig. 1) to:
lift a sheet (printing plate 3) from an initial position (at 2) using the lifting mechanism (including 4A, 4B and 5);
determine a lengthwise position and a lengthwise distance of the sheet (3) by moving the sheet (3) toward the set of sensors (L1 and L2);
determine a widthwise distance of the sheet (3) by moving the sheet (3) toward the second sensor (L3);
adjust angles (pivoting) of the sheet (3) based on the lengthwise position determined by the first sensor (L1); and
place the sheet (3) at a predetermined position (“input section of plate imaging bed” in abstract) for downstream processing (imaging) based on the lengthwise distance and the widthwise distance. Van de Straete discloses most of the limitations of this claim including one or more processors (6) in a computer (7), but Van de Straete does not explicitly state that the computer (7) has one or more memories, and does not show one or more processors coupled with the one or more memories, as claimed.
Diekmann shows that it is common in the art to provide an automated racking system (Fig. 4D) with one or more memories (computer memory in numbered paragraph [0081]) that store processor-executable code (machine readable instructions in numbered paragraph [0081]); and one or more processors (630 in Fig. 4D) coupled with the one or more memories (computer memory) and individually or collectively configured to, in association with executing the code (machine readable instructions), cause the automated racking system (Fig. 4D) to move a printing plate from an initial position to a predetermined position. It would have been obvious to one having ordinary skill in the art before the effective filing date to provide the Van de Straete apparatus with one or more memories that store processor-executable code and couple one or more processors to the one or more memories to cause the automated racking system of Van de Straete to move the printing plate (sheet) from the initial position to the predetermined position, because Diekmann teaches that it is common in the art to utilize a memory coupled to a processor to control movement of printing plates in a similar type of automated racking system to that of Van de Straete.
Regarding claim 12, Figs. 4A and 6B of Diekmann show that the automated racking system (Fig. 4D) includes a compressed air mechanism (570), wherein the one or more processors (630) further cause the automated racking system (Fig. 4D) to:
provide compressed air, using the compressed air mechanism (570), over a surface of the sheet (400) causing the sheet (400) to vibrate, thereby removing an attached second sheet back to the initial position (sheet stack). See, e.g., numbered paragraph [0077] of Diekmann. Numbered paragraphs [0005], [0025], [0027], [0056], and [0065] of Diekmann explain that the air mechanism reduces friction between the sheet (400) and the surface below it, and numbered paragraph [0057] explains that the top sheet [400] is on a stack of sheets, so that air goes between sheets to reduce friction between sheets on the stack. It would have been obvious to one having ordinary skill in the art before the effective filing date to provide the Van de Straete apparatus with a compressed air mechanism controlled by a processor, for the purpose of reducing friction between sheets during feeding, as taught by Diekmann.
Regarding claim 14, Figs. 1-5 of Van de Straete show that the one or more processors (6) further cause the automated racking system (Fig. 1) to:
oscillate (pivot back and force in directions P1 and P2), prior to determining the lengthwise position, the sheet (3) using a lifting mechanism (including 4A, 4B and 5) used for lifting the sheet (3) from the initial position (at 2).
Regarding claim 15, MPEP2115 states that "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). Since the recitation “wherein the sheet is raw stock metal sheet” in claim 15 depends upon the material or article worked upon by the structure being claimed, this recitation does not patentably distinguish claim 15 from the prior art apparatus of Van de Straete in view of Diekmann.
Regarding claim 16, numbered paragraph [0028] of Van de Straete teaches that a suction gripper (including 4A, 4B and 5) is used to lift the sheet from the initial position (at 2).
Regarding claim 17, Figs. 6-10 of Van de Straete show that the first sensor (including L1 and L2) includes two proximity sensors (L1 and L2) positioned to detect edges of the lengthwise position of the sheet (3).
Regarding claim 18, Figs. 6-10 of Van de Straete show that the second sensor (L3) includes a proximity sensor positioned to detect an edge of a widthwise position of the sheet (3).
Regarding claim 19, MPEP2115 states that "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). Since the recitation “wherein the sheet has a thickness between 0.010 inches to 0.100 inches” in claim 19 depends upon the material or article worked upon by the structure being claimed, this recitation does not patentably distinguish claim 19 from the prior art apparatus of Van de Straete in view of Diekmann.
Allowable Subject Matter
5. Claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS A MORRISON whose telephone number is (571)272-7221. The examiner can normally be reached M-F 9am - 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, Mike McCullough can be reached at 571-272-7805. 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.
/THOMAS A MORRISON/Primary Examiner, Art Unit 3653
Prosecution Insights