DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12006709. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the claimed limitations of the current applications are either disclosed or inherently disclosed by the claims of the patent.
Claim Objections
Claim 1 is objected to because of the following informalities:
“a second body part includes:” should be “the second body part includes:”
Appropriate correction is required.
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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) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kusakari (JP 3050367) in view of Koji (JP H07290177)
Regarding claim 1, modified Kusakari teaches a binding machine (Fig. 1-7) comprising: a first body part (shown below); a second body part (shown below); and an elongated connecting part (shown below) that connects the first body part and the second body part, wherein the first body part includes a grip part; a second body part includes: a feeding unit (3) configured to feed a wire; a first guide (11) extending in a first direction (left and right direction as viewed in Fig. 2) from an end portion (left end portion) on one side of the body part, configured to guide the wire fed by the feeding unit, and having a first induction part (part of 11 on the left end side) provided on a tip end-side (left end side) in the first direction; a second guide (part of 12) spaced from the first guide with an interval (interval between 11 and 12), in which a binding object (a) is inserted, in a second direction (vertical as viewed in Fig. 2) orthogonal to the first direction, and configured to guide the wire fed by the feeding unit; and a twisting unit (9) configured to twist the wire guided by the first guide and the second guide, wherein the first induction part is constituted by a surface inclined (16) in a direction in which the interval between the first guide and the second guide decreases from a tip end-side (left end side) toward a base end-side (right end side) of the first induction part in the first direction. (see Fig. 2)
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Kusakari fails to disclose a pair of grip parts; wherein the pair of grip parts is disposed at a distance along a third direction orthogonal to the first direction and the second direction, and the first induction part is disposed between the pair of grip parts in the third direction.
Koji teaches a similar binding machine comprising a pair of grip parts (26); wherein the pair of grip parts is disposed at a distance along a third direction (along the longitudinal axis direction of 26) orthogonal to a first direction (longitudinal direction of the binding machine) and a second direction (left and right direction of Fig. 5).
It would have been obvious to one having ordinary skill in the art at the time of filing to modify the handle of Kusakari to be extended out in the third direction and laterally disposed as taught by Koji (Fig. 1-5) in order to provide better ergonomics. When modified, the first induction part will be disposed between the pair of grip parts in the third direction.
Regarding claim 2, modified Kusakari teaches the binding machine according to Claim 1, wherein the first guide has a groove portion (see Fig. 3: part of groove 11b is a groove portion that is away from the further tip end-side than the first induction part) configured to guide the wire, and wherein the first induction part is provided on a further tip end-side than an end portion of the groove portion.
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Regarding claim 3, modified Kusakari teaches the binding machine according to Claim 1, wherein an inclination angle of the first induction part relative to an axis line (horizontal line) of the twisting unit is equal to or smaller than 45.
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Regarding claim 4, modified Kusakari teaches the binding machine according to claim 1.
Kusakari fails to disclose wherein a length of the first guide in the first direction is equal to or smaller than 110mm.
However, it would have been an obvious matter of design choice to choose a length of the first guide in the first direction to be equal to or smaller than 110mm, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Also, it would be obvious to choose a size based on the material size that is configured to be bound by the binding machine since the material is required to be inside/ between the guides.
Regarding claim 5, modified Kusakari teaches the binding machine according to further comprising a first visible part (top part of 11) for enabling a position of the first guide to be visually recognized via the body part from an opposite side to the first guide.
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Regarding claim 6, modified Kusakari teaches the binding machine according to Claim 5, wherein the first visible part protrudes further outward than an outer shape of the body part (see below).
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Regarding claim 7, modified Kusakari teaches the binding machine according to Claim 6, wherein the first visible part is provided on a base end-side (right end side of 11) of the first guide and protrudes in the second direction (vertical direction. Top portion of 11 protrudes from the bottom side of 11).
Regarding claim 8, modified Kusakari teaches the binding machine according to further comprising a second visible part (11a – capable of aligning from the side) capable of aligning a direction of the first guide with respect to the binding object.
Regarding claim 9, modified Kusakari teaches the binding machine according to further comprising a second induction part (16 of 12) positioned on a side on which the second guide is provided, and configured to guide the binding object between the first guide and the second guide.
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Regarding claim 10, modified Kusakari teaches the binding machine according to Claim 9, further comprising a third guide (shown above. examiner notes that there are 4 quadrants to the loop 2 and 3rd guide guides the loop on the bottom left and the 2nd guide guide the loop on the bottom right) provided on a tip end-side (left end tip) of the second guide, wherein the second induction part (16 of 12) is provided to the third guide.
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Regarding claim 11, modified Kusakari teaches the binding machine according to Claim 10, wherein the second induction part is constituted by providing a surface (surface of 16) along which an interval (gap between the 3rd guide and the 1st guide) between the third guide and the first guide decreases from a tip end (left end of 3rd guide) of the third guide toward the tip end-side (left end of 2nd guide) of the second guide.
Regarding claim 12, modified Kusakari teaches the binding machine according to wherein the first guide comprises a guide arm (14) configured to guide the wire fed by the feeding unit, and wherein the first induction part is detachably (11 and 16 are detachably mounted on 14) mounted to the guide arm.
Regarding claim 13, modified Kusakari teaches the binding machine according to wherein the first guide comprises a protrusion (shown below) protruding in the third direction (into the pg. of Fig. 2).
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Regarding claim 14, modified Kusakari teaches the binding machine according to Claim 13, wherein the first guide comprises a guide arm (shown below) configured to guide the wire fed by the feeding unit, and a cover part (shown below) configured to cover the guide arm (covers from the back and side), and wherein the cover part is provided with the protrusion.
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Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are not persuasive. Applicant alleges that Kusakari fail to disclose amended claim 1. However, the examiner relies on the additional teachings of Koji to support the newly amended rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
EP 1418124 and US 5944064 teach similar binding machines with an induction part a surface inclined.
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 BOBBY YEONJIN KIM whose telephone number is (571)272-1866. The examiner can normally be reached M-F 9 am - 5 pm.
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, Christopher Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOBBY YEONJIN KIM/ Examiner, Art Unit 3725
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