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 .
Election/Restrictions
1. Applicant’s election of Group II claims 7-17 in the reply filed on 11/17/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
2. 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:
“tape overlapping portion” starting in claim 7 line 3 and elsewhere in the pending claims. “tape overlapping” is functional language, “portion” is a generic placeholder, and claim 7 does not provide further structure for performing this function. This is defined in [0102] of Applicant’s Specification as the binding material feeder- 202, which is defined as a rotator and tape holder in [0014] and will be interpreted as such and equivalents.
“binding portion” starting in claim 7 line 5 and elsewhere in the pending claims. “binding” is functional language, “portion” is a generic placeholder, and claim 7 does not provide further structure for performing this function. This is defined in [0014] of Applicant’s Specification as a clincher and magazine, and will be interpreted as such and equivalents.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
3. Claims 7-10 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cruzzolin et al. (WO 2015/162595; pdf included with Office Action; hereafter known as Cruzzolin).
Regarding claim 7, Cruzzolin teaches a binding machine configured to clamp a binding element (binding element- 29; pg. 6 lines 20-23) surrounding an object to be bound with a staple by clamping the binding element with a staple (pg. 15 lines 11-18) comprising a tape overlapping portion (front part- 15 which comprises first arm- 16, second arm- 19, and feed mechanism- 29; pg. 5 line 32- pg. 6 line 23) which in Figures 14 and 15 is shown in action as overlapping a first end and second end of the binding element- 29 in the form of a loop. The binding machine also includes a binding portion (stapling device- 35; pg. 7 lines 5-14; also Claim 13) that is shown in Figures 9 and 10 as clamping the binding element by deforming a staple (staple- 36) in a manner of clamping the overlapped part of the first end and the second end from an outer side of at least one of a pair of side edges of the tape (the staple clamps the binding element from the outer sides of each end, which is at least one pair of side edges).
While Cruzzolin does not teach that the binding element- 29 is a band-shaped tape, this and related claim limitations are directed to “Materials Worked Upon”. MPEP 2115 teaches- “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[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). See MPEP 2115. In the immediate case, Cruzzolin’s binding element is moved by toothed rolls (toothed rolls- 30 and 31; pg. 13 line 28- pg. 14 line 13). It is the opinion of the Examiner that the toothed rolls would be capable of moving a band-shaped tape, and therefore the apparatus of Cruzzolin fulfills all the functional limitations of claim 7, and tape-related claim limitations do not differentiate the immediate application from the prior art of Cruzzolin.
Regarding claim 8, as seen in Figure 18, the binding portion clamps the binding element by deforming the staple in a manner of clamping the overlapped part of the first end and the second end from the outer side of the one of the side edges in a lateral direction of the binding element.
Regarding claim 9, as seen in Figure 23, the staple of Cruzzolin includes (pg. 11 lines 4-9) a crown (rectilinear segment- 36a) and a first leg (second curved segment- 36c). When binding the binding element, the binding portion bends the first leg towards the crown (pg. 11 lines 10-24).
Regarding claim 10, Cruzzolin teaches of a second leg from the crown (first curved segment- 36b), that as seen between Figures 9 and 10 is bent in a similar manner to the first leg, which is in a direction towards the crown.
Regarding claim 16, Cruzzolin further teaches that the binding portion includes a bender (jaws- 38) configured to bend the staple (pg. 7 lines 15-19). This bender includes a recess to restrict movement of the first leg when being folded (pg. 7 lines 20-21; this is shown as a curve on gripping end- 38b in Figure 25). This recess is a curved surface that determines the bend of the top surface of the first leg while being folded (pg. 7 lines 15-19).
Regarding claim 17, Cruzzolin further teaches that the binding portion includes a bender (jaws- 38) configured to bend the staple (pg. 7 lines 15-19). Each jaws of the bender includes a recess to restrict movement of the first or second leg when being folded (pg. 7 lines 20-21; this is shown as a curve on gripping end- 38b in Figure 25). These recesses are curved surfaces that determines the bend of the top surface of either the first or second leg while being folded (pg. 7 lines 15-19).
Allowable Subject Matter
4. Claims 11-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 11, as noted in the rejection of claim 7, Cruzzolin does not teach the use of a tape, and therefore there would not be motivation for one of ordinary skill in the art to include a tape folder. As consequence, Cruzzolin does not teach or render obvious a tape folder and associated limitations.
5. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached on 571-273-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745