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 .
Double Patenting
2. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,987,065. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of U.S. Patent No. 11,987,065 discloses all the limitations of claims 1-18.
With respect to claim 1, note claim 1 of US Patent No. 11,987,065.
US Patent No. 11,987,065
Claim 1.
A tooling tray for a stencil printer, the tooling tray comprising:
a perimeter frame having four sides;
a first frame member spaced from a first side of the perimeter frame;
a second frame member spaced from a second side of the perimeter frame, the first side and the second side of the perimeter frame being parallel with one another;
a third frame member extending between and secured to the first frame member and the second frame member, the third frame member being configured to support at least one squeegee blade; a first support secured to the first frame member and a second support secured to the second frame member, the first support and the second support together being configured to support a tooling plate; and a third support secured to the first frame member and a fourth support secured to the second frame member, the third support and the fourth support together being configured to support a tooling plate, wherein the third frame member is configured be to be moved from a first position from the first frame member and the second frame member and installed in a second position on the first frame member and the second frame member, the second position being spaced from the first position
US Patent Application 18/651,845
Claim 1
A tooling tray, comprising:
a perimeter frame having four sides;
a first frame member spaced from a first
side of the perimeter frame;
a second frame member spaced from a
second side of the perimeter frame, the
first side and the second side of the
perimeter frame being parallel with one
another; and
a third frame member extending between
and secured to the first frame member
and the second frame member, the third
frame member being configured to
support at least one item;
wherein the third frame member is
configured be to be moved
from a first position from the first frame
member and the second frame member
and installed in a second position on the
first frame member and the second frame
member, the second position being
spaced from the first position.
With respect to claim 2, note claim 2 of US Patent No. US Patent No. 11,987,065
US Patent No. US Patent No. 11,987,065
Claim 2
2. The tooling tray of claim 1, wherein the first position of the third frame member is located along midpoints of the first frame member and the second frame member.
US Patent Application 18/651,845
Claim 2
2. The tooling tray of claim 1, wherein the first position of the third frame member is located along midpoints of the first frame member and the second frame member.
With respect to claim 3, note claim 3 of US Patent No. 11,987065.
US Patent No. 11,987,065
Claim 3
The tooling tray of claim 2, wherein the second position of the third frame member is spaced from the first position toward one of a third side and a fourth side of the perimeter frame.
US Patent Application 18/651,845
Claim 3
3. The tooling tray of claim 2, wherein the second position of the third frame member is spaced from the first position toward one of a third side and a fourth side of the perimeter frame.
With respect to claim 4, note claim 4 of US Patent No. 12,017,467.
US Patent No. 11,987,065
Claim 4
The tooling tray of claim 1, wherein the third frame member includes opposite ends, each end having a connector configured to mate its respective first frame member and second frame member.
US Patent Application 18/651,845
Claim 4
The tooling tray of claim 1, wherein the third frame member includes opposite ends, each end having a connector configured to mate its respective first frame member and second frame member.
With respect to claim 5, note claim 5 of US Patent No. 11,987,065.
US Patent No. 11,987,065
Claim 5
The tooling tray of claim 4, wherein each connector includes at least one downwardly extending prong configured to be received in an opening of its respective first frame member or second frame member to position the third frame member with respect to the first frame member and the second frame member.
US Patent Application 18/651,845
Claim 5
The tooling tray of claim 4, wherein each connector includes at least one downwardly extending prong configured to be received in an opening of its respective first frame member or second frame member to position the third frame member with respect to the first frame member and the second frame member.
With respect to claim 6, note claim 6 of US Patent No. 11,987,065.
US Patent No. 11,987,065
Claim 6
The tooling tray of claim 1, wherein each connector includes a spring-loaded detent assembly configured to releasably secure the connector to its respective first frame member or second frame member.
US Patent Application 18/651,845
Claim 6
The tooling tray of claim 1, wherein each connector includes a spring-loaded detent assembly configured to releasably secure the connector to its respective first frame member or second frame member.
With respect to claim 7, note claim 7 of US Patent No. 11,987,065.
US Patent No. 11,987,065
Claim 7
The tooling tray of claim 1, wherein the third frame member includes at least one squeegee blade support structure.
US Patent Application 18/651,845
Claim 7
The tooling tray of claim 1, wherein the third frame member includes at least one squeegee blade support structure.
With respect to claim 8, note claim 8 of US Patent No. 11,987,065.
US Patent No. 11,987,065
Claim 8
The tooling tray of claim 7, wherein the third frame member further includes a drip tray secured to a bottom surface of the third frame member.
US Patent Application 18/651,845
Claim 8
The tooling tray of claim 7, wherein the third frame member further includes a drip tray secured to a bottom surface of the third frame member.
With respect to claim 9, note claim 1 of US Patent No. 11,987,065.
US Patent No. 11,987,065
Claim 1
A tooling tray for a stencil printer, the tooling tray comprising:
a perimeter frame having four sides;
a first frame member spaced from a first side of the perimeter frame;
a second frame member spaced from a second side of the perimeter frame, the first side and the second side of the perimeter frame being parallel with one another;
a third frame member extending between and secured to the first frame member and the second frame member, the third frame member being configured to support at least one squeegee blade;
a first support secured to the first frame member and a second support secured to the second frame member, the first support and the second support together being configured to support a tooling plate; and a third support secured to the first frame member and a fourth support secured to the second frame member, the third support and the fourth support together being configured to support a tooling plate, wherein the third frame member is configured be to be moved from a first position from the first frame member and the second frame member and installed in a second position on the first frame member and the second frame member, the second position being spaced from the first position
US Patent Application 18/651,845
Claim 9
A tooling tray, comprising:
a first support secured to the first frame
member and a second support secured to
the second frame member, the first
support and the second support together
being configured to support a tooling
plate; and a third support secured to the
first frame member and a fourth support
secured to the second frame member, the
third support and the fourth support
together being configured to support a
tooling plate
With respect to claim 10, note claim 9 of US Patent No. 11,987,065.
US Patent No. 11,987,065,
Claim 9
The tooling tray of claim 1, wherein the first support and the second support are positioned adjacent a third side of the perimeter frame and the third support and the fourth support are positioned adjacent a fourth side of the perimeter frame.
US Patent Application 18/651,845
Claim 10
The tooling tray of claim 1, wherein the first support and the second support are positioned adjacent a third side of the perimeter frame and the third support and the fourth support are positioned adjacent a fourth side of the perimeter frame.
With respect to claim 11, note claim 10 of US Patent No. 11,987,065.
US Patent No. 11,987,065,
Claim 10
The tooling tray of claim 9, wherein the first support and the second support are spaced apart from one another a predetermined distance sufficient to support the tooling plate.
US Patent Application 18/651,845
Claim 11
The tooling tray of claim 9, wherein the first support and the second support are spaced apart from one another a predetermined distance sufficient to support the tooling plate.
With respect to claim 12, note claim 11 of US Patent No. 11,987,065.
US Patent No. 11,987,065,
Claim 11
The tooling tray of claim 10, wherein the third support and the fourth support are spaced apart from one another a predetermined distance sufficient to support the tooling plate.
US Patent Application 18/651,845
Claim 12
The tooling tray of claim 10, wherein the third support and the fourth support are spaced apart from one another a predetermined distance sufficient to support the tooling plate.
With respect to claim 13, note claim 12 of US Patent No. 11,987,065.
US Patent No. 11,987,065,
Claim 12
The tooling tray of claim 1, wherein the first support, the second support, the third support, and the fourth support each include a feature configured to engage a mating feature associated with the tooling plate to support the tooling plate.
US Patent Application 18/651,845
Claim 13
The tooling tray of claim 1, wherein the first support, the second support, the third support, and the fourth support each include a feature configured to engage a mating feature associated with the tooling plate to support the tooling plate.
With respect to claim 14, note claim 13 of US Patent No. 11,987,065.
US Patent No. 11,987,065,
Claim 13
The tooling tray of claim 12, wherein the feature is a pin and the mating feature is an opening sized to receive the pin.
US Patent Application 18/651,845
Claim 14
The tooling tray of claim 12, wherein the feature is a pin and the mating feature is an opening sized to receive the pin.
With respect to claim 15, note claim 1 of US Patent No. 11,987,065.
US Patent No. 11,987,065
Claim 1
A tooling tray for a stencil printer, the tooling tray comprising:
a perimeter frame having four sides;
a first frame member spaced from a first side of the perimeter frame;
a second frame member spaced from a second side of the perimeter frame, the first side and the second side of the perimeter frame being parallel with one another;
a third frame member extending between and secured to the first frame member and the second frame member, the third frame member being configured to support at least one squeegee blade;
a first support secured to the first frame member and a second support secured to the second frame member, the first support and the second support together being configured to support a tooling plate; and a third support secured to the first frame member and a fourth support secured to the second frame member, the third support and the fourth support together being configured to support a tooling plate, wherein the third frame member is configured be to be moved from a first position from the first frame member and the second frame member and installed in a second position on the first frame member and the second frame member, the second position being spaced from the first position
US Patent Application 18/651,845
Claim 15
A tooling tray, comprising:
a first support secured to the first frame
member and a second support secured to
the second frame member, the first
support and the second support together
being configured to support a tooling
plate; and a third support secured to the
first frame member and a fourth support
secured to the second frame member, the
third support and the fourth support
together being configured to support a
tooling plate
With respect to claim 16, note claim 9 of US Patent No. 11,987,065.
US Patent No. 11,987,065,
Claim 9
The tooling tray of claim 1, wherein the first support and the second support are positioned adjacent a third side of the perimeter frame and the third support and the fourth support are positioned adjacent a fourth side of the perimeter frame.
US Patent Application 18/651,845
Claim 16
The tooling tray of claim 1, wherein the first support and the second support are positioned adjacent a third side of the perimeter frame and the third support and the fourth support are positioned adjacent a fourth side of the perimeter frame.
With respect to claim 17, note claim 10 of US Patent No. 11,987,065.
US Patent No. 11,987,065,
Claim 10
The tooling tray of claim 9, wherein the first support and the second support are spaced apart from one another a predetermined distance sufficient to support the tooling plate.
US Patent Application 18/651,845
Claim 17
The tooling tray of claim 9, wherein the first support and the second support are spaced apart from one another a predetermined distance sufficient to support the tooling plate.
With respect to claim 18, note claim 11 of US Patent No. 11,987,065.
US Patent No. 11,987,065,
Claim 11
The tooling tray of claim 10, wherein the third support and the fourth support are spaced apart from one another a predetermined distance sufficient to support the tooling plate.
US Patent Application 18/651,845
Claim 18
The tooling tray of claim 10, wherein the third support and the fourth support are spaced apart from one another a predetermined distance sufficient to support the tooling plate.
Claim Rejections - 35 USC § 102
3. 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 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.
Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lambert (US Patent 3,650,208).
With respect to claim 1, Lambert teaches a tooling tray, comprising:
a perimeter frame (40) having four sides (42, 44, 46, 48);
a first frame member (190) spaced from a first side (46) of the perimeter frame (40);
a second frame member (188) spaced from a second side (48) of the perimeter frame (40), the first side (46) and the second side (48) of the perimeter frame (40) being parallel with one another (Figure 1);
and a third frame member (72) extending between and secured to the first frame member (190) and the second frame member (188), the third frame member (72) being configured to support at least one item (102);
wherein the third frame member (72) is configured be to be moved from a first position from the first frame member (190) and the second frame member (188) and installed in a second position on the first frame member (190) and the second frame member (180), the second position being spaced from the first position (Abstract, Column 3, Line 67-49; note: the third frame moves therefore it is apparent that frame member 72 moves to different positions such as a first and second position).
With respect to claim 2, Lambert teaches the first position of the third frame (72) member is located along midpoints of the first frame member (190) and the second frame member (188, note: The 3rd member moves along 1st and 2nd Frame members. Therefore, there are multiple positions the 3rd frame member can be positioned such as the midpoints of the 1st and 2nd Frame members).
With respect to claim 3, Lambert teaches the second position of the third frame member (72) is spaced from the first position toward one of a third side (192) and a fourth side (192) of the perimeter frame (note: The 3rd member moves along 1st and 2nd Frame members. Therefore, there are multiple positions the 3rd frame member).
With respect to claim 4, Lambert teaches the third frame member (72) includes opposite ends, each end having a connector (74, 78) configured to mate its respective first frame member (190) and second frame member (188).
With respect to claim 7, Lambert teaches the third frame member (72) includes at least one squeegee blade support structure (120, 142, 144).
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.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Lambert (US Patent 3,650,208) in view of Losiewicz et al. (US 20200391530).
With respect to claim 5, Lambert teaches the claimed invention with the exception of each connector includes at least one downwardly extending prong configured to be received within an opening of its respective first frame member or second frame member to position the third frame member with respect to the first frame member and the second frame member.
Losiewicz et al. teaches each connector includes at least includes at least one downwardly extending prong (88) configured to be received in an opening (94a) of its respective first frame member (30) or second frame member to position the third frame member with respect to the first frame and the second frame member (Paragraph 0077, Figures 7A-C).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to modify the invention taught by Lambert to provide a connector with a downwardly extending prong as taught by Losiewicz et al. for the purpose of ensuring the connector provides a secure and stable connection with a frame.
With respect to claim 6, Losiewicz et al. teaches each connector includes a spring-loaded detent assembly (98) configures to releasably secure the connector to its respective first frame member or second frame member (Paragraphs 0077, 0078, Figures 7A-7C).
Allowable Subject Matter
Claim 8 is 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, provided the applicant overcomes the non-statutory Double Patenting rejections above.
Claims 9-18 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, provided the applicant overcomes the non-statutory Double Patenting rejections above.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 8, the prior art does not teach or render obvious the third frame member further includes a drip tray secured to a bottom surface of the third frame member.
With respect to claims 9 and 15, the prior art does not teach or render obvious a first support secured to the first frame member and a second support secured to the second frame member, the first support and the second support together being configured to support a tooling plate, and a third support secured to the first frame member and a fourth support secured to the second frame member, the third support and the fourth support together being configured to support a tooling plate.
Response to Arguments
Applicant's arguments filed 11/17/25 have been fully considered but they are not persuasive.
A Terminal Disclaimer has not been filed, therefore the claims are still rejected under Double Patenting until a Terminal Disclaimer is filed.
With respect to applicant’s arguments, the arguments rely on language solely recited in preamble recitations. When reading the preamble in the context of the entire claim, the recitation “A Tooling Tray” is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. Consequently, preamble language merely extolling benefits or features of the claimed invention does not limit the claim scope without clear reliance on those benefits or features as patentably significant. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Additionally, it is noted that specifically there is no functionality and no fundamental characteristics of the invention recited in claim 1. Further, the limitation, “the third frame member being configured to support at least one item” broadly recites “at least one item”, however there are no specifics as to what item, applicant is referring. The item could be any item. Therefore, the examiner is not persuaded of any error in the above rejections.
The applicant cites MPEP 2111.02 [which in turn cites Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002)] in stating “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.” The examiner concurs with this statement.
The applicant goes on to state that Statements in the preamble reciting the purpose or intended used of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art and that the term “tooling tray” discloses a fundamental characteristic to the claims. The applicant goes on to state that “the phrase “tooling tray” connotes a flat, shallow container designed to organize, store, and transport tools and small parts.”
As cited by the applicant, The determination of whether preamble recitations are structural limitations can be resolved only on review of the entirety of the application "to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." [emphasis added by examiner] Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989). The applicant is arguing that extraneous limitations such as a flat, shallow container designed to organize, store, and transport tools and small parts should be read into the claim. If the applicant wants limitations such as “a flat, shallow container storing and transporting tools and small parts” to be read in to the claim, such language should be definitively added to the claim, provided such language has support in the specification as originally filed. Furthermore, a squeegee is a tool and it is transported by the device of Lambert.
MPEP 2112.02 II, states, “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. In the instant application, the body of the claims set forth all the limitations of the claim. Recitation of the tooling tray is an intended use and does not impart specific structure to the remainder of the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Black (U.S. Patent No. 3780652) teaches that the apparatus changes the squeegee and flow coater for operation when desired. See col. 2, lines 19-21. A squeegee is a tool transported by the system.
THIS ACTION IS MADE FINAL. 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 MARISSA LIANA FERGUSON SAMRETH whose telephone number is (571)272-2163. The examiner can normally be reached M-F 8 a.m.-5 p.m.
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, Stephen Meier can be reached at 571-272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Marissa Ferguson-Samreth/Examiner, Art Unit 2853
/CHRISTOPHER E MAHONEY/Primary Examiner, Art Unit 2852