DETAILED ACTION
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.
Claims 11 is 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, line 2 sets forth "generally perpendicular" which is indefinite because generally perpendicular does not have to be perpendicular and there is not a frame of reference for perpendicular claimed.
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. Means language is recited in claim 5, line 4 “means of amperage integration”; claim 8, line 2 “means of a hinge member”; claim 9, line 4 “means of a cutting blade linkage”; claim 13, line 4 “means of amperage integration” and claim 15, line 4 “means of an arm pin subassembly”.
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: “tensioning assembly configured to apply tension” in claim 1, line 2; “crimp arm member to operatively connect” in claim 14, line 2 and “resilient member configured to bias” in claim 15, line 2. The specification describes “tensioning assembly” as a tensioning wheel coupled to a motive power source [0064]. The specification describes “resilient member” as a resilient tubular member [0069].
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.
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 1-8 and 10-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,2,6-8,10,11,14 and 16-19 of U.S. Patent No. 11,981,464. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the patent claims “a tensioning assembly, said tensioning assembly configured to apply tension to a piece of strapping; and a sealing assembly, said sealing assembly comprising at least one cam member, at least one crimping jaw member, and a motive power source, said at least one cam member operatively coupling said at least one crimping jaw member to said motive power source, and said at least one crimping jaw member of said sealing assembly configured to crimp a strapping sealing member so as to secure said piece of strapping around a package or bundle of items” in the first two paragraphs of claim 1. Claim 2 is identical to claim 2 in the patent. Claim 3 is identical to claim 6 in the patent. Claim 4 is identical to claim 7 in the patent. Claim 5 is identical to claim 8 in the patent. Claim 6 is identical to claim 10 in the patent. Claim 7 is identical to claim 11 in the patent. Claim 8 is identical to claim 14 in the patent. Claim 10 is identical to claim 16 in the patent. Claim 11 is identical to claim 17 in the patent. Claim 12 is identical to claim 18 in the patent. Claim 13 is identical to claim 19 in the patent.
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) 1-4,10-12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nasiatka et al. (10,577,137) in view of Figiel et al. (9,272,799). Regarding claim 1, Nasiatka discloses a tensioning assembly (22,40,42) configured to apply tension to a piece of strapping (col. 3, lines 60-64) and a sealing assembly (46,48,52,54) comprising at least one drive wheel (48), at least one crimping jaw member (54), and a motive power source (34), the at least one drive wheel (48) operatively coupling the at least one crimping jaw member (54; Fig. 9) to the motive power source (col. 4, lines 4 and 32-38) so that the at least one crimping jaw member (54) of the sealing assembly (46,48,52) is configured to crimp a strapping sealing member (col. 4, lines 47-49) by notching and secure the piece of strapping around a package (col. 3, lines 18-22). Nasiatka does not disclose that the drive wheel is a cam. Figiel teaches a drive wheel comprising a cam (318), at least one crimping jaw member (522,524), and a motive power source (302), the cam (318) operatively coupling said at least one crimping jaw member (522,524; Fig. 3) to the motive power source (col. 3, lines 60-67) so the at least one crimping jaw member (522,524) is configured to crimp a strapping sealing member (col. 4, lines 51-56). It would have been obvious to the skilled artisan prior to the effective filing date of the present invention to substitute the cam drive wheel as taught by Figiel for the drive wheel of Nasiatka in order to open and close the crimping jaw member for sealing a strap as the cam is rotated.
Regarding claim 2, Nasiatka discloses that a tensioning wheel (40) is driven by a motor (22) to apply tension to the piece of strapping (col. 3, lines 62-64). Regarding claim 4, Nasiatka does not disclose that a counterbalance is necessary for operation. Regarding claims 3,10 and 11, Nasiatka discloses that the tensioning motor (22) and sealing motor (34) are battery powered (col. 6, line 49) and are configured to be generally perpendicular to one another wherein Fig. 3 shows that the tensioning motor (22) is located within a housing (20) extending horizontally and the sealing motor (34) is located within a sealing housing (18) extending vertically (between 34,54; Fig. 5), "generally" perpendicular in claim 11, line 2 does not have to be perpendicular and it is not clear from the claim what frame of reference perpendicular refers to, a drive shaft or a location on the strapping tool. Regarding claim 12, Nasiatka discloses that a single motor is used for tensioning and sealing (col. 6, lines 54-56).
Regarding claim 14, Nasiatka discloses that the drive wheel (48) is connected to the at least one crimping jaw member (54) by a crimp arm member (50) and a crimp arm pin (62) and Figiel teaches that the drive wheel cam (318) is connected to the at least one crimping jaw member (522,524) by a crimp arm member (514) and a crimp arm pin (320).
Claim(s) 5-7 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nasiatka et al. (10,577,137) in view of Figiel et al. (9,272,799) and further in view of Ishii et al. (7,275,567). Nasiatka discloses that the tensioning motor (22) and the sealing motor (34) are electrically powered (col. 6, lines 48-52) and Nasiatka discloses a control system (80) but does not disclose that the control system measures motor load. Regarding claims 5,7 and 13 Ishii teaches (col. 5, lines 65-67 and col. 6, lines 39-47) in the binding art that motor load is measured by amperage integration means (59) and a control system (51) controls a motor (13) in at least one timer (51a). Ishii teaches that the measurement (I) of the motor load current of the motor (13) includes a peak current (col. 6, line 40) as an upper threshold and a lowest current value (ILO) as a lower threshold (col. 6, lines 50- 51). Regarding claim 6, Nasiatka discloses that the control system (80) includes control buttons (col. 6, lines 19-24). It would have been obvious to the skilled artisan prior to the effective filing date of the present invention to modify the control system of Nasiatka to include motor load current detection as taught by Ishii in order to measure motor load during strapping.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nasiatka et al. (10,577,137) in view of Figiel et al. (9,272,799) and further in view of Armes (2012/0180606). Nasiatka does not disclose hinged tool assemblies. Armes teaches (Fig. 2) a hand tool comprising a first tool assembly (12) which is connected to a second tool assembly (14) by a hinge means (22,24) which allows the first tool assembly to hinge relative to the second tool assembly (14). It would have been obvious to the skilled artisan prior to the effective filing date of the present invention to modify the tool of Nasiatka to include a hinge means as taught by Armes in order to position the first tool assembly and second tool assembly relative to one another to position the tool relative to a workpiece.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nasiatka et al. (10,577,137) in view of Figiel et al. (9,272,799) and further in view of Haberstroh et al. (9,745,090). Nasiatka in view of Figiel does not disclose a cam member operated cutting blade. Haberstroh (col. 8, lines 34-39) teaches a first cam member (94), a second cam member (130), link (104) and cutting blade (128) which is driven by the second cam member (130) cooperating with the first cam member (94). It would have been obvious to the skilled artisan prior to the effective filing date of the present invention to include a cam driven cutting blade as taught by Haberstroh in the strapping tool of Nasiatka in view of Figiel in order to drive a cutting blade with the cam and cut excess strap material as is known in the strapping art.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nasiatka et al. (10,577,137) in view of Figiel et al. (9,272,799) and further in view of Angarola (5,078,185). Angarola teaches a resilient tubular spring member (102) configured to bias crimp arm members (94) in an upward position (Fig. 8) so that crimping jaw members (40) are operatively coupled to a cam (82) and cam rollers (98) by an arm pin subassembly (96, Fig. 4). It would have been obvious to the skilled artisan prior to the effective filing date of the present invention to modify the crimp arm members to be biased with a tubular spring as taught by Angarola so that the crimp jaws are biased to an open position for a strap to be placed between the jaws prior to the strapping operation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD THOMAS TOLAN whose telephone number is (571)272-4525. The examiner can normally be reached M-F 7:30-5.
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/EDWARD T TOLAN/Primary Examiner, Art Unit 3725
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