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 .
Examiner Notice
There are many limitations that remove from the claims without notice. See MPEP. 714 “Amendments, Applicant’s Action”, 37 C.F.R. 1.121, (c)(2) “The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through …”.
For examples, the language “the” has been deleted, claim 1, line 1 should be –
Claim 3, there is no strike-through the text that is removed.
….
To advance prosecution, Examiner will consider claims 1-15 as it is as seen in the claim set, 12/23/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5, 13, 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 5, 13 recites “one single track” is new matter because the original disclosure does not support it. See Figure 1, there are a plurality of tracks 30.
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 1-3, 5-19 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 1, the last sentence recites “such that at all times at least one cutting tooth is in engagement with the material web and fixes this for slipfree movement”; the language “at all times” is unclear. If there is no the material web to be cut, it is unclear how the “at all times” can be interpreted.
The scope of claims 5 and 13 is unclear since there are a plurality of tracks on the cylinder. Thus, it is unclear what scope to give “one single track”. Is one single track provided on each portion of the circumference, right? Also, claim 13 “one single track provide one the surface” is unclear what the “one” is referencing to.
Claim 9, “the first portion” lacks of antecedent basis for the limitation in the claim. This recitation is indefinite because it is unclear whether it refers a new portion or inherently refers to previously introduced portion.
Claim 17 “the one track” is unclear whether the one track refers a new track or the one single track of claim 5.
Claim 19 “the one track” lacks of antecedent basis for the limitation in the claim. This recitation is indefinite because it is unclear whether it refers a new track or inherently refers to previously introduced tracks.
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claims 1, 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claim.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 4-7, 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weck (WO 2009/036745 and Translation).
Regarding claim 1, Weck shows a punching cylinder (42, Figures 4-5) for rotary cutting of a material web, wherein the punching cylinder has a circumference (48) and a cutting contour (a leading blade for cutting the cut 20, Figure 2) provided on the circumference of the punching cylinder, the cutting contour being provided at a first circumferential portion of the punching cylinder (see the region where all blades are on the cylinder, Figure 4), wherein the punching cylinder has a track (left and right 52b, Figure 3), wherein the track is provided on the circumference at least at the first circumferential portion the track comprising a plurality of cutting teeth spaced apart in a circumferential direction (see teeth 54, 56 are spaced by a gap where the “50” is pointing to, Figure 9, in the circumferential direction or rotation direction),
wherein the track is arranged such that the material web is cut by the cutting teeth only in a residual material resulting from a cutting process
(MPEP 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent") and
please note that the invention is directed to a device (a punching cylinder) including a cutting contour, a track including cutting teeth… the function limitation “…the material web is cut by the cutting teeth only in a residual material resulting from a cutting process” has been considered and given weight inasmuch as it infers structure in the device (punching cylinder). It is a product by process claim. See MPEP 2113, and
wherein ends of the cutting teeth are arranged directly adjacent to one another or overlapping in the circumferential direction (Figure 9), such that at all times at least one cutting tooth is in engagement with the material web and fixes this for slipfree movement (see the issue above and see the discussion above, MPEP 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent").
Regarding claim 2, Weck shows that the plurality of cutting teeth run obliquely and/or in a curve relative to the circumferential direction of the punching cylinder (see Figures 3 and 9).
Regarding claim 3, Weck shows that the plurality of cutting teeth are hook-shaped or sickle-shaped (see Figure 9).
Regarding claim 5, as best understood, Weck shows that the punching cylinder has one single track provided on the circumference (see the issue above, there is one single track on each side portion).
Regarding claim 6, Weck shows that the punching cylinder has two tracks provided on the circumference(52b) , and wherein the tracks are arranged at opposite ends of the punching cylinder (see Figure 3, there are two end tracks 52b are at opposite ends of the punching cylinder).
Regarding claim 7, Weck shows that the punching cylinder has two tracks (left and right teeth) provided on the circumference, and wherein the cutting teeth of the two tracks are arranged mirror-symmetrically in order each to apply an outwardly directed transverse force (see Figure 3, the left teeth are mirror-symmetrically to the right teeth).
Regarding claims 16-17, Weck shows an apex of each cutting tooth points in the transport direction of the material web (while the cylinder turns, each of the cutting edges or an apex is pointing in the transport direction of the material web, Figure 3, for cutting the sheet 11) and wherein the one single track is arranged centrally on the punching cylinder (see Figure 4 of Weck, the knife system is centrally on the punching cylinder).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 8-15, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Weck in view of Kang (EP 0841649 A2).
Regarding claim 8, Weck shows all of the limitations as stated above except a punching sheet (cutting board) on the cylinder.
Kang shows a punching sheet (10, Figure 4) on a cylinder (46).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the punching cylinder of the Weck to have a punching sheet on a cylinder, as taught by Kang, in order to allow easily to remove or replace all cutters at a time for repairing if needed.
Regarding claim 9, the modified punching cylinder of Weck shows a cylinder for rotary cutting of a material web (see Kang’s Figure 4), wherein a cutting contour is provided on a first portion of a surface of the punching sheet (see Kang’s Figure 4), wherein the surface of the punching sheet has a track running in the longitudinal direction (see discussion in claim 1 above), wherein the track is provided at least at the first portion the track comprising a plurality of cutting teeth spaced apart in the longitudinal direction, wherein the track is arranged such that the material web is cut by the cutting teeth only in a residual material resulting from a cutting process (see all discussions in claims under 102 section above).
Please note the purpose of the modification to have a punching sheet for supporting all cutter of Weck for easily to remove or replace all cutters at the same time if needed.
Regarding claims 10-11, the modified punching cylinder of Weck shows all of the limitations as stated in claims 2-3 above.
Regarding claim 12, the modified punching cylinder of Weck shows ends of the plurality of cutting teeth are arranged directly adjacent to one another or overlapping in the longitudinal direction, such that at all times at least one cutting tooth is in engagement with the material web and fixes this for slipfree movement (see the discussion in claim 1 above).
Regarding claim 13, the modified punching cylinder of Weck shows that the punching sheet has one single track provided on one portion of the surface (see Figure 9 of Weck and see the discussion in claim 5 and the issue above).
Regarding claims 14 and 15, the modified punching cylinder of Weck shows that the punching sheet has two tracks provided on the surface, and wherein the tracks are arranged at opposite edges of the punching sheet and wherein the cutting teeth of the two tracks are arranged mirror-symmetrically in order each to apply an outwardly directed transverse force (see the discussion in claims 6-7 above).
Regarding claims 18 and 19, the modified punching cylinder of Weck shows that an apex of each cutting tooth points in the direction of a front end of the punching sheet (see Weck’s figure 9, the curved corner of each tooth is pointing to an end of the punching sheet. As the claim is written, it is not clear where the front end of the punching sheet be, therefore, any end of the punching sheet is considered as a front end of the punching sheet) and wherein the tracks are arranged centrally on the punching sheet (see Figure 4 of Weck, the knife system is centrally on the punching cylinder).
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See the art above.
With regards to “Amended claims 1 and 9 "the track is arranged such that the material web is cut by the cutting teeth only in a residual material resulting from a cutting process", this argument is acknowledged, but it is persuasive because this invention is directed to a punching cylinder or a punching sheet on the punching cylinder, the function or the workpiece has been considered and given weight inasmuch as it infers structure in the device (the punching cylinder or the punching sheet). It is a product by process claim. See MPEP 2113.
Further, MPEP 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent".
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
Conclusion
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.
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/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 3/13/2026