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 . 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 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.
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 1, 3, 5-11 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.
-Regarding claim 1, the phrase “wherein perforation is performed while the sheet material is held stationary by a transversal advance of the perforating head with respect to the sheet material across a width of said sheet material to form holes therein” is new matter. Examiner notes neither the specification nor drawings appear to provide support that the sheet material is actively held to prevent movement by the perforating head. Applicant noted paragraph 0023 of the specification. Examiner notes the provided specification within the application does not appear to provide paragraph numbers, and Examiner has utilized the PB Pub 2024/0399606, which appears to be Applicant’s intended paragraph of support. The paragraph only appears to provide support that the workpiece is not moving, not that the perforating head restricts movement (Paragraph 0023 “This embodiment requires that the sheet material does not move longitudinally, that it is static at the time of being punched It is due to the fact that the piercing element/s is/are supported on a head that moves transversely during perforation, bringing the perforating wheels into contact with the sheet material. If the sheet material had longitudinal movement, said perforating wheels, as they did not have longitudinal movement, would tear the sheet material itself in the area of contact with the piercing elements of the perforating wheels.”. What structure of the perforating head provides the function of holding the working stationary, while the workpiece is intended to be moved forward? If the workpiece is not stopped while the entire linear progression of the perforations begin, how is the perforating head able to process the entire width? For the purposes of examination, the workpiece will be treated as stationing during perforation, and the perforating head is capable of “holding” the workpiece during perforation to perform the desired perforating effect.
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 1,2,4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kenmotsu (U.S. Patent No. 2016/0144525) in view of Croft (U.S. Patent No. 6,190,297).
Regarding claim 1, Kenmotsu teaches a printing and perforating machine (Figure 1), comprising a perforating mechanism (30) and a printing mechanism (10) (Paragraphs 0017 and 0024) wherein the perforating mechanism (30) comprises:
a perforating head (31)(Figure 3A and Paragraph 0030-0031);
at least one perforating wheel (32) mounted on the perforating head (31) and provided with piercing elements (321); and
wherein perforation is performed while the sheet material is held stationary by a transversal advance of the perforating head with respect to the sheet material across a width of said sheet material to form holes therein (Figures 3A-4B; Examiner notes the perforating heads moves transverse (Direction A) relative to the stationary workpiece to be perforated (Examiner notes Perforations to be holes formed therein(Paragraphs 0030-0034).
Kenmotsu appears to provides a support element (Figure 4A noting the support structure for the paper (S) and the spacing between the support structure and the perforating head) but does not specifically provide a support element that defines with the perforating element a space for the passage of a sheet material, forming holes on the sheet material when it passes through this space.
Croft teaches a cutting element (54) with a piercing element (56, 58), and a support element (30,40,36) that defines with the cutting element a space for the passage of a sheet material (12), forming holes on the sheet material when it passes through this space (Figures 3 and 4; Col. 3 Lines 24-36, Col. 4, Lines 37-49).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the device of Kenmotsu to incorporate the teachings of Croft to provide a support element. In doing so, the support element reduces damage and dulling of the blade during use.
Regarding claim 6, the modified device of Kenmotsu teaches the printing and perforating machine according to claim 1, wherein the support element (30,40,36; Croft Figure 4) defines a longitudinal axis (Figure 4 noting the longitudinal direction), and the perforating head (34; Figure 2 Kenmotsu) is movable diagonally with respect to the longitudinal axis of the support element (Kenmotsu Figure 2 noting moving direction A and Figure 2 of Croft noting support element 30, 36)
Regarding claim 7, the modified device of Kenmotsu teaches the printing and perforating machine according to claim 1, wherein the perforating head (34) comprises a pressing element (73,74) that presses the perforating wheel (32) against the sheet material (Kenmotsu Figure 10A and Paragraph 0088).
Regarding claim 8, the modified device of Kenmotsu teaches the printing and perforating machine according to claim 1, wherein the support element (30,40,36) comprises bristles (42)(Croft Figures 3-4).
Regarding claim 9, the modified device of Kenmotsu teaches the printing and perforating machine according to claim 8, wherein the bristles are formed by modules (40,42)(Croft Figure 4).
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kenmotsu (U.S. Patent No. 2016/0144525) in view of Croft (U.S. Patent No. 6,190,297) as applied to claim 1 above, and further in view of Pratt (U.S. Patent No. 5,775,193).
Regarding claim 3, the modified device of Kenmotsu teaches the printing and perforating machine according to claim 2, but does not provide wherein the perforating mechanism comprises two perforating wheels coupled to each other by a mechanical coupling.
Pratt teaches it is known in the art of cutting to incorporate a cutting device with at least two cutting wheels (13,64)(Figure 5) wherein the at least two cutting wheels are coupled to each other by a mechanism coupling (55)(Figure 1; Col. 3, Lines 44-67).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have further modified the device of Kenmotsu to incorporate the teachings of Pratt to provide two cutting wheels coupled by a mechanical coupling. In doing so, it allows for axial repositioning of the cutting wheels are desired.
Regarding claim 5, Kenmotsu teaches the printing and perforating machine according to claim 4, wherein the machine comprises two perforating heads (6) that are movable to each other.
Pratt teaches it is known in the art of cutting to incorporate a cutting device with at least two cutting heads (13,64)(Figure 5) wherein the at least two cutting heads are movable relative to each other(Figure 1; Col. 3, Lines 44-67; Examiner notes the cutting units 13 are movable along the bar 55 as desired).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have further modified the device of Kenmotsu to incorporate the teachings of Pratt to provide two cutting heads movable relative to each other. In doing so, it allows for axial repositioning of the cutting heads as desired.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kenmotsu (U.S. Patent No. 2016/0144525) in view of Croft (U.S. Patent No. 6,190,297) as applied to claim 1 above, and further in view of Lee (U.S. Patent No. 3,753,380).
Regarding claim 10, the modified device of Kenmotsu teaches the printing and perforating machine according to claim 1, wherein the perforating mechanism is a perforating roller (32,70 Kenmotsu Figure 3A) and but does not provide the support element is a support roller.
Lee teaches it is known in the art of cutting systems to provide a rotary cutting element (24) with a supporting element (18) wherein the support element is a support roller with bristles (20,28 (Figures 1-3; Col. 2, Lines 25-48).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have further modified the device of Kenmotsu to incorporate the teachings of Lee to provide the supporting element as a support roller with bristles. In doing so, the workpiece is effectively constrained during cutting.
Regarding claim 11, the modified device of Kenmotsu teaches the printing and perforating machine according to claim 9, wherein the support roller (20) comprises bristles (28), (Lee Figure 2).
Response to Arguments
Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive.
In response to applicant's argument regarding the perforation elements (Page 2), a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Applicant argues the perforations are created by a rotating wheel with “punches” while the prior art is a blade. Examiner notes the prior art performs the same function by creating perforations utilizing a rotational mechanism with edges to provide the perforations (Examiner notes Figures 7A-7G of the specification appear to be similar structurally to the prior of Kenmotsu Figure 3B and perform the same function of Perforations in paper).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., punching functions) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the entirety of the secondary piece of art has not been utilized, and only the reference noting a support structure may be used in combination with a movable cutting element. As noted in the rejection above, the primary reference of Kenmotsu already appears to have a support structure as shown in Figure 4A, but is silent as to the specifics.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD D CROSBY JR whose telephone number is (571)272-8034. The examiner can normally be reached Monday-Friday 8:00-4:00.
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, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RICHARD D CROSBY JR/ 07/24/2026Examiner, Art Unit 3724
/GHASSEM ALIE/Primary Examiner, Art Unit 3724 07/24/2026
Prosecution Insights