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
Applicant’s election without traverse of claims 1-11 in the reply filed on 12/29/2025 is acknowledged.
Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/29/2025.
Claim Objections
The following claim(s) are objected to because of these informalities:
In claim 1, line 6 “the second to clamp” should read “the second portion to clamp”.
In claim 6, line 3 “coating exterior” should read "coating an exterior".
Appropriate correction is required.
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.
Claims 1-5 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 pre-AIA the applicant regards as the invention.
Claim 1, line 3 recites "easy-to-tear sticker". The term easy-to-tear is a subjective and relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Dependent claims fall herewith.
Claim 1, lines 8 and 12 recites "the component to be torn". This term is also recited in claims 2 and 4. It is unclear whether this claim element is the same or different from the easy-to-tear sticker recited earlier in the claim and/or the film recited in the preamble, or alternatively, whether this term refers to the component alone, rather than the film to be torn. For the purpose of examination, this term reads on “the component”. Dependent claims fall herewith.
Claim 6, line 2 recites "the first portion and the second portion have a same structure". It is unclear whether the term “same structure” references a particular structure (i.e. component) or not. It is also unclear whether the term same structure instead references all of the structural features recited later in this claim. For the purpose of examination, claim 6, lines 2-5 read on “the first portion and the second portion each comprise a rigid clamping portion and a first elastic buffer portion coating an exterior of the rigid clamping portion, wherein each rigid clamping portion comprises a clamping surface, and each clamping surface is disposed exposed from a respective first elastic buffer portion”. Dependent claims fall herewith.
Claim 7, line 2 recites "the clamping face". The term is not previously used in this claim or its parent claims(s), and does not have proper antecedent basis, making it unclear what structure is being referenced. Furthermore, it is unclear what claimed component must have this face. For the purpose of examination, claim 7 reads on "a clamping face of the film tearing roller".
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 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.
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 limitations are:
First moving structure except for claim 10 which recites structure for this element
Second moving structure except for claim 11 which recites structure for this element
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 § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Garben (US PG Pub 2009/0288760) in view of Pan (US PG Pub 2019/0248126).
Regarding claim 1, Garben teaches a film tearing device (Fig. 2) for tearing a film on a component (abstract, wherein the term tearing is interpreted as removing in view of the instant disclosure), comprising:
a film tearing roller (132 in Fig. 2), comprising a first portion and a second portion (132 and 139) wherein the film tearing roller is configured to have a first state and a second state (states of Fig. 2B vs Fig. 2C), and in the second state, the film tearing roller clamping the clamping portion rotates and moves in a second direction (as shown in Fig. 2C), and the second direction is parallel to a surface of the component (as shown in Fig. 2C wherein the component is substrate 112);
a first moving structure (140, 133, 131, 136), for controlling movement of the first portion and/or the second portion (as shown in Fig. 2), to cause the film tearing roller to be in the first state and the second state (as shown in Figs. 2B vs. Fig. 2C);
a pressing roller (130), located on a travelling path of the film tearing roller (as shown in Fig. 2), wherein the pressing roller is pressed against the surface of the component (para. 0134);
a second moving structure (131. 136), for controlling the pressing roller to move in the second direction when the film tearing roller is in the second state (per arrow 148 in Fig. 2D, see also Figs. 2C and 2D and para. 0137).
Regarding the recitation of an easy-to-tear sticker, comprising a clamping portion and an adhesive portion disposed adjacently in a first direction, this recitation is merely a material handled by the claimed apparatus, and therefore does not limit or distinguish the apparatus and cannot provide a basis for patentability. See MPEP § 2115. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
Garben does not teach that the film tearing roller comprises a first portion and a second portion disposed opposite to each other, and wherein the first portion is matched with the second portion to clamp the clamping portion in the first state.
However, Pan teaches a film tearing device (abstract), comprising a film tearing roller (2 in Figs. 2, 5, and 6) with a first portion (21 in Fig. 6) and a second portion (22) disposed opposite to each other (as shown in Fig. 6), and wherein the first portion is matched with the second portion to clamp the clamping portion in the first state (as shown in Fig. 6 and per para. 0053).
Pan teaches that this structure for the film tearing roller provides a simple, easy to implement and automated means for clamping and peeling the film (last sentence in para. 0053).
Per MPEP §2143.I, simple substitution of one known element for another to obtain predictable results is sufficient to establish a prima facie case of obviousness. See MPEP §2143.I (rationale B) and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
In view of Pan’s teachings and/or KSR rationale B, it would have been obvious to one of ordinary skill in the art at the time of filing to substitute Pan’s film tearing device with first and second clamping portions in place of Garben’s film tearing device to predictably obtain suitable means for holding the film during peeling and/or the benefits taught by Pan and cited above.
Regarding claim 2, Garben teaches the film tearing roller further has a third state, in the third state, the first portion is connected to the adhesive portion, under the control of the first moving structure (as shown in the state of Fig. 2D).
The other features recited in this claim are merely materials handled and a manner of operating the claimed apparatus, and do not limit the claimed apparatus. See MPEP § 2115. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). Additionally, the courts have held that the manner of operating the device does not differentiate apparatus claims from the prior art. "[A]pparatus claims cover what a device is, not what a device does." See MPEP §2114.II and Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original
Regarding claims 3-5, the features recited in these claims are merely various materials handled by the claimed apparatus and features thereof, and therefore do not limit or distinguish the apparatus and cannot provide a basis for patentability. See MPEP § 2115. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
Allowable Subject Matter
Claims 6-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and all intervening claims. Correction of the objections described above is also necessary prior to allowance.
Regarding claim 6 and with the corrections listed above for the 112(b) issues for claims 1 and 6, the prior art of record does not teach or render obvious the features of this claim in combination with the features in base claim 1.
The closest prior art of record has been cited in the rejection of claim 1 above and the teachings of these references relevant to claims 1 and 6 have been described above.
Conclusion
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/JIMMY R SMITH JR./Examiner, Art Unit 1745