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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, Species A, in the reply filed on 10/16/25 is acknowledged. The traversal is on the ground(s) that Group I has unity of invention with Groups II, III and IV because the limitations of claim 1 are required by claims 12, 13, and 19. This is not found persuasive because the features of claim 1 do not qualify as special technical features because said common features do not make a contribution over the prior art. See sections 1, 4 and 5 of the restriction. Claims 12-15, 19 and 20 are withdrawn. The limitation directed to Species B in the claims are withdrawn.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The claims recite an apparatus with structural limitations and material worked upon by the apparatus. While there is nothing wrong with claiming the material worked upon, such limitations are only given weight to the extent that they limit the structure of the claimed apparatus. See MPEP 2115. See In re Rishoi (94 USPQ 71), In re Smith (3 USPQ 315), and In re Young (25 USPQ 69).
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
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 1-11 and 16-18 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.
** For the purposes of this action, the examiner will assume any limitations in any of the claims following the term “preferably” are not required by the claim.**
Regarding claim 1, the term "preferably" renders the claim indefinite because it is unclear whether the limitations following the term are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 recites the limitation “H2 in a direction perpendicular to the base surface”. It’s not clear if “a direction perpendicular” refers to the previously recited perpendicular direction or a different perpendicular direction.
Regarding claim 2, the term "particularly preferably" renders the claim indefinite because it is unclear whether the limitations following the term are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, the term " preferably" appears twice. In each case, the term renders the claim indefinite because it is unclear whether the limitations following the term are part of the claimed invention. See MPEP § 2173.05(d).
Claims 4, 9, 16 and 18 recite the limitation “a first plane perpendicular”. It’s not clear if “a first plane perpendicular” refers to the previously recited first perpendicular plane or a different perpendicular plane.
Claims 6 and 17 recite “one second elevation”. Is this one second elevation different from the second elevation previously recited. Additionally, to which previously recited second elevation does “the second elevation” refer?
Claims 6, 10, 16, 17 and 18 each recite the term “preferably”. In each case, the term renders the claim indefinite because it is unclear whether the limitations following the term are part of the claimed invention. See MPEP § 2173.05(d).
In claims 7 and 17, the limitation ‘the shorter base side” lacks proper antecedent basis.
Claims 10 and 18 recite the limitation “a direction perpendicular”. It’s not clear if “a direction perpendicular” refers to the previously recited perpendicular direction or a different perpendicular direction.
In claim 18, it’s not clear the limitation “an extension of the first partial sealing surface” is the same or different from the previously recited extension of he first sealing surface.
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 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.
Claim(s) 1-9, 11, 16 and 17 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Romijn et l. (US 2011/0079342).
As to claim 1 and 11, Romijn discloses an anvil tool 5 (para 22, fig 2-3) for an ultrasonic sealing device, comprising: a base surface (see below), the base surface having a first elevation which extends with a height H1 in a direction perpendicular to the base surface from the base surface (see below), the first elevation having a first partial sealing surface, the first partial sealing surface having a second elevation which extends with a height H2 in a direction perpendicular to the base surface from the first partial sealing surface (see below), the second elevation having a second partial sealing surface, wherein both the first partial sealing surface and the second partial sealing surface are intended to process material during operation of the ultrasonic sealing device, and wherein the second elevation in a first plane perpendicular to the base surface has a part-circular cross-section with a radius r2 (see annotated gig below, also fig 2-3, para 22-32).
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As to claims 3, 4, 5 and 16 (examiner notes claim 16 is a combination of claims 3-5), Romijn discloses the first partial sealing surface is flat (see fig above), first elevation has a trapezoidal cross-section in a first plane perpendicular to the base surface (see fig above), and the first elevation and/or the second elevation have an extension in a transverse direction perpendicular to the first plane which is larger than an extension in a longitudinal direction parallel to the first plane (see fig above).
As to claim 6, 7,8 and 17 (claim 17 is a combination of claims 6-8), Romijn discloses exactly one second elevation is arranged on the first partial sealing surface of the first elevation (see fig above), a length of the shorter base side of the trapezoidal cross-section of the first elevation corresponds to an extension of the first partial sealing surface in the first plane (see fig above), and the height H2 of the second elevation is less than or equal to the height H1 of the first elevation (see fig above).
As to claim 9, Romijn discloses an extension of the second partial sealing surface in a first plane perpendicular to the base surface is smaller than an extension of the first partial sealing surface in the first plane (see fig above).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Romijn.
Although Romijn does not expressly disclose the r2 radius is at most 2mm, at least para 32 discloses the shape and curvature can be varied based on the desired design. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the r2 radius to be at most 2mm as choice of a radius is a design choice obvious to one of ordinary skill in the art. Additionally, varying the dimensions is obvious absent unexpected results demonstrated by applicant. MPEP 2144.04.
Claim(s) 10 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Romijn as applied to claims 1 and 17 above, and further in view of Martin (US 5976315).
As to claim 10, Romijn does not expressly disclose the limitations of claim 1. Martin disclose tool for ultrasonic welding, having at least two elevations extending form a base surface 21 each having height H1 and heigh H2, each forming a first and second sealing surface, wherein a third elevation 27 is provided on the base surface, wherein the third elevation extends with a height H3 in a direction perpendicular to the base surface from the base surface, wherein the third elevation is arranged neither on the first partial sealing surface nor on the second partial sealing surface and is capable of coming into contact with the material to be processed, but not to carry out processing of the material, wherein the height H3 of the third elevation corresponds at least to the sum of the height H1 of the first elevation and the height H2 of the second elevation (fig 2, C6, L54 – C7, L8). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Romijn to comprise a third elevation provided on the base surface, wherein the third elevation extends with a height H3 in a direction perpendicular to the base surface from the base surface, wherein the third elevation is arranged neither on the first partial sealing surface nor on the second partial sealing surface and is capable of coming into contact with the material to be processed, but not to carry out processing of the material, wherein the height H3 of the third elevation corresponds at least to the sum of the height H1 of the first elevation and the height H2 of the second elevation as taught by Martin above as such enables better alignment and a straighter seal (C3, L28-52).
As to claim 18, Romijn discloses an extension of the second partial sealing surface in a first plane perpendicular to the base surface is smaller than an extension of the first partial sealing surface in the first plane, wherein the tool is an anvil (see claim 9 and 11 discussions above). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Romijn to comprise a third elevation provided on the base surface, wherein the third elevation extends with a height H3 in a direction perpendicular to the base surface from the base surface, wherein the third elevation is arranged neither on the first partial sealing surface nor on the second partial sealing surface and is capable of coming into contact with the material to be processed, but not to carry out processing of the material, wherein the height H3 of the third elevation corresponds at least to the sum of the height H1 of the first elevation and the height H2 of the second elevation as taught by Martin above as such enables better alignment and a straighter seal (C3, L28-52).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746