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 .
Information Disclosure Statement
The information disclosure statement filed 4/22/2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, no English translation or explanation of relevance has been provided for ES 2155334.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the actuator device (see at least claim 7), the hollow body (see at least claim 7), and wherein each fastening assembly occupies only two threaded holes (see at least claim 8) must be shown or the feature(s) canceled from the claim(s). It is unclear whether the present drawings illustrate the features of claim 1 because no geometric center or geometric axis is indicated with a reference character in the present drawings. Therefore, the features of claim 1 should be shown in the present drawings or the feature(s) canceled from the claim(s). If the features of claim 1 are shown in the drawings, then the geometric center and geometric axis should be indicated with reference characters to make clear that these features are illustrated (see MPEP 608.01(o), explaining that in mechanical cases the meaning of every term used in any of the claims should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Figures 4a and 4b (per pg. 4, lines 17-18 of instant specification) should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because it contains legal phraseology such as “comprises”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
Specifically, it is unclear if Applicant is intending to incorporate by reference the information contained within ES 2155334.
Claim Objections
Claims 1-3 and 7-8 are objected to because of the following informalities:
Claim 1:
at line 2, “such holes” should be amended to read “such threaded holes”
at line 3, “the coordinate axes” should be amended to read “coordinate axes”
at line 6, “having a retractable bolt” should be amended to read “has a retractable bolt”
at line 6, “the cylinder” should be amended to read “the die-holding cylinder”
Claim 2: at line 2, “the bolt” should be amended to read “the bolts”
Claim 3:
at line 2, “the body” should be amended to read “a body”
at line 4, “internally threaded holes” should be amended to read “the internally threaded holes”
at line 4, “located” should be deleted
Claim 7:
in the preamble, “claim1” should be amended to read “claim 1”
the bolts have already been recited in claim 1; “wherein the fastening assembly comprises a movable bolt actuated by” should be amended to read “the movable bolts are actuated by”
it is unclear what structure is “being housed inside a hollow body”; it is presumed to be intended that the actuator device is housed within the hollow body, and has been treated as such for purposes of examination
at line 3, “the body of the die-holding cylinder” should be amended to read “a body of the die-holding cylinder”
Claim 8: “each fastening assembly occupies” should be amended to read “the plurality of fastening assemblies occupies”
Appropriate correction is required.
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
engagement means (see at least claim 1); the engagement means are recited as “consisting of a plurality of fastening assemblies, each of which has a retractable bolt”, therefore sufficient structure is provided for performing the function of engaging two elements
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/703,577 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is anticipated by claims 1, 8, and 9 of ‘577, claim 2 is anticipated by claim 1 of ‘577, claim 3 is further anticipated by claim 2 of ‘577, claim 4 is further anticipated by claim 3 of ‘577, claim 5 is further anticipated by claim 4 of ‘577, claim 6 is further anticipated by claim 5 of ‘577, claim 7 is further anticipated by claim 6 of ‘577, and claim 8 is further anticipated by claim 7 of ‘577 (see underlined portions of copending claims).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
18/703,484 (instant application)
18/703,577 (copending application)
1. Die-holding cylinder for a sheet material die-cutting machine, comprising: a surface provided with a plurality of internally threaded holes, such holes presenting a grid layout formed by a plurality of rows and lines in the coordinate axes "X" and "Y", and engagement means consisting of a plurality of fastening assemblies, each of which having a retractable bolt protruding from the surface of the cylinder defining a geometric center and a geometric axis, the bolts being intended to be attached to dies, characterized in that a central transverse plane divides the die-holding cylinder into a first half and a second half, the arrangement of the threaded holes and the fastening assemblies in the second half being rotated 180°, or being symmetrical, with respect to the arrangement of the threaded holes and the fastening assemblies of the first half.
1. Die-holding cylinder for a laminar material die-cutting machine, intended to be incorporated into die-cutting machines, especially designed for die-cutting cardboard sheets with subsequent use in the industry for manufacturing packages, comprising: a surface provided with a plurality of internally threaded holes, such holes presenting a grid layout formed by a plurality of rows and lines in the coordinate axes "X" and "Y", and engagement means consisting of a plurality of fastening assemblies, each of which having a retractable bolt protruding from the surface of the cylinder defining a geometric center and a geometric axis, the bolts being intended to be attached to dies, characterized in that the geometric axes of the bolt of the fastening assemblies are positioned in such a way that they are individually distributed between two internally threaded holes and axially aligned on a coordinate axis "X" that passes through the two holes and at an equidistant distance between said two holes.
8. Die-holding cylinder according to claim 1, wherein a central transverse plane divides the die-holding cylinder into a first half and a second half, the arrangement of the threaded holes and the fastening assemblies in the second half being rotated 180° with respect to the arrangement of the threaded holes and the fastening assemblies in the first half.
9. Die-holding cylinder according to claim 1, wherein a central transverse plane divides the die-holding cylinder into a first half and a second half, the arrangement of the threaded holes and the fastening assemblies in the second half being symmetrical with respect to the arrangement of the threaded holes and the fastening assemblies in the first half.
Claim 2
1. Die-holding cylinder for a laminar material die-cutting machine, intended to be incorporated into die-cutting machines, especially designed for die-cutting cardboard sheets with subsequent use in the industry for manufacturing packages, comprising: a surface provided with a plurality of internally threaded holes, such holes presenting a grid layout formed by a plurality of rows and lines in the coordinate axes "X" and "Y", and engagement means consisting of a plurality of fastening assemblies, each of which having a retractable bolt protruding from the surface of the cylinder defining a geometric center and a geometric axis, the bolts being intended to be attached to dies, characterized in that the geometric axes of the bolt of the fastening assemblies are positioned in such a way that they are individually distributed between two internally threaded holes and axially aligned on a coordinate axis "X" that passes through the two holes and at an equidistant distance between said two holes.
Claim 3
Claim 2
Claim 4
Claim 3
Claim 5
Claim 4
Claim 6
Claim 5
Claim 7
Claim 6
Claim 8
Claim 7
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.
Claim 8 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.
Regarding claim 8, it is unclear whether the fastening assemblies are actually housed within the threaded holes. First, the threaded holes are designated with reference character 4, and the fastening assemblies are represented by reference character 5. Based on figs. 2 and 3, it does not appear that the fastening assemblies are housed within the threaded holes. As shown in fig. 2, it appears that fastening assemblies 5 would not have sufficient space if they were positioned within threaded holes 4. Further, it is suggested that the fastening assemblies are located between the threaded holes rather than positioned within them (see pg. 6, lines 1-6). Therefore, as best understood, the fastening assemblies are located adjacent to the threaded holes rather than within the threaded holes, and have been treated as such for purposes of examination.
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Obiol (US 7171885).
Regarding claim 1, Obiol discloses a die-holding cylinder (cutting die support cylinder 2; see fig. 2) for a sheet material die-cutting machine, comprising: a surface provided with a plurality of internally threaded holes (cutting die support cylinder 2 comprises a surface with a plurality of screwed drill holes 22; see col. 2, lines 57-58 and col. 2 line 64-col. 3, line 2), such holes presenting a grid layout formed by a plurality of rows and lines in the coordinate axes "X" and "Y" (screwed drill holes 22 are formed in a grid pattern; see col. 2, line 64-col. 3, line 2), and engagement means consisting of a plurality of fastening assemblies (bolts 3; see fig. 2), each of which having a retractable bolt protruding from the surface of the cylinder defining a geometric center and a geometric axis (bolts 3 are retractable and may protrude from a surface of cutting die support cylinder 2, and comprise a center and axis; see col. 3, lines 3-12 and fig. 1), the bolts being intended to be attached to dies (bolts 3 are configured to move into holes 15 of cutting die 1; see col. 3, lines 3-15), characterized in that a central transverse plane divides the die-holding cylinder into a first half and a second half (cutting die support cylinder 2 can be divided into a first and second half in the center of the longitudinal X axis; see fig. 2), the arrangement of the threaded holes and the fastening assemblies in the second half being rotated 180°, or being symmetrical, with respect to the arrangement of the threaded holes and the fastening assemblies of the first half (screwed drill holes 22 and bolts 3 in the second half are positioned symmetrically to screwed drill holes 22 and bolts 3 in the first half; see annotated portion of fig. 2 below).
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Regarding claim 2, Obiol discloses the limitations of claim 1 as described in the rejection above.
Obiol further discloses wherein the geometric axes of the bolt of the fastening assemblies are positioned in such a way that they are individually distributed between two internally threaded holes (bolts 3 are each positioned between two screwed drill holes 22; see fig. 2) and axially aligned on a coordinate axis "X" that passes through the two holes (bolts 3 are aligned along an X axis that extends longitudinally; see fig. 2) and at an equidistant distance between said two holes (bolts 3 are spaced equidistant between screwed drill holes 22; see fig. 2).
Regarding claim 3, Obiol discloses the limitations of claim 1 as described in the rejection above.
Obiol further discloses wherein a central circumferential line of the surface of the body of the die-holding cylinder, corresponding to the coordinate axis "Y" in a position centered on a condition of the unfolded surface (the central circumferential line is defined along the central transverse plane, extending along the Y axis; see annotated portion of fig. 2 above), provided with internally threaded holes located extending circumferentially around the surface, is devoid of fastening assemblies (screwed drill holes 22 are formed at least partially along the central circumferential line and do not contain bolts 3; see col. 2, line 64-col. 3, line 2).
Regarding claim 4, Obiol discloses the limitations of claim 1 as described in the rejection above.
Obiol further discloses wherein the coordinate axis "X" is a longitudinal axis of the die-holding cylinder (see annotated portion of fig. 2 above).
Regarding claim 5, Obiol discloses the limitations of claim 1 as described in the rejection above.
Obiol further discloses wherein the coordinate axis "Y" is a transverse axis of the die-holding cylinder (see annotated portion of fig. 2 above).
Regarding claim 6, Obiol discloses the limitations of claim 1 as described in the rejection above.
Obiol further discloses wherein the fastening assemblies are in a staggered distribution (bolts 3 are positioned in a staggered distribution along the surface of cutting die support cylinder 2; see fig. 2).
Regarding claim 7, Obiol discloses the limitations of claim 1 as described in the rejection above.
Obiol further discloses wherein the fastening assembly comprises a movable bolt actuated by an actuator device (bolts 3 are fixed to pistons 6 of pneumatic cylinders 5, which are configured to cause movement of bolts 3; see col. 2, lines 47-50 and col. 3, lines 20-31), being housed inside a hollow body that is attached to the body of the die-holding cylinder (pneumatic cylinders 5 are housed within hollow bodies 8, and hollow bodies 8 are fixed to cutting die support cylinder 2 via fixing screws 10; see col. 2, lines 51-54).
Regarding claim 8, Obiol discloses the limitations of claim 1 as described in the rejection above.
Obiol further discloses wherein each fastening assembly occupies only two threaded holes (bolts 3 are fixed to pneumatic cylinders 5, and pneumatic cylinders 5 are housed within hollow bodies 8, which are fixed to cutting die support cylinder 2 by fixing screws 10 – that is, because bolts 3 are affixed to cutting die support cylinder 2 via screws, it is interpreted that a user can attach or remove as many or as few bolts 3 as desired; see col. 2, lines 47-54 and fig. 1).
Examiner notes that the “two threaded holes” as recited in claim 8 are interpreted as being the holes that house the fastening assemblies. As discussed above, it is interpreted that they are different structures from the threaded holes recited in at least claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 20030066405 to Harrison, drawn to a rotary cutting die mounting system; and US 5875699 to Koelsch, drawn to a cutting die mounting system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALEIGH N WATSON whose telephone number is (571)272-3818. The examiner can normally be reached M-Th 530AM-330PM EST.
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.
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/HALEIGH N WATSON/Examiner, Art Unit 3724 /BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
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