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 .
This Office Action is in response to the applicant’s amendment filing on 01/27/2026.
Applicant’s cancelation of claims 1-11, 13, 26, 30, and 32 is acknowledged and require no further examining. Claims 12, 14-25, 27-29, 31, and 33-34 are pending and examined below.
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 18 and 33 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 18 lines 2-3, the phrase “in contact with the at least one positioning aid of the side strip, lifts said side strip and moves the side strip in the transport direction” renders claim 18 to be non-complying with the written description requirement because the feature appears to be new matter. On page 9 lines 6-13 of the Specification, the actuator is disclosed to “picks up said side strip in the transport direction”. The Specification does not disclose the side strip being lifted and then being moved in the transport direction. Therefore, the feature is considered new matter.
Regarding claim 33 lines 9-10, the phrase “in contact with the at least one positioning aid of the side strip, lifts said side strip and moves the side strip in the transport direction” renders claim 33 to be non-complying with the written description requirement because the feature appears to be new matter. On page 9 lines 6-13 of the Specification, the actuator is disclosed to “picks up said side strip in the transport direction”. The Specification does not disclose the side strip being lifted and then being moved in the transport direction. Therefore, the feature is considered new matter.
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 12, 14-19, 21-25, 27-29, and 33-34 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.
Regarding claim 12 line 3, the phrase “device comprising at least a centering device, and one side strip” renders claim 12 vague and indefinite because it is unclear how the device can have just the side stirp. The phrase “at least” implies either one of the following features is included or all the features are included. It is unclear how the separating device can comprise the side strip but not the centering device. For examining purposes, the phrase is interpreted as “device comprising: a centering device; and a side strip”.
Claims 14, 17, 19, 22-25, and 27-29 are dependent of claim 12 and include all the same limitations.
Regarding claim 15 line 2, the phrase “such that the clamping jaws can pivot” renders claim 15 vague and indefinite because the feature is not definitively disclosed. The term “can” implies the feature may or may not pivot. For examining purposes, the phrase is interpreted as “such that the clamping jaws pivot”.
Regarding claim 16 line 4, the phrase “positioning aid at its bottom transition” renders claim 16 vague and indefinite because it is unclear which feature is referred to by the term “its”. Claim 16 is dependent of claim 14 which is dependent of claim 13 and 12. Claims 12-14 disclose multiple features. It is unclear which of these features the term “its” is referring to. For examining purposes, the phrase is interpreted as “positioning aid at the centering part’s bottom”.
Regarding claim 18 lines 2-3, the phrase “in contact with the at least one positioning aid of the side strip, lifts said side strip and moves the side strip in the transport direction” renders claim 18 vague and indefinite because it is unclear how the actuator lifts the side strip. Claim 18 is dependent of claim 12, and claim 12 does not disclose the conveying device moving the side strip perpendicular to the transport direction but rather discloses the conveying device moving the side strip in the transport direction. It is unclear how the conveying device lifts the side strip. For examining purposes, the phrase is interpreted as “in contact with the at least one positioning aid of the side strip, engages said side strip to move in the transport direction”.
Regarding claim 21 line 6, the phrase “acts on a cam-like positioning aid” renders claim 21 vague and indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. It is unclear if the positioning aid is a cam or not a cam. For examining purposes, the phrase is interpreted as “acts on a positioning aid”.
Regarding claim 33 lines 9-10, the phrase “in contact with the at least one positioning aid of the side strip, lifts said side strip and moves the side strip in the transport direction” renders claim 33 vague and indefinite because it is unclear how the actuator lifts the side strip. Prior to the quoted phrase, the conveying device is not disclosed to move the side strip perpendicular to the transport direction, but rather is disclosed to move the side strip in the transport direction. It is unclear how the conveying device lifts the side strip. For examining purposes, the phrase is interpreted as “in contact with the at least one positioning aid of the side strip, engages said side strip to move in the transport direction”.
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 21 and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over reference Hansen (4,967,539) in view of reference Keyser et al. (4,844,852).
Regarding claim 21, Hansen discloses a method for operating a processing device (Figure 4), wherein the method comprises the step of:
conveying a frame structure (1) by using a conveying device (65),
wherein the frame structure (1) comprises container products (7); and
separating the container products (7).
(Figure 4-6 and Column 2 lines 16-18, Column 3 lines 46-49, Column 5 lines 63-68 through Column 6 lines 1-19)
However, Hansen does not disclose the step of positioning by using a centering device.
Keyser et al. disclose centering device (48, 54) configured to act on a positioning aid (42) of a side strip (18), wherein the centering device (48, 54) uses movable clamping parts. (Figure 4-5 and Column 5 lines 65-68, Column 7 lines 40-44, 50-55)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the method of Hansen by incorporating the step of using the centering device as taught by Keyser et al., since column 7 lines 50-55 of Keyser et al. states such a modification would ensure precise alignment of the container product being separated.
Regarding claim 33, Hansen disclose a separating device (Figure 4) for separating individual or multiple container products (7) from a frame structure (1) which is made of plastics material, wherein the separating device (Figure 4) comprises:
a conveying device; and
at least one side strip (15),
wherein the at least one side strip (15) is movable along a transport direction using the conveying device,
wherein the conveying device acts on individual positioning aids (63) of the side strip (15),
wherein the conveying device comprises a pivotable pawl arrangement (65), and
wherein the pivotable pawl arrangement (65), when at a pick-up point in contact with the at least one positioning aid of the side strip, engages said side strip to move in the transport direction using an actuator (67) and then returnable to a starting position to engage a second positioning aid after moving over said second positioning aid.
(Figure 4-6 and Column 2 lines 16-18, Column 3 lines 46-49, Column 5 lines 63-68 through Column 6 lines 1-19)
However, Hansen does not disclose a centering device.
Keyser et al. disclose a centering device (48, 54) configured to fix a positioning aid (42) of a side strip (18) in a clamping manner. (Figure 4-5 and Column 5 lines 65-68, Column 7 lines 40-44, 50-55)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the separating device of Hansen by incorporating the centering device as taught by Keyser et al., since column 7 lines 50-55 of Keyser et al. states such a modification would ensure precise alignment of the container product being separated.
Regarding claim 34, Hansen disclose a separating device (Figure 4) for separating individual or multiple container products (7) from a frame structure (1) which is made of plastics material, wherein the separating device (Figure 4) comprises:
a conveying device (65);
at least one side strip (15); and
a punching device (9),
wherein the side strip (15) is movable along a transport direction using the conveying device (65), and
wherein the conveying device (65) acts on individual positioning aids (63) of the side strip (15).
(Figure 4-6 and Column 2 lines 16-18, Column 3 lines 46-49, Column 5 lines 63-68 through Column 6 lines 1-19)
However, Hansen does not disclose a centering device.
Keyser et al. disclose a centering device (48, 54) configured to fix a positioning aid (42) of a side strip (18) in a clamping manner, wherein centering device (48, 54) is positioned by using a position adjustment device (26, 28), wherein the position adjustment device (26, 28) is in the form of a distance adjustment from the side strip (18). (Figure 4-5 and Column 5 lines 65-68, Column 7 lines 29-36, lines 40-44, 50-55)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified the separating device of Hansen by incorporating the centering device as taught by Keyser et al., since column 7 lines 50-55 of Keyser et al. states such a modification would ensure precise alignment of the container product being separated.
Since Hansen disclose the conveying device and a punch device engages the side strip from above, when modifying Hansen in view of Keyser et al., the centering device in interpreted to engage the side strip from above and from below. Therefore, when the centering device is distance adjusted from the side strip, the centering device is interpreted to be height adjusted.
Allowable Subject Matter
Claims 12, 14-17, 19, 22-25, and 27-29 would be allowable if rewritten or amended 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.
Claims 20 and 31 are allowed.
Response to Arguments
The Amendments filed on 01/27/2026 have been entered. Applicant’s cancelation of claims 1-11, 13, 26, 30, and 32 is acknowledged and require no further examining. Claims 12, 14-25, 27-29, 31, and 33-34 are pending in the application.
In response to the arguments of the objections towards the drawings, in view of the amendments to the drawings, Examiner withdraws the drawing objections.
In response to the arguments of the rejections under 35 U.S.C. 112(b), Examiner finds the arguments not persuasive.
Applicant states:
Applicant amends claims 12, 14-24, and 27-29 to overcome these rejections and respectfully requests full allowance of all pending claims as amended.
The amendments to the claims did not address all the 112(b) rejections, in particular the 112(b) rejections toward claims 15 and 16. Therefore, not all 112(b) rejections are withdrawn.
In response to the arguments of the rejections under 35 U.S.C.103 with reference Hansen (4,967,539) in view of reference Keyser et al. (4,844,852) toward claims 12, 17-20, 22, 25, and 31, in view of the amendments to the claims, Examiner withdraws the 103 rejections.
In response to the arguments of the rejections under 35 U.S.C.103 with reference Hansen (4,967,539) in view of reference Keyser et al. (4,844,852) toward claim 21, Examiner finds the arguments not persuasive.
Applicant states:
Applicant respectfully traverse and submits the proposed combinations, even if proper, which Applicant does not concede, do not render the pending claims obvious.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
In response to the arguments of the rejections under 35 U.S.C.103 with reference Hansen (4,967,539) in view of reference Keyser et al. (4,844,852) toward claim 33, Examiner finds the arguments not persuasive.
Applicant states:
Hansen in view of Keyser fails to teach or to fairly suggest a pivotable pawl arrangement, which, when at a pick-up point of contact with the at least one positioning aid of the side strip, lifts said side stirp and moves the side strip in the transport direction using an actuator.
It should be pointed out that claim 33 is rejected under 112(a) for not complying with the written description requirement. The phrase “in contact with the at least one positioning aid of the side strip, lifts said side strip and moves the side strip in the transport direction” renders claim 33 to be non-complying with the written description requirement because the feature appears to be new matter. On page 9 lines 6-13 of the Specification, the actuator is disclosed to “picks up said side strip in the transport direction”. The Specification does not disclose the side strip being lifted and then being moved in the transport direction. Therefore, the feature is considered new matter.
Furthermore, claim 33 is also rejected under 112(b) for failing to particularly point out and distinctly claim the subject matter. The phrase “in contact with the at least one positioning aid of the side strip, lifts said side strip and moves the side strip in the transport direction” renders claim 33 vague and indefinite because it is unclear how the actuator lifts the side strip. Prior to the quoted phrase, the conveying device is not disclosed to move the side strip perpendicular to the transport direction, but rather is disclosed to move the side strip in the transport direction. It is unclear how the conveying device lifts the side strip. For examining purposes, the phrase is interpreted as “in contact with the at least one positioning aid of the side strip, engages said side strip to move in the transport direction”.
In response to the arguments of the rejections under 35 U.S.C.103 with reference Hansen (4,967,539) in view of reference Keyser et al. (4,844,852) toward claim 34, Examiner finds the arguments not persuasive.
Applicant states:
Hansen in view of Keyser fails to teach or to fairly suggest a position adjustment in form of a height adjustment. Applicant respectfully traverses that Keyser, column 7, lines 29-36 would teach a height adjustment. Keyser, FIG. 5 teaches a horizontal adjustment instead.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Keyser et al. is not relied upon for the teaching of a centering device that is positionable above the side strip. Keyser et al. is relied upon for the teaching of a centering device configured to fix a positioning aid of a side strip in a clamping manner, wherein centering device is positioned by using a position adjustment device, wherein the position adjustment device is in the form of a distance adjustment from the side strip. Hansen is relied upon for the teaching of moving a side strip along a transport direction, wherein devices configured to engage the side strip are positioned above the side strip.
Since Hansen disclose the conveying device engages the side strip from above, when modifying Hansen in view of Keyser et al., the centering device is interpreted to engage the side strip from above and from below. Therefore, when the centering device is distance adjusted from the side strip, the centering device is interpreted to be height adjusted.
Furthermore, 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., the direction of "height" relative to the side strip or the separating device) 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).
Claim 34 discloses moving the side strip along a transport direction, and disclose the centering device is positionable relative to a frame part of a punching device. Claim 34 does not disclose what direction the “height” is relative to the side strip nor the punching device. Therefore, it is within the broadest reasonable interpretation to consider the position adjustment, as taught by Keyser et al., as a height adjustment since the position adjustment moves the centering device in a direction perpendicular to the transport direction.
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 PATRICK B FRY whose telephone number is (571)272-0396. The examiner can normally be reached on Mon-Thur 7am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK B FRY/Examiner, Art Unit 3731 May 28, 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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