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 .
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 .
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 10 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.
Claim 10 recites “the first protrusion is provided at a position higher than the work placed on the jig” in lines 2-3 and “the second protrusion is provided at a position higher than the work placed on the jig” in lines 3-4. Each limitation attempts to define an apparatus component based upon a material worked upon. Because works of different heights could be worked upon by the apparatus claimed, the heights of first and second protrusions required by the claim are not defined.
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 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 limitation(s) is/are: “conveying unit” in claim 7; “pressure adjustment unit” in claims 7-9; and “work elevating unit” in claim 7.
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.
The limitation “conveying unit” recites the generic placeholder “unit” coupled with the functional modifier “conveying” without reciting sufficient structure to perform the function claimed. This will be interpreted as: structure 21, shown in figure 2, and equivalents thereof.
The limitation “pressure adjustment unit” recites the generic placeholder “unit” coupled with the functional modifier “adjustment” without reciting sufficient structure to perform the function claimed. This will be interpreted as: structure 23, shown in figure 1, and equivalents thereof.
The limitation “work elevating unit” recites the generic placeholder “unit” coupled with the functional modifier “elevating” without reciting sufficient structure to perform the function claimed. This will be interpreted as: structure 26, shown in figure 3, and equivalents thereof.
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 (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 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) 1-2, 4-6, and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over HASHIMOTO (US 2016/0052201).
Regarding claims 1, 2, and 6 HASHIMOTO teaches a jig comprising a placement surface 211 and first and second vertical protrusions 212 that is capable of performing the functions on work and film materials claimed (para. 16; fig. 6). Limitations claimed on materials worked upon in an apparatus claim do not limit the apparatus (MPEP 2115). HASHIMOTO does not teach a conveying unit. It would have been obvious to one of ordinary skill in the art at the time of the invention to include a unit to convey film to a location above the work because HASHIMOTO teaches that it is positioned above the work, such that it must be conveyed to that position, and automating process steps has been held per se obvious (MPEP 2144.04).
Regarding claims 4-5, HASHIMOTO does not explicitly show a third protrusion connecting ends of the first and second, but teaches that the opposing protrusions 212 form a hermetic seal (para. 16), where it would have been obvious to one of ordinary skill in the art at the time of the invention to include a third and fourth vertical protrusion in order to create a sealed space from continuous first, second, third, and fourth protrusions.
Regarding claim 10, HASHIMOTO shows an example of working upon a material 11 being worked upon with first and second protrusions 212 at a greater height than the top surface of the material (fig. 3).
Regarding claim 11, HASHIMOTO teaches protrusions having a tip extending in first and second directions perpendicular to the surface of the chamber (fig. 1), wherein it would have been obvious to one of ordinary skill in the art at the time of the invention to convey the film in the first direction in order to place the film vertically above the protrusions.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over HASHIMOTO as applied to claim 1 above, and further in view of MIURA (US 2018/0141264).
Regarding claim 7, HASHIMOTO teaches utilizing the jig in a coating apparatus comprising a chamber that can form a sealed space and a pressure adjustment unit (figs. 5-6; para. 16). HASHIMOTO does not teach a work elevating unit. MIURA teaches another means of vacuum bonding a film to a workpiece, wherein the apparatus comprises a work elevating unit 10 and 11, such that it would have been obvious to one of ordinary skill in the art at the time of the invention to include a work elevation mechanism of MIURA in the apparatus of HASHIMOTO in order to allow adjustment of the portion of the work that contacts the film (MIURA; fig. 9; paras. 96-98).
Regarding claim 8, the apparatus of the references as combined is capable of performing the vacuum function claimed.
Regarding claim 9, HASHIMOTO does not explicitly teach increasing outer space pressure, but teaches that pipe 311 is a pressure generating device, where a vacuum is just one such device (para. 46). It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize an air inlet as the only other option of pressure generating device beside a vacuum generating device, and it was common to include air pressure increase above a film in a vacuum lamination apparatus to facilitate pressing the film to work in a vacuum forming apparatus.
Response to Arguments
Applicant's arguments filed 4/7/2026 have been fully considered but they are not persuasive.
Applicant argues that HASHIMOTO does not teach the film working with the jig to create a sealed space because it functions to divide the chamber. While the film divides the larger chamber, it creates a sealed space within the large chamber with 211 and 212, thereby meeting the limitation.
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 Nickolas R Harm whose telephone number is (571)270-7605. The examiner can normally be reached 10:00-6:00.
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, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICKOLAS R HARM/Examiner, Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
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