DETAILED ACTION
1. The Amendment filed 01/23/2026 has been entered. Claims 1-9 & 11-19 in the application remain pending. Claims 1 & 11 were amended. Claim 10 was cancelled. Claim 16 remains withdrawn from consideration. Claims 17-19 are new.
2. The text of those sections of Title 35, U.S.C. code not included in this action can be found in a prior Office Action.
Notice of Pre-AIA or AIA Status
3. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Elections/Restrictions
4. Applicant's election was filed on 08/18/2025 without traverse of Group I, claims 1-15 for further examination. Newly submitted claims 17-18 are directed to inventions that are independent or distinct from the invention of Group I originally claimed for the following reasons: Group I (now Group I-A) & Group I-B (newly submitted claims 17-18) contain claims directed to the following patentably distinct species of the claimed invention.
Group I-A, Claims 1-9, 11-15 & 19, drawn to a spray device for spraying a material blank with an adhesive, comprising: the material blank having a blank feature that identifies the material blank, the blank feature including at least one of an outer-circumference contour of the material blank, an opening contour of an opening defined in the material blank, and a code defined on the material blank; a control device; a scanning device configured to record the blank feature of the material blank to be sprayed, and to provide a corresponding blank-feature data set to the control device, the blank-feature data set including data of the blank feature; a conveyor belt configured to move the material blank to be sprayed along a conveying direction of the conveyor belt through a spray region of the spray device; and a plurality of spray nozzles directed into the spray region configured to spray an adhesive onto the material blank as the material blank is moved through the spray region, the plurality of spray nozzles are controllable by the control device based on the corresponding blank-feature data set, and the plurality of spray nozzles are configured to generate on the material blank an adhesive layer, which is formed based on the blank feature.
Group I-B, Claims 17-18, drawn to a spray device for spraying a material blank with an adhesive, comprising: a control device; a scanning device configured to record a blank feature that identifies the material blank to be sprayed, and to provide a corresponding blank-feature data set to the control device; a conveyor belt configured to move the material blank to be sprayed along a conveying direction of the conveyor belt through a spray region of the spray device; and a plurality of spray nozzles directed into the spray region configured to spray an adhesive onto the material blank as the material blank is moved through the spray region, at least one spray nozzle of the plurality of spray nozzles including a nozzle outlet that is configured to form a spray cone a predetermined distance from the nozzle outlet, the predetermined distance corresponding to a distance an adhesive side of the material blank is spaced from the nozzle outlet, the plurality of spray nozzles are controllable by the control device based on the corresponding blank-feature data set, and the plurality of spray nozzles are configured to generate on the adhesive side of the material blank an adhesive layer, which is formed based on the blank feature.
Thus a prior art that satisfies the limitations of claim 1 would not necessarily satisfy the limitations of claim 17, as they both contain different combinations of structural components with different functional limitations. Thus, regardless of the search method, inventions with different limitations will require different search strategies, and the times to consider the relevancy of collective references would increase proportionality as well and it would be necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention. Thus far, applicant has not proved or provided convincing argument that there is no material difference between the two species groups currently on the record.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, newly submitted claims 17-18 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Claim Rejections
5. The claim rejections under AIA 35 U.S.C. 102(a)(1) as anticipated by Schlatterbeck et al. (US 2020/0055082 A1) of claims 8 & 10 are withdrawn.
Claim Rejections - 35 USC § 102
6. Claims 1-6, 9 & 11-15 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Schlatterbeck et al. (US 2020/0055082 A1) hereinafter Schlatterbeck.
Regarding claim 1, the recitation “material blank… the material blank having a blank feature that identifies the material blank, the blank feature including at least one of an outer-circumference contour of the material blank, an opening contour of an opening defined in the material blank, and a code defined on the material blank.. the blank feature of the material blank to be sprayed… a corresponding blank-feature data set … the blank-feature data set including data of the blank feature… the material blank… the material blank as the material blank… the corresponding blank-feature data set… the material blank… the blank feature”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Schlatterbeck since Schlatterbeck meets all the structural elements of the claim and is capable of using a material blank, wherein the material blank is capable of having a blank feature that identifies the material blank, the blank feature capable of including at least one of an outer-circumference contour of the material blank, an opening contour of an opening defined in the material blank, and capable of having a code defined on the material blank with a blank-feature data set including data of the blank feature, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Schlatterbeck discloses a spray device capable of spraying a material blank with an adhesive (abs; fig 1-3), comprising:
the material blank 3 capable of having a blank feature that identifies the material blank 3, the blank feature capable of including at least one of an outer-circumference contour of the material blank 3, an opening contour of an opening defined in the material blank 3, and a code defined on the material blank 3 ([0026]-0036]; [0047]-[0048]; [0052]; [0062]; [0120]-[0127]; [0131]-[0136]; fig 1-3);
a control device 5 ([0052]; [0062]; [0123]-[0127]; [0131]-[0133]; [0135]-[0136]; fig 1-2);
a scanning device 9 capable of recording the blank feature of the material blank 3 to be sprayed, and capable of providing a corresponding blank-feature data set to the control device 5, the blank-feature data set capable of including data of the blank feature ([0026]-0036]; [0047]-[0048]; [0052]; [0062]; [0120]-[0127]; [0131]-[0136]; fig 1-3);
a conveyor belt 24 configured to move the material blank 3 to be sprayed along a conveying direction of the conveyor belt 24 through a spray region 4 of the spray device 1 ([0128]-[0131]; fig 1-2); and
a plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) directed into the spray region 4 configured to spray an adhesive onto the material blank 3 as the material blank 3 is moved through the spray region 4, the plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1 ) are controllable by the control device 5 based on the corresponding blank-feature data set, and the plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) are configured to generate on the material blank 3 an adhesive layer, which is formed based on the blank feature ([0052]; [0062]; [0115]-[0116]; [0123]-[0127]; [0131]-[0133]; [0135]-[0136]; fig 1-2).
As regards to claim 2, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein the scanning device 9 includes an external scanning unit configured to record the blank feature ([0026]-0036]; [0047]-[0048]; [0052]; [0062]; [0115]-[0116]; [0120]-[0127]; [0131]-[0136]; fig 1-2).
As regards to claim 3, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein the scanning device 9 includes an internal scanning unit integrated into scanning device 9 configured to record the blank feature ([0026]-0036]; [0047]-[0048]; [0052]; [0062]; [0115]-[0116]; [0120]-[0127]; [0131]-[0136]; fig 1-2).
As regards to claim 4, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein the internal scanning unit includes a straight scanning bar for scanning rectangular material blank 3 that is arranged perpendicular to the conveying direction over the conveyor belt 24 and at an input side of the spray device 1 before the spray region 4 ([0026]-0036]; [0047]-[0048]; [0052]; [0062]; [0115]-[0116]; [0120]-[0127]; [0131]-[0136]; fig 1-3).
As regards to claim 5, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein the plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) are controllable using the control device 5 based on the corresponding blank-feature data set such that one or more spray parameters for the adhesive layer to be generated (see fig 3) by the plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) is adjustable, and the one or more spray parameters include a material-blank region to be kept free of adhesive, an amount of adhesive per surface portion of the material blank 3, an adhesive spray pressure, and an adhesive spray temperature ([0052]; [0062]; [0085]; [0115]-[0116]; [0123]-[0127]; [0131]-[0136]; fig 1-2).
As regards to claim 6, Schlatterbeck discloses a spray device (abs; fig 1-3), further comprising a straight spray-nozzle bar on which at least two first spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) of the plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) are disposed, the at least two first spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) are spaced equidistant from one another along a longitudinal extension direction of the straight spray-nozzle bar, and are arranged perpendicular to the conveying direction over the conveyor belt 24 ([0052]; [0062]; [0085]; [0115]-[0116]; [0123]-[0127]; [0131]-[0136]; fig 1-2).
As regards to claim 9, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein the diameter of the spray cone measures between 2 mm to 3 mm ([0052]; [0062]; [0085]; [0115]-[0116]; [0123]-[0127]; [0131]-[0136]; fig 1-2).
Regarding claim 11, the recitation “wherein the code includes a plurality of code elements,…at least one of the plurality of code elements, and the plurality of code elements include an edge-notch arrangement including at least one edge notch, a barcode, and a QR code of the material blank”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Schlatterbeck since Schlatterbeck meets all the structural elements of the claim and is capable of using a material blank wherein the code includes a plurality of code elements, the scanning device 9 is capable of recording at least one of the plurality of code elements, and the plurality of code elements can include an edge-notch arrangement including at least one edge notch, a barcode, and a QR code of the material blank, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 11, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein the code can include a plurality of code elements, the scanning device 9 is capable of recording at least one of the plurality of code elements, and the plurality of code elements can include an edge-notch arrangement including at least one edge notch, a barcode, and a QR code of the material blank 3 ([0026]-0036]; [0047]-[0048]; [0052]; [0062]; [0120]-[0127]; [0131]-[0136]; fig 1-3).
As regards to claim 12, Schlatterbeck discloses a spray device (abs; fig 1-3), further comprising a hot-air blower 7 arranged at an output side of the spray device 1 behind the spray region 4 ([0038]-[0042]; [0045]-[0046]; [0052]; [0057]; [0061]; [0088]; [0108]; [0111]; [0117]-[0119]; [0130]-[0131]; fig 1-2).
As regards to claim 13, Schlatterbeck discloses a spray device (abs; fig 1-3), further comprising a cold-air blower 8 arranged at an output side of the spray device 1 ([0119]; [0131]; fig 1-2).
As regards to claim 14, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein the cold-air blower 8 is arranged behind the hot-air blower 7 ([0038]-[0042]; [0045]-[0046]; [0052]; [0057]; [0061]; [0088]; [0108]; [0111]; [0117]-[0119]; [0130]-[0131]; fig 1-2).
As regards to claim 15, Schlatterbeck discloses a spray device (abs; fig 1-3), further comprising a drying device 6 arranged at an output side of the spray device 1 behind the spray region 4 to dehumidify the adhesive layer ([0038]-[0042]; [0045]-[0046]; [0052]; [0057]; [0061]; [0088]; [0108]; [0111]; [0117]-[0119]; [0130]-[0131]; fig 1-2).
Claim Rejections - 35 USC § 103
7. Claims 7-8 & 19 is rejected under 35 U.S.C. 103 as being unpatentable over Schlatterbeck as applied to claim 6 above.
As regards to claim 7, Schlatterbeck discloses a spray device (abs; fig 1-3), further comprising a straight spray-nozzle bar on which at least two first spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) of the plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) are disposed, the at least two first spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) are spaced equidistant from one another along a longitudinal extension direction of the straight spray-nozzle bar, and are arranged perpendicular to the conveying direction over the conveyor belt 24 ([0052]; [0062]; [0085]; [0115]-[0116]; [0123]-[0127]; [0131]-[0136]; fig 1-2), however Schlatterbeck does not disclose a second straight spray-nozzle bar, wherein the straight spray-nozzle bar and the second straight spray-nozzle bar are offset with respect to each other and are perpendicular to the conveying direction such that between the at least two first spray nozzles of the plurality of spray nozzles that are directly adjacent to each other on the straight spray-nozzle bar, a second spray nozzle of the second straight spray-nozzle bar is arranged.
Although Schlatterbeck does not explicitly disclose the claimed second straight spray-nozzle bar, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the system of Schlatterbeck to have the second straight spray-nozzle bar recited in the claim to accommodate additional substrates or as needed for an intended coating method and therefore is not expected to alter the operation of the device in a patentably distinct way.
Therefore at the time of the invention, to one of ordinary skill in the art it would have been an obvious matter of design choice to add an additional second straight spray-nozzle bar in Schlatterbeck since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 1 93 USPQ 8.
Although Schlatterbeck does not explicitly disclose the claimed straight spray-nozzle bar and the second straight spray-nozzle bar are offset with respect to each other and are perpendicular to the conveying direction such that between the at least two first spray nozzles of the plurality of spray nozzles that are directly adjacent to each other on the straight spray-nozzle bar, a second spray nozzle of the second straight spray-nozzle bar is arranged, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Schlatterbeck to have the straight spray-nozzle bar and the second straight spray-nozzle bar configuration recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way.
Before the effective filing date of the invention it would have been obvious to one having ordinary skill in the art to rearrange the straight spray-nozzle bar and the second straight spray-nozzle bar offset with respect to each other and perpendicular to the conveying direction such that between the at least two first spray nozzles of the plurality of spray nozzles that are directly adjacent to each other on the straight spray-nozzle bar, a second spray nozzle of the second straight spray-nozzle bar is arranged, since “the particular placement of structural components was held to be an obvious matter of design choice.” In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
As regards to claim 8, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein at least one spray nozzle of the plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) includes a nozzle outlet that is configured such that a spray cone is formed (see fig 1 of US 20100221449 A1) in a predetermined distance from the nozzle outlet (see fig 1 of US 20100221449 A1), and a diameter of the spray cone can be measured in mm ([0052]; [0062]; [0085]; [0115]-[0116]; [0123]-[0127]; [0131]-[0136]; fig 1-2), however Schlatterbeck does not disclose between 1 mm to 4 mm.
Although Schlatterbeck does not explicitly disclose the claimed diameter, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Schlatterbeck to have the diameter recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the diameter (relative dimensions) is considered engineering aspects of an apparatus, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the relative dimensions of the diameter of the spray cone.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
As regards to claim 19, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein the predetermined distance (see fig 1 of US 20100221449 A1) corresponds to a distance an adhesive side of the material blank 3 is spaced from the nozzle outlet (see fig 1 of US 20100221449 A1) ([0052]; [0062]; [0085]; [0115]-[0116]; [0123]-[0127]; [0131]-[0136]; fig 1-2).
Response to Arguments
8. Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
(a) Claims 1-3, 5, 10, 11 and 15 stand interpreted under 35 U.S.C. § 112, sixth paragraph. Applicant respectfully traverses the Office's interpretation. In this regard, Applicant respectfully submits that the control device in Claims 1 and 5 recites sufficient structure to perform the claimed function of controlling the plurality of spray nozzles. The scanning device in Claims 1-3, 10 and 11 also recites sufficient structure to perform the claimed function of being configured to record and provide a corresponding blank-feature data set. The drying device in Claim 15 also recites sufficient structure to dehumidify the adhesive layer.
(b) Applicant respectfully submits that Claim 1, as amended, is patentably distinguishable over the cited reference. The cited reference does not appear to provide for the material blank having a blank feature that identifies the material blank, the blank feature including at least one of an outer-circumference contour of the material blank, an opening contour of an opening defined in the material blank, and a code defined on the material blank, the blank-feature data set including data of the blank feature and the plurality of spray nozzles are controllable by the control device based on the corresponding blank-feature data set as claimed in Claim 1. Applicant respectfully submits that the material blank is a positively recited structural element, and is part of the claimed combination. Moreover, the material blank as claimed results in a structural difference. In this regard, the blank feature of the material blank results in the blank-feature data set, based on which the plurality of spray nozzles are controllable by the control device. Thus, Applicant respectfully requests that the structural limitations regarding the material blank be given patentable weight. Applicant respectfully submits that Schlatterbeck is silent as to the blank feature of the material blank as claimed, and is also silent as to the blank-feature data set.
(c) With regard to Claim 8, Applicant respectfully submits that Schlatterbeck and WO 2009/012996 = US 20100221449 Al incorporated by reference in Schlatterbeck are each silent as to at least one spray nozzle of a plurality of spray nozzles includes a nozzle outlet that is configured such that a spray cone is formed in a predetermined distance from the nozzle outlet, and a diameter of the spray cone measures between 1 mm to 4 mm as claimed.
(d) In addition, as the code elements of Claim 11 are positively recited and structural elements, Applicant respectfully requests the code elements be given patentable weight.
(e) Applicant respectfully requests the Office reconsider and withdraw the rejections of Claims 2-9 & 11-15.
9. In response to applicant’s arguments, please consider the following comments.
(a) As discussed in detail in the 10/24/2025 Office Action, Examiner maintains the position that the limitations “control device” in claims 1 & 5; “scanning device” in claims 1-3 & 10-11; “drying device” in claim 15 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
(b) In view of Applicant’s amendments to claim 1 and various claims depending therefrom, Examiner has reevaluated the teachings of Schlatterbeck as a whole for what they disclose or fairly suggest.
Schlatterbeck discloses :
[0132] FIG. 2 also shows a device 9 for scanning of a two-dimensional representation. Device 9 for scanning a two-dimension representation includes for example a sensor by way of which preferably spatially resolved the color location of pixels of the two-dimensional representation is sensed. Device 9 includes for example a color sensor, for example a sensor comprising a UV laser diode. According to an additional embodiment, device 9 includes ways for capturing a height profile of a two-dimensional representation. The device 9 moreover comprises an information device for storing and/or evaluating a digitized data record of a two-dimensional representation. The information device can for example be a computer. It is possible that the computer is a separate item. It is however also possible that the information device is part of a system control unit 5 or is comprised by the same.
[0135] FIG. 3 is a schematic illustration of a two-dimensional representation. The two-dimensional representation is applied onto a substrate 3 (not illustrated) and comprises several regions 32, 33, 34, 35, 36 which have different structures. Region 32 for example is depicted as a cloud.
[0136] The character of the structure is generally viewed to be matt, so that in this region 32 rather a matt coating texture is to be produced. Region 33 is a schematic illustration of a moon and therefore receives a glossy surface texture in order to produce a highly glossy surface which supports the visual impression of the moon as a glowing celestial phenomenon. Region 34 is illustrated as a tree trunk and region 35 as a tree top. Both regions show characteristic structures: tree top 35 for example in the form of foliage and tree trunk 34 in the form of bark. The relevant textures can be produced according to the process, so that the visual impression of the two-dimensional representation can be even more clearly emphasized by applying a textured coating, in particular lacquering in a spatially resolved, in this case laterally spatially resolved and location dependent, in this case laterally location dependent manner. Region 36 of the two-dimensional representation is a depiction of a wooden frame so that in this region 36 the texture of a rough grainy wood surface is produced.
Further, as already discussed above in detail in regards to claim 1, the recitation “material blank… the material blank having a blank feature that identifies the material blank, the blank feature including at least one of an outer-circumference contour of the material blank, an opening contour of an opening defined in the material blank, and a code defined on the material blank.. the blank feature of the material blank to be sprayed… a corresponding blank-feature data set … the blank-feature data set including data of the blank feature… the material blank… the material blank as the material blank… the corresponding blank-feature data set… the material blank… the blank feature”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Schlatterbeck since Schlatterbeck meets all the structural elements of the claim and is capable of using a material blank, wherein the material blank is capable of having a blank feature that identifies the material blank, the blank feature capable of including at least one of an outer-circumference contour of the material blank, an opening contour of an opening defined in the material blank, and capable of having a code defined on the material blank with a blank-feature data set including data of the blank feature, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Schlatterbeck discloses a spray device capable of spraying a material blank with an adhesive (abs; fig 1-3), comprising:
the material blank 3 capable of having a blank feature that identifies the material blank 3, the blank feature capable of including at least one of an outer-circumference contour of the material blank 3, an opening contour of an opening defined in the material blank 3, and a code defined on the material blank 3 ([0026]-0036]; [0047]-[0048]; [0052]; [0062]; [0120]-[0127]; [0131]-[0136]; fig 1-3);
a control device 5 ([0052]; [0062]; [0123]-[0127]; [0131]-[0133]; [0135]-[0136]; fig 1-2);
a scanning device 9 capable of recording the blank feature of the material blank 3 to be sprayed, and capable of providing a corresponding blank-feature data set to the control device 5, the blank-feature data set capable of including data of the blank feature ([0026]-0036]; [0047]-[0048]; [0052]; [0062]; [0120]-[0127]; [0131]-[0136]; fig 1-3);
a plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) are controllable by the control device 5 based on the corresponding blank-feature data set, and the plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) are configured to generate on the material blank 3 an adhesive layer, which is formed based on the blank feature ([0052]; [0062]; [0115]-[0116]; [0123]-[0127]; [0131]-[0133]; [0135]-[0136]; fig 1-2).
(c) As regards to claim 8, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein at least one spray nozzle of the plurality of spray nozzles ([0115]-[0116]; WO 2009/012996 = US 20100221449 A1) includes a nozzle outlet that is configured such that a spray cone is formed (see fig 1 of US 20100221449 A1) in a predetermined distance from the nozzle outlet (see fig 1 of US 20100221449 A1), and a diameter of the spray cone can be measured in mm ([0052]; [0062]; [0085]; [0115]-[0116]; [0123]-[0127]; [0131]-[0136]; fig 1-2), however Schlatterbeck does not disclose between 1 mm to 4 mm.
Although Schlatterbeck does not explicitly disclose the claimed diameter, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Schlatterbeck to have the diameter recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the diameter (relative dimensions) is considered engineering aspects of an apparatus, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the relative dimensions of the diameter of the spray cone.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
(d) Regarding claim 11, the recitation “wherein the code includes a plurality of code elements,…at least one of the plurality of code elements, and the plurality of code elements include an edge-notch arrangement including at least one edge notch, a barcode, and a QR code of the material blank”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Schlatterbeck since Schlatterbeck meets all the structural elements of the claim and is capable of using a material blank wherein the code includes a plurality of code elements, the scanning device 9 is capable of recording at least one of the plurality of code elements, and the plurality of code elements can include an edge-notch arrangement including at least one edge notch, a barcode, and a QR code of the material blank, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 11, Schlatterbeck discloses a spray device (abs; fig 1-3), wherein the code can include a plurality of code elements, the scanning device 9 is capable of recording at least one of the plurality of code elements, and the plurality of code elements can include an edge-notch arrangement including at least one edge notch, a barcode, and a QR code of the material blank 3 ([0026]-0036]; [0047]-[0048]; [0052]; [0062]; [0120]-[0127]; [0131]-[0136]; fig 1-3).
(e) In view of the foregoing, Examiner respectfully contends the limitations of claim 1 are indeed satisfied. Claims 2-9, 11-16 & 19 are rejected at least based on their dependency from claim 1, as well as for their own rejections on the merits, respectively.
Conclusion
10. 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 extension fee 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 date of this final action.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717