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 .
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 1-3, 5, 11, 14-16, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-2, 7, 10, 15-16, and 19 of U.S. Patent No. 12,084,307. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that Claims 1-3, 5, 11, 14-16, and 20 are included and/or can be gleaned from Claims 1-2, 7, 10, 15-16, and 19 of U.S. Patent No. 12,084,307.
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.
Claim(s) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Engelsmann et al (U.S. Patent No. 3,567,147), hereinafter “Engelsmann”.
With respect to Claim 1, Engelsmann, Figures 1-5, teaches a device, comprising:
a reel 6 configured to rotate;
a guiding block 1,9,12, positioned around the reel 6, configured with an opening 2 at a receiving end between the guiding block 1,9,12, wherein each of the guiding block has an inner surface 12d configured to guide a received material on a path around a surface of the reel 6; and
a set of force application devices 11,14 configured to apply force on the set of guiding blocks 1,9,12 in one or more radially inward directions that are generally towards the reel 6.
Engelsmann teaches all the elements of the device except for a plurality of guiding blocks.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a plurality of guiding blocks since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
With respect to Claim 2, Engelsmann further teaches wherein the inner surface 7a of the plurality of guiding blocks are arc shaped.
With respect to Claim 3, Engelsmann is advanced above.
Engelsmann teaches all the elements of the device except for
wherein the plurality of guiding blocks are positioned at different positions from the surface of the reel when the reel is unloaded.
It was advanced above that it is obvious to provide a plurality of guiding blocks.
As such, it would have been an obvious matter of design choice, as determined through routine experimentation and optimization, to design the positioning of the guiding blocks of Engelsmann as specified in Claim 3, because one of ordinary skill would have been expected to have routinely experimented to determine the optimum design for a particular use.
With respect to Claim 6, Engelsmann is advanced above.
Engelsmann teaches all the elements of the device except for
wherein the set of guiding blocks comprises a plurality of guiding blocks positioned at different distances from the surface of the reel absent the received material on the reel.
It was advanced above that it is obvious to provide a plurality of guiding blocks.
As such, it would have been an obvious matter of design choice, as determined through routine experimentation and optimization, to design the positioning of the guiding blocks of Engelsmann as specified in Claim 6, because one of ordinary skill would have been expected to have routinely experimented to determine the optimum design for a particular use.
With respect to Claim 7, Engelsmann, Figures 1-5, teaches a device, comprising:
a reel 6 configured to rotate; and
a guiding block 1,9,12, positioned around the reel 6, configured with an opening 2, at a receiving end, configured to:
receive a first tape 5,
load the reel 6 with the first tape 5,
and unload the first tape 5 from the reel 6.
Engelsmann teaches all the elements of the device except for a set of guiding blocks.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a set of guiding blocks since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
With respect to Claim 8, Engelsmann further teaches wherein the first tape 5 is received from a tape and reel feeder.
With respect to Claim 9, Engelsmann further teaches wherein the set of guiding blocks are structured to guide the first tape 5 onto the reel 6.
With respect to Claim 10, Engelsmann further teaches wherein the set of guiding blocks comprises curved inner surfaces.
With respect to Claim 14, Engelsmann, Figures 1-5, teaches a method, comprising:
operating a motor that rotates a reel 6; and
loading or unloading, via curved inner surfaces of a guiding block 1,9,12 positioned around the reel 6, a material 5 onto or from the reel 6.
Engelsmann teaches all the elements of the device except for a set of guiding blocks.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a set of guiding blocks since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
With respect to Claim 18, Engelsmann further teaches wherein the motor is configured to operate in a first direction when the material is loaded onto the reel 6 or in a second direction when the material unloaded from the reel.
With respect to Claim 19, Engelsmann further teaches wherein the curved inner surfaces define a path for the material around the reel.
With respect to Claim 20, Engelsmann further teaches wherein the path around the surface of the reel is a spiral-shaped path.
Allowable Subject Matter
Claims 4-5, 11-13, and 15-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Claim 4 is allowable over the prior art of record because the prior art of record does not teach or suggest the entire combination of elements of the device set forth including
wherein the plurality of guiding blocks includes a first guiding block and a second guiding block, wherein an exterior surface of the first guiding block intersects with an interior surface of the second guiding block to provide the path around the surface of the reel.
None of the references of the prior art teach or suggest wherein the plurality of guiding blocks includes a first guiding block and a second guiding block, wherein an exterior surface of the first guiding block intersects with an interior surface of the second guiding block to provide the path around the surface of the reel as advanced above and such do not provide the necessary motivation, absent applicant's specification, for modifying the device in the manner required by the claims.
Claim 5 is allowable over the prior art of record because the prior art of record does not teach or suggest the entire combination of elements of the device set forth including wherein the opening of the plurality of guiding blocks is configured to receive the received material after inspection by an automated optical inspection tool.
None of the references of the prior art teach or suggest wherein the opening of the plurality of guiding blocks is configured to receive the received material after inspection by an automated optical inspection tool as advanced above and such do not provide the necessary motivation, absent applicant's specification, for modifying the device in the manner required by the claims.
Claim 11 is allowable over the prior art of record because the prior art of record does not teach or suggest the entire combination of elements of the device set forth including a set of tracks through which the set of guiding blocks are configured to travel towards or away from the reel.
None of the references of the prior art teach or suggest a set of tracks through which the set of guiding blocks are configured to travel towards or away from the reel as advanced above and such do not provide the necessary motivation, absent applicant's specification, for modifying the device in the manner required by the claims.
Claims 12-13 are allowable over the prior art of record because the prior art of record does not teach or suggest the entire combination of elements of the device set forth including a set of force application devices configured to apply force on the guiding blocks to move radially inward towards the reel.
None of the references of the prior art teach or suggest a set of force application devices configured to apply force on the guiding blocks to move radially inward towards the reel as advanced above and such do not provide the necessary motivation, absent applicant's specification, for modifying the device in the manner required by the claims.
Claim 15 is allowable over the prior art of record because the prior art of record does not teach or suggest the entire combination of elements of the device set forth including wherein the material is further loaded onto the reel, or unloaded from the reel, via one or more tracks from which the guiding blocks are configured to travel towards or away from the reel.
None of the references of the prior art teach or suggest wherein the material is further loaded onto the reel, or unloaded from the reel, via one or more tracks from which the guiding blocks are configured to travel towards or away from the reel as advanced above and such do not provide the necessary motivation, absent applicant's specification, for modifying the device in the manner required by the claims.
Claims 16-17 are allowable over the prior art of record because the prior art of record does not teach or suggest the entire combination of elements of the device set forth including wherein the material is further loaded onto the reel, or unloaded from the reel, via a set of force application devices configured to apply force to resist the set of guiding blocks from traveling away from the reel.
None of the references of the prior art teach or suggest wherein the material is further loaded onto the reel, or unloaded from the reel, via a set of force application devices configured to apply force to resist the set of guiding blocks from traveling away from the reel as advanced above and such do not provide the necessary motivation, absent applicant's specification, for modifying the device in the manner required by the claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM ARAUZ RIVERA whose telephone number is (571)272-6953. The examiner can normally be reached Monday to Friday 9:00 AM to 8:00 PM MDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Victoria P. Augustine can be reached at 313-446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM A. RIVERA/Primary Examiner, Art Unit 3654