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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-15, drawn to a punching device, classified in B21D 22/02.
II. Claims 16-20, drawn to a punching method, classified in B26D 5/00.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In the instant case the product recited in group I can be used in a process other than the process recited in group II, such as using the product recited in group I to without supplying the oil.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Group I recites a punching device. Group I would require a search in at least B21D 22/02 along with a unique text search.
Group II recites a punching method. Group II would require a search in at least B26D 5/00 along with a unique text search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Jun-Young Jeon on 1/09/2026 a provisional election was made to group I without traverse to prosecute the invention of Group I, claims 1-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 16-20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18791130, filed on 7/31/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/31/2024 and 8/06/2025 were filed on/after the filing date of the application on 7/31/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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 11-15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 11, it is unclear if “a first punch” and “a second punch” are part of a plurality of punches or additional punches on top.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishibe (JPH 10109125A)
Regarding claim 1, Ishibe teaches a punching device (see Figures 3-4) comprising:
a die (7) configured to receive a substrate disposed thereon (see Figure 3);
a stripper (5) spaced apart from and facing the die, and configured to move toward the substrate to fix the substrate (see Figure 3); and
a punch (4) configured to move toward the substrate and cut the substrate, wherein the stripper comprises:
a punch accommodation portion (b) configured to accommodate the punch; and
a punching oil supply passage (a) located inside the stripper, and configured to supply a punching oil to a side surface of the punch accommodation portion (from 12 to punch, see Figure 3).
Regarding claim 2, Ishibe teaches the punch accommodation portion has a shape of a through-hole through which the punch is configured to be inserted via the stripper (See Figure 3).
Regarding claim 3, Ishibe teaches one side surface of the punch accommodation portion is opened (at least opened to the passage a).
Regarding claim 4, Ishibe teaches the punch accommodation portion comprises a plurality of side surfaces, a nozzle of the punching oil supply passage is located on a first side surface from among the plurality of side surfaces of the punch accommodation portion on the inside opening nozzle, see Figure 3), and a side surface of the punch is configured to face the first side surface (see Figure 3).
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 5-6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ishibe (JPH 10109125A).
Regarding claim 5, Ishibe teaches the punching oil supply passage comprises a plurality of punching oil supply passages, a first nozzle of a first punching oil supply passage located on the first side surface of the punch accommodation portion, and the side surface of the punch is configured to face the first side surface (See Figure 3).
Ishibe fails to teach a second punching oil supply passage.
It would have been obvious to one of ordinary skill in the art to modify the device of Ishibe to add additional punching oil supply passage. Since the courts have held that a duplication of parts of an invention involves only routine skill in the art, absent any showing of unexpected results. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) MEPE 2144.04 VI. B.
Regarding claim 6, Ishibe teaches the punching oil supply passage comprises a plurality of punching oil supply passages, a first nozzle of a first punching oil supply passage from among the plurality of punching oil supply passages is located on the first side surface of the punch accommodation portion, and the side surface of the punch is configured to face the first side surface (see Figure 3).
Ishibe fails to teach a second nozzle of a second punching oil supply passage from among the plurality of punching oil supply passages is located on a second side surface from among the plurality of side surfaces of the punch accommodation portion.
It would have been obvious to one of ordinary skill in the art to modify the device of Ishibe to add additional punching oil supply passage. Since the courts have held that a duplication of parts of an invention involves only routine skill in the art, absent any showing of unexpected results. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) MEPE 2144.04 VI. B.
Regarding claim 11, Ishibe teaches the stripper comprises
a punch accommodation portions configured to accommodate a first punches (see Figure 3), and
a punching oil supply passages (a) configured to supply the punching oil,
a first nozzle of a first punching oil supply passage from among the plurality of punching oil supply passages is located on a side surface of a first punch accommodation portion from among the plurality of punch accommodation portions (see Figure 3),
a side surface of a first punch is configured to face the side surface of the first punch accommodation portion (see Figure 3).
Ishibe fails to teach a plurality of punch accommodation portions, a plurality of punching oil supply passages, a second nozzle of a second punching oil supply passage from among the plurality of punching oil supply passages is located on a side surface of a second punch accommodation portion from among the plurality of punch accommodation portions, a side surface of a second punch is configured to face the side surface of the second punch accommodation portion.
It would have been obvious to one of ordinary skill in the art to modify the device of Ishibe to add additional punch, punch accommodation portions and punching oil supply passage arrangement. Since the courts have held that a duplication of parts of an invention involves only routine skill in the art, absent any showing of unexpected results. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) MEPE 2144.04 VI. B.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ishibe (JPH 10109125A) in view of Allen (US 2789922).
Regarding claim 7, Ishibe teaches all elements of the current invention as set forth in claim 1 above.
Ishibe fails to teach the stripper further comprises an air supply passage located inside the stripper, and configured to supply air to the side surface of the punch accommodation portion.
Allen teaches a punching including an oil passage and an air supply passage located inside the stripper, and configured to supply air to the side surface of the punch accommodation portion (see Figures 3-4).
It would have been obvious to one of ordinary skill in the art to modify the device of Ishibe to add the air supply arrangement, as taught by Allen, in order better lubricant the punch (col. 1 lines 15-30 of Allen).
Regarding claim 8, Ishibe teaches all elements of the current invention as set forth in claim 1 above.
Ishibe fails to teach the punch comprises an air supply hole extending through the punch, and configured to supply air to a bottom surface of the punch.
Allen teaches a punching including an oil passage and an air supply passage located inside the stripper, and configured to supply air to the side surface of the punch accommodation portion, an air supply hole extending through the punch, and configured to supply air to a bottom surface of the punch (see Figures 3-4).
It would have been obvious to one of ordinary skill in the art to modify the device of Ishibe to add the air supply arrangement, as taught by Allen, in order better lubricant the punch (col. 1 lines 15-30 of Allen).
Regarding claim 9, modified Ishibe further teaches the air is supplied at a pressure of an unknown value (as modified by Allen, see Figure 3-4 of Allen)
Modified Ishibe fails to teach 0.1 Mpa or more.
Furthermore, with respect to the specific value of 0.1 Mpa or more, the courts have held that where the general conditions of the invention are met, a change in size is generally recognized as being within the level of ordinary skill in the art., In re Rose, 105 USPQ 237 (CCPA 1955). MPEP 2144.04 IV. A. Therefore, it would have been obvious to further modify the device of Ishibe to have the required pressure wanted by the end user.
Regarding claim 10, modified Ishibe teaches all elements of the current invention as set forth in claim 7 above.
Modified Ishibe fails to teach the air supply passage is located below the punching oil supply passage.
It would have been obvious to one of ordinary skill in the art to modify the device of modified Ishibe to move the location of the air supply passage to any location, including the location below the punching oil supply passage. Since the courts have held that a rearrangement of parts of an invention involves only routine skill in the art, absent any showing of unexpected results. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) MEPE 2144.04 VI. C.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ishibe (JPH 10109125A) and in view of Naito (US 4977804).
Regarding claim 12, Ishibe teaches all elements of the current invention as set forth in claim 1 above.
Ishibe fails to teach the punching oil is supplied in a fixed-quantity discharge method.
Naito teaches a controller (33) which controls the amount of oil mist or the like from the dispense path in a punch (col. 5 line 64 – col. 6 line 16), which can be a fixed-quantity discharge method (as the flow rate is controlled).
It would have been obvious to one of ordinary skill in the art to modify the device of Ishibe to add the control system to the fluid supply, as taught by Natio, in order to better control the flow rate of the fluid (col. 5 line 64 – col. 6 line 16 of Natio).
Regarding claim 13, Ishibe teaches all elements of the current invention as set forth in claim 1 above.
Ishibe fails to teach the punching oil is supplied at a predetermined flow rate.
Naito teaches a controller (33) which controls the amount of oil mist or the like from the dispense path in a punch (col. 5 line 64 – col. 6 line 16), which can be a predetermined flow rate (as the flow rate is controlled).
It would have been obvious to one of ordinary skill in the art to modify the device of Ishibe to add the control system to the fluid supply, as taught by Natio, in order to better control the flow rate of the fluid (col. 5 line 64 – col. 6 line 16 of Natio).
Regarding claim 14, Ishibe teaches all elements of the current invention as set forth in claim 1 above.
Ishibe fails to teach a controller configured to adjust an amount of the punching oil, wherein the controller is configured to control a pump connected to the punching oil supply passage to supply the punching oil in proportion to a number of times the punch is raised and lowered.
Naito teaches a controller (33) which controls the amount of oil mist or the like from the dispense path in a punch (col. 5 line 64 – col. 6 line 16), a controller configured to adjust an amount of the punching oil, wherein the controller is configured to control a pump connected to the punching oil supply passage to supply the punching oil in proportion to a number of times the punch is raised and lowered (see Figure 5).
It would have been obvious to one of ordinary skill in the art to modify the device of Ishibe to add the control system to the fluid supply, as taught by Natio, in order to better control the flow rate of the fluid (col. 5 line 64 – col. 6 line 16 of Natio).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Ishibe (JPH 10109125A) in view of Allen (US 2789922) and in further view of Naito (US 4977804).
Regarding claim 15, Ishibe teaches all elements of the current invention as set forth in claim 7 above.
Modified Ishibe fails to teach a controller configured to adjust an amount of the air, wherein the controller is configured to control an air pump connected to the air supply passage to supply the air in proportion to a number of times the punch is raised and lowered.
Naito teaches a controller (33) which controls the amount of oil mist or the like from the dispense path in a punch (col. 5 line 64 – col. 6 line 16), a controller configured to adjust an amount of the air, wherein the controller is configured to control an air pump connected to the air supply passage to supply the air in proportion to a number of times the punch is raised and lowered (control the flow rate).
It would have been obvious to one of ordinary skill in the art to modify the device of Ishibe to add the control system to the fluid supply, as taught by Natio, in order to better control the flow rate of the fluid (col. 5 line 64 – col. 6 line 16 of Natio).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIANG DONG whose telephone number is (571)270-0479. The examiner can normally be reached Monday - Thursday 8 AM-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashley Boyer can be reached at 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIANG DONG/Examiner, Art Unit 3724 3/26/2026
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