DETAILED ACTION
The communication dated 8/5/2024 has been entered and fully considered.
Claims 1-16 are pending. Claims 13-16 have been withdrawn from further consideration.
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 1-12, drawn to a product, classified in B65H 75/505.
II. Claims 13-16, drawn to process of using, classified in B25B 11/00.
The inventions are independent or distinct, each from the other because:
Inventions Group I and Group II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product can be practiced in a materially different process of using the product, such as using the product on an automobile or engine with a core that is not deformed.
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:
(a) the inventions have acquired a separate status in the art in view of their classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions required a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
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 Attorney Prestin Van Mieghem on 6/24/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “a rotatable expansion means” in claim 1, which is recited with sufficient structure for performing the function in dependent claim 6.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 5, 7, 11 and 12 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.
Claim 5 recites the limitation "the expansion member" in line 3. The recitation is indefinite, in the context of the claim. It is unclear if the expansion member is a different component from the quick expansion member.
Claims 7, 11, and 12 recite the limitation "the opening" in line 1. There is insufficient antecedent basis for this limitation in the claim.
The recitation “the roll of package strapping” in claim 5 lacks antecedent basis.
The recitation “the deformed core” in claims 5 and 12 lacks antecedent basis.
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, 5 and 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over MA et al. (CN 214770451U, original and translation provided), in view of Weber et al. (U.S. 10,781,071), hereinafter WEBER.
Regarding claim 1, MA teaches: A strapping core corrector (HE teaches a clamping tool for stable processing [pg. 1].) comprising: . . . ; and a rotatable expansion means operatively coupled to the first arcuate side and the second arcuate side (MA teaches a rotatable expansion means operatively coupled to the first arcuate side and the second arcuate side [Figs. 3-4].), wherein the rotatable expansion means is configured to apply a force to the first arcuate side to bias the first arcuate side away from the second arcuate side (MA teaches rotatable expansion means configured to apply a force to the first arcuate side to bias the first arcuate side away from the second arcuate side [Figs. 3-4].).
HE is silent as to: a first arcuate side including a first flange coupled substantially perpendicularly to a first collar; a second arcuate side including a second flange coupled substantially perpendicularly to a second collar; at least one slide coupled to an end of the first arcuate side and an end of the second arcuate side, wherein the at least one slide is movably coupled to one or both of the first arcuate side and the second arcuate side, wherein the first arcuate side couples to the second arcuate side via the at least one slide in a manner in which the first flange and the second flange are approximately parallel and the first collar and the second collar are approximately parallel in about a same plane. In the same field of endeavor, cores, WEBER teaches: a first arcuate side including a first flange coupled substantially perpendicularly to a first collar (WEBER teaches a first arcuate side including a first flange side coupled substantially perpendicularly to a first collar [Figs. 1a, 2, 3a].); a second arcuate side including a second flange coupled substantially perpendicularly to a second collar (WEBER teaches a second arcuate side including a second flange side coupled substantially perpendicularly to a second collar [Figs. 1a, 2, 3a].); at least one slide coupled to an end of the first arcuate side and an end of the second arcuate side (WEBER teaches at least one slide (208) coupled to an end of the first arcuate side and an end of the second arcuate side [Figs. 1a, 2, 3a, 3c, 3f, 3g; Col. 4, lines 57-66; Col. 5, lines 4-11; Col. 9, lines 7-13].), wherein the at least one slide is movably coupled to one or both of the first arcuate side and the second arcuate side (WEBER teaches at least one slide (106) is movable coupled to one of the first arcuate side or the second arcuate side [Figs. 1a, 2, 3a, 3c, 3f, 3g; Col. 4, lines 57-66; Col. 5, lines 4-11; Col. 9, lines 7-13].), wherein the first arcuate side couples to the second arcuate side via the at least one slide in a manner in which the first flange and the second flange are approximately parallel and the first collar and the second collar are approximately parallel in about a same plane (WEBER teaches the first arcuate side couples to the second arcuate side via the at least one slide (106) in a manner in which the first flange and the second flange are approximately parallel and the first collar and the second collar are approximately parallel in about a same plane [Figs. 1a, 2, 3a, 3c, 3f, 3g; Col. 4, lines 57-66; Col. 5, lines 4-11; Col. 9, lines 7-13].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify MA, by having a first flange and a second flange and a first collar and a second collar with a slide, as suggested by WEBER, in order to be able to be adjusted [Col. 5, lines 9-11].
Regarding claim 2, MA teaches: further comprising a quick expansion member configured to temporarily disengage a shaft of the rotatable expansion means to allow manual movement of the first arcuate side away from the second arcuate side (MA teaches a quick expansion member (135) configured to temporarily disengage a shaft of the rotatable expansion means to allow the manual movement of the first arcuate side away from the second arcuate side [Figs. 3-4; pgs. 2-3].).
Regarding claim 5, MA and WEBER do not explicitly teach: wherein a user can use the quick expansion member to provide the initial expansion of the core corrector and the user can use the expansion member to provide additional tension on the deformed core to aid in correcting the deformed core of the roll of package strapping. However, the recitation “wherein a user can use the quick expansion member to provide the initial expansion of the core corrector and the user can use the expansion member to provide additional tension on the deformed core to aid in correcting the deformed core of the roll of package strapping” is an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner's position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that MA discloses a quick expansion member as presently claimed, it is clear that the quick expansion member of MA would be capable of performing the intended use, i.e. wherein a user can use the quick expansion member to provide the initial expansion of the core corrector and the user can use the expansion member to provide additional tension on the deformed core to aid in correcting the deformed core of the roll of package strapping, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 7, MA teaches: wherein the opening of the rotatable expansion means is sized to fit around a spindle of a package strapping dispenser (MA teaches the opening of the rotatable expansion means is sized to fit a shaft [Figs. 3-4; pg. 3].).
Regarding claim 8, WEBER further teaches: wherein the at least one slide is fixedly coupled to one of the first arcuate side or the second arcuate side (WEBER further teaches locking the slide to the arcuate sides [Col. 6, lines 13-22].).
Regarding claim 9, WEBER further teaches: wherein the at least one slide is slidably coupled to another of the one of the first arcuate side or the second arcuate side (WEBER teaches the slide is slidable coupled to the arcuate sides [Figs. 1a, 2, 3a, 3c, 3f, 3g; Col. 4, lines 57-66; Col. 5, lines 4-11; Col. 9, lines 7-13].).
Regarding claim 10, WEBER further teaches: wherein the first arcuate side and the second arcuate side are connected to be substantially circular (WEBER further shows the arcuate sides are substantially circular [Figs. 1a, 2, 3a, 3c, 3f, 3g].).
Regarding claim 11, MA teaches: wherein the opening is configured to be a handle for carrying the core corrector (MA teaches the opening is configured to hold a shaft [Figs. 3-4; pg. 3].).
Regarding claim 12, MA and WEBER do not explicitly teach: wherein a user can place a leverage tool in the opening to provide additional force to the deformed core. However, the recitation “wherein a user can place a leverage tool in the opening to provide additional force to the deformed core” is an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner's position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that MA discloses an opening to insert objects as presently claimed, it is clear that the opening of MA would be capable of performing the intended use, i.e. wherein a user can place a leverage tool in the opening to provide additional force to the deformed core, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over MA et al. (CN 214770451U, original and translation provided), and Weber et al. (U.S. 10,781,071), hereinafter WEBER, as applied to claim 1 above, and further in view of Fang et al. (CN 110616732A, original and translation provided), hereinafter FANG.
Regarding claim 6, MA and WEBER teach all of the claimed limitations as stated above, but are silent as to: wherein the rotatable expansion means comprises at least one threaded shaft having a first threaded shaft end rotatably connected to one of the first arcuate side or the second arcuate side and a second threaded shaft end connected to a spline such that rotation of the spline in a first direction biases the first arcuate side away from the second arcuate side. In the same field of endeavor, cores, FANG teaches expansion means coupled to a first and second arcuate sides and the expansion means are configured to apply a force to the first arcuate side and the second arcuate side and bias one side away from the other [Figs. 2-4; pg. 8]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify MA and WEBER, by having expansion means biasing the sides away by a spline, as suggested by FANG, in order to initially fix the internal structure of the core (anchor cage) and prevent it from deforming [pgs. 8-9].
Claim(s) 3-4, 7 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over MA et al. (CN 214770451U, original and translation provided), and Weber et al. (U.S. 10,781,071), hereinafter WEBER, as applied to claims 1 and 2 above, and further in view of Nelson (U.S. PGPUB 2018/0065827), hereinafter NELSON.
Regarding claim 3, MA and WEBER teach all of the claimed limitations as stated above, but are silent as to: wherein the quick expansion member comprises a wing nut and a pin including threads disposed on one side of the pin. In the same field of endeavor, cores, NELSON teaches the quick expansion member comprises a wing nut and a pin (312, 322) [0018]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify MA and WEBER, by having the quick expansion member have a wing nut and pin, as suggested in order to prevent the insert from being damaged [0018] and be free to rotate [0019].
Regarding claim 4, MA and WEBER teach all of the claimed limitations as stated above, but are silent as to: wherein the quick expansion member comprises a threaded knob and a pin including threads disposed on one side of the pin. In the same field of endeavor, cores, NELSON teaches the quick expansion member comprises a threaded knob and a pin (312, 322) [0019]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify MA and WEBER, by having the quick expansion member have a threaded knob and pin, as suggested in order to prevent the insert from being damaged [0018] and be free to rotate [0019].
Regarding claim 7, MA and WEBER teach all of the claimed limitations as stated above. In the alternative, in the same field of endeavor, cores, NELSON teaches: wherein the opening of the rotatable expansion means is sized to fit around a spindle of a package strapping dispenser (NELSON teaches rotatable expansion means is sized to fit around a spindle (650/850) of a package [Figs. 6, 8; 0037-0038]). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify MA and WEBER, by having the opening of the rotatable expansion means fit a spindle, as suggested by NELSON, in order to accommodate different width rolls [0037].
Regarding claim 11, MA and WEBER teach all of the claimed limitations as stated above. In the alternative, in the same field of endeavor, cores, NELSON teaches: wherein the opening is configured to be a handle for carrying the core corrector (NELSON teaches the opening is configured to be handle [0019]). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify MA and WEBER, by having the opening configured to be a handle, as suggested by NELSON, in order to be comfortably gripped [0019].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE BEHA whose telephone number is (571)272-2529. The examiner can normally be reached MONDAY - FRIDAY 9:00 A.M. - 5:00 P.M.
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, ABBAS RASHID can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.B./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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