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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-14, drawn to loading device, classified in B05C13/00.
II. Claim 15, drawn to coating system classified in B05B16/20.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because can be used without a coating system in a molding system. The subcombination has separate utility such as a transport system.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
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:
• The invention and method have acquired a separate status in the art in view of their different classification
• The prior art applicable to one invention would not likely be applicable to another
• The inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
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 Thomas Lee on 08/06/2026 a provisional election was made without traverse to prosecute the invention of the loading systems, claims 1-14. Affirmation of this election must be made by applicant in replying to this Office action. Claim 15 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: cutting means in claim 1. For purpose of compact prosecution, cutting means is interpreting as any device that can cut including knife, scissor, cutter.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-14 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 1 recites the limitation “contact-free.” It is unclear what contact free means. Is it contact free (does it mean there’s a gap between the area?) Clarification is required. Claims 2-14 are dependent on claim 1 and therefore also rejected.
Regarding claim 1, “rack-like”, “hook-like”, and “detection means”, and “cutting means” renders the claim indefinite since it is difficult to ascertain the bounds of “like.” For compact prosecution, examiner is interpreting the limitations as rack and hook and detection and cutting.
Regarding claim 14, it is unclear what the claim limitation is claiming when it recites the limitation, wherein at least one feed means, on which workpieces can be deposited, fed to the handling unit and gripped by the loading handling means. Applicant is interpreting it as as the handling unit can grip the feed and drop it on the workpiece.
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.
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.
Claim(s) 1-2, 5-6, 7, and 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cienkus (US 5769949 A) in view of Sun (US11760962B1)
Regarding claim 1, Cienkus discloses a loading device for a coating system with at least one holding device (abstract) which comprises:
at least one rack-like frame (50) and at least one carrier made of a rod-like or wire- like continuous material (44), which can be or is secured with one end to the frame and on which at least one hook-like holding section is formed, on which a workpiece to be coated can be arranged,
and which comprises at least one control unit (column 6 lines 40-47), by which, on the basis of the dimensions of the frame and the workpiece, the dimensions of the at least one hook-like holding section and of a minimum distance between two hook-like holding sections on the carrier for contact-free arrangement of the workpiece and by which the total length of the continuous material for forming the carrier can be determined, and with at least one provisioning device which interacts functionally with the detection device, by which the carrier can be produced, which provides a continuous material carrier, which provides the continuous material forming the carrier (the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities).
which provides a deformation unit, by which a hook-like holding section (94) can be moulded by a region-wise plastic deformation of the provided continuous material in accordance with the determined dimensions and the determined minimum distance (column 5 lines 32-41)
Cienkus does not explicitly disclose with at least one detection device which comprises a detection means, by which at least the dimensions of the frame and of the workpiece can be detected and which provides a cutting means, with which the provided continuous material can be cut once the total length of the remaining continuous material carrier is achieved. However, analogous art, Sun, discloses a sensor used for adjusting the assembling process (column 6 lines 5-13) and which provides a cutting means, with which the provided continuous material can be cut once the total length of the remaining continuous material carrier is achieved (column 5 lines 45-52).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a sensor and a cutter as taught by ‘429 into the apparatus taught by Cienkus for the benefit of monitoring and adjusting the assembling process and the final product.
Regarding claim 2, Cienkus depicts wherein the carrier and the at least one hook-like holding section form a common one-piece component (see figures 12-14). Further, MPEP 2144.05 states In re Larson, 340 F.2d 965, 968, 133 USPQ 347, 349 (CCPA 1965); In re Lockhart, 90 USPQ 214. The use of a one piece construction instead of the structure disclosed in the prior art would be obvious. It has been held to be within the general skill of one working in the art to make plural parts unitary or integral.
Regarding claim 5, Cienkus discloses wherein at least one of the at least one hook-like holding section formed on the carrier comprises, in the arrangement of the carrier fixed to the frame, a horizontal region (50) which opens into the carrier, and a vertical region (72) which opens into the horizontal region and has a free end for arranging the workpiece on the side facing away from the horizontal region (figures 10-11), wherein the hook-like holding section is arranged with both the horizontal region and the vertical region extending parallel to a plane spanned by the frame, or wherein the hook-like holding section is arranged with the horizontal region or with the vertical region extending perpendicular to a plane spanned by the frame (see figures 10-11 and 23).
Regarding claim 6, Cienkus and Sun do not explicitly disclose wherein at least one of the at least one detection means comprises at least one manually operable input means, by which at least the dimensions of the frame and of the workpiece can be entered and/or in that at least one of the at least one detection means comprises at least one sensor means, by which at least the dimensions of the frame and of the workpiece can be detected automatically. However, Cinekus discloses system may be controlled by any number of available process control computers (column 6 lines 40-47) and Sun discloses controllers configured for controlling the operation of the tableting equipment including the operation of the slicing device (column 18, lines 10-15). Further, it is within the skillset of one ordinary skill in the art to use a computer to input controls in a controller. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding claim 7, as for the claim limitation, the control unit comprises a calculating means by means of which the dimensions of the at least one hook-like holding section of the minimum distance between two hook-like holding sections and the total length of the continuous material can be calculated and/or in that the control unit comprises a memory means in which the values for the dimensions of the at least one hook-like holding section, the minimum distance between two hook-like holding sections and the total length of the continuous material are stored, , the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities. As for the memory means, all computers have CPU which implies memories.
Regarding claim 9, Cienkus depicts wherein the holding device comprises at least two receptacles which are fixed to the rack-like frame and are assigned to a carrier (figures 10 and 11 show 2 carriers), to which the carrier can be detachably fixed and through which the carrier can be connected to a power source and energised when fixed (column 5 lines 46+ implies power source).
Regarding claim 10, Cienkus depicts wherein the holding device comprises at least two carriers which can be fixed or are fixed to the rack-like frame running essentially parallel to one another (see figures 10 and 11).
Regarding claim 11, the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities.
Regarding claim 12, Cienkus discloses wherein at least one handling unit, which comprises at least one provisioning handling means, by means of which the carrier produced by the provisioning device can be picked up at the provisioning device and can be arranged on the frame of the holding device (column 4 lines 51+).
Regarding claim 13, Cienkus discloses wherein the handling unit comprises at least one loading handling means, by means of which a workpiece can be picked up and arranged on a holding section of a carrier fixed to the frame and/or by means of which a holding device loaded with at least one workpiece can be transferred to a coating system (column 4 lines 1-22). Further, MPEP 2144.04 states it has generally been recognized that to shift location of parts when the operation of the device is not otherwise changed is within the level of ordinary skill in the art, In re Japikse, 86 USPQ 70; In re Gazda, 104 USPQ 400.
Regarding claim 14, Cienkus discloses wherein at least one feed means, on which workpieces can be deposited, fed to the handling unit and gripped by the loading handling means, the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cienkus (US 5769949 A) in view of Sun (US11760962B1), as applied to claim 1, and further in view of Tashiro (US 2010/0224309A1).
Regarding claim 3, Cienkus doesn’t explicitly discloses wherein the at least one deformation unit of the provisioning device comprises a contact means which is arranged parallel to the direction of extension of the continuous material provided and which comprises a continuous opening, and in that the at least one deforming unit of the provisioning device comprises a pulling means which engages behind the continuous material provided on a side facing away from the contact means and transfers the hook-like holding section to be formed through the opening transversely or obliquely to the direction of extension of the continuous material provided.
However, analogous art, Tashiro depicts, wherein the at least one deformation unit (34) of the provisioning device comprises a contact means which is arranged parallel to the direction of extension of the continuous material provided and which comprises a continuous opening, and in that the at least one deforming unit of the provisioning device comprises a pulling means [0091] which engages behind the continuous material provided on a side facing away from the contact means and transfers the hook-like holding section to be formed through the opening transversely or obliquely to the direction of extension of the continuous material provided ([0090], figure 4). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated wherein the at least one deformation unit of the provisioning device comprises a contact means which is arranged parallel to the direction of extension of the continuous material provided and which comprises a continuous opening, and in that the at least one deforming unit of the provisioning device comprises a pulling means which engages behind the continuous material provided on a side facing away from the contact means and transfers the hook-like holding section to be formed through the opening transversely or obliquely to the direction of extension of the continuous material provided, as taught by Tashiro, into the system taught by Cienkus for the benefit of producing at a high production rate [0008].
Regarding claim 4, Tashiro depicts wherein the at least one deformation unit of the provisioning device comprises at least one twisting means (34), by means of which the hook-like holding section to be formed, which is transferred through the opening of the contact means, can be plastically deformed by twisting and/or in that the at least one deformation unit of the provisioning device comprises at least one bending means by means of which the hook-like holding section to be formed, which is transferred through the opening of the contact means, can be deformed by bending (figure 4, [0090]).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cienkus (US 5769949 A) in view of Sun (US11760962B1), as applied to claim 1, and further in view of Davitz (US4243146 A).
Regarding claim 8, Cienkus does not explicitly disclose wherein the holding device is electrically conductive but discloses electrical charged potential (column 1 lines 25-30). However, Davitiz discloses using steel and copper (column 4 lines 55-61). One ordinary skill in the art would recognize using metal material would make the holding device electrically conductive. MPEP 2144.07 discloses the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a holding device that is electrical since choosing materials is within the skillset of one ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at (571)270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754
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