Detailed Office Action
Applicant’s amendments and arguments dated 6/25/2026 have been entered and fully considered. Claims 1, 3-4, 8-9, 12, and 15 are amended. Claims 18-20 are cancelled. New claims 21-24 are added. Claims 1-17 and 21-24 remain pending.
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 .
Response to Amendments and Arguments
Applicant’s amendments have overcome the claim objections previously set forth in the non-final office action of 2/26/2026. The objections are withdrawn.
Applicant’s amendments and addition of new claims are acknowledged. These are addressed below in their relevant sections.
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.
Claims 1, 3-11, 14-15, 17, and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over ACTIS (US-2013/0247515; of record), hereinafter ACTIS, in view of JAENSON (US 6,536,336; of record), hereinafter JAENSON. Note that the italicized text below are the instant claims.
Regarding claim 1, ACTIS discloses A weld assembly {[abstract]} comprising:
a drive end configured to generate translating motion {[FIG. 2] 150/124/125/126 is the drive end that creates translation motion};
a connecting rod comprising a first end and a second end, wherein the drive end is connected to the first end to transfer translating motion to a first weld jaw of a weld head that is connected to the second end of the connecting rod {[FIG. 2] 112 is the connecting rod that its first end is connected to 126 and its second end is connected to the first weld jaw 110};
a second weld jaw and a weld interface between the first weld jaw and the second weld jaw, wherein the second weld jaw is pivotably mounted {[FIG. 2] 120 is the second weld jaw that can pivot around pivot pin 142, 122 is the weld interface}.
ACTIS, however, is silent on a spring that is directly or indirectly connected to the first weld jaw to support it and that this connection is without a wrist pin.
In the same field of endeavor that is related to strapping systems, JAENSON discloses a spring connected directly or indirectly to the first weld jaw to support the first weld jaw as the first weld jaw translates by the connecting rod; and wherein the spring is connected directly or indirectly to the first weld jaw without a wrist pin {[C16, L 12-23] note lever arm 94 that is equivalent to connecting rod can be attached to a spring to replace the link arm 99 and thus remove the need for a wrist pin, note that this spring is being taught to connect to the connecting rod, thus it can be directly connected to the second end of the connecting rod and thus to the first weld jaw (see below for more discussion on this)}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of JAENSON in the weld assembly of ACTIS and have included a spring in the connecting rod 112 of ACTIS {[FIG. 2]} such that it is directly connected to the jaw 110 and moves with the first jaw.
As disclosed by JAENSON, the advantage of this spring is that it enables a more precise exertion of pressure and furthermore the spring can be adjusted for specific strap material and thickness {[C16, L 12-23]}.
Regarding the remaining and amended limitation of claim 1 reciting “at a location closer to the second end of the connecting rod than the first end of the connecting rod”, as discussed above, JAENSON teaches the advantage of connecting this spring to the rod, however, explicitly teaches its connection to the first end of the rod.
The Examiner submits that knowing this advantage, and since it has been held that either duplicating or rearranging of a working part of device without modification of the operation of the device is within the skill of an artisan {see MPEP 2144.04 (VI)(C) and MPEP 214.04 (VI)(B)}, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have placed this spring at the second end of the connection rod where it is connected to the first weld jaw.
Note that for the rest of dependent claims the modified weld assembly of ACTIS has a spring attached to the second end of its connecting rod or directly to its first weld jaw.
Regarding claim 3, modified ACTIS discloses further comprising a housing and the drive end and weld head are located within the housing {[FIG. 1] note solid line 102 that surrounds the weld head and drive can be considered the housing}.
Regarding claim 4, modified ACTIS discloses wherein the drive end is a motor that is driven by a battery or AC power {[0033] note motor 124 that it is known to be powered by AC or battery}.
Regarding claim 5 limitation of “wherein the first weld jaw is located in a primary main chamber of the housing and the second weld jaw is located in a secondary main chamber of the housing, and wherein a gap is located between primary main chamber and the secondary main chamber”, as discussed under claim 3, modified ACTIS only discloses a single housing with a single chamber and is silent on the housing having a primary and a secondary chamber.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have separated the single chamber of ACTIS into two chambers or a primary and a secondary chamber with the primary chamber housing the drive and the first weld jaw and the secondary chamber housing the second weld jaw, since as shown by ACTIS these two elements are separate {[FIG. 1]}. Note that it has been held that constructing formerly integral structure into various element involves only routine skill in the art {see MPEP 2144.04 (V)(C)}.
One would have been motivated to do so, since these two elements are separate and independent of each other and thus having two chambers dedicated to each will result in easier access to them.
Regarding claims 6-8 limitations of “wherein the spring is aligned along a neutral plane when a pivot rod is at a 0-degree position on the drive end, and wherein the spring has a first end attached directly or indirectly to the first weld jaw (claim 6), wherein the first end of the spring oscillates from one side to another side of the neutral plane when the drive end rotates (claim 7), wherein an end most edge of the first end of the spring moves along an arc as the first end moves from one side to another side of the neutral plane (claim 8)”, the Examiner notes that modified ACTIS weld assembly has a spring connected the second end of connecting rod 112 at the weld jaw 110 and when pivot rod 126 is at zero degree, this spring is horizontal or in a neutral plane and when the pivot rod 126 moves up the spring will move down and when the pivot rod moves down, the spring moves up relative to the horizon and since the length of spring is constant the movement is in the form of an arc shape {[FIG. 2]}.
Regarding claim 9 limitation of “wherein the first weld jaw oscillates back and forth a total distance of about 1/16 inches to about 1/8 inches”, the Examiner notes that this limitation recites what the apparatus does. The Examiner has shown an apparatus with similar components. Apparatus claims covers what a device is, not what a device does. A claims 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 {see MPEP 2114 (II)}. Furthermore, ACTIS discloses adjustability of its apparatus {[0012]}. Therefore, ACTIS apparatus is capable of the claimed oscillations distances for the first weld jaw.
Regarding claims 10-11, modified ACTIS discloses further comprising two different sections of a strap located between the first weld jaw and the second weld jaw (claim 10), wherein the strap is made from a polyester material or from a nylon material (claim 11) {note that material acted upon by an apparatus does not limit the apparatus (see MPEP 2115); however, see [0011], [0001] note thermoplastic (nylon or polyester)}.
Regarding claim 14, modified ACTIS discloses wherein the second weld jaw has a median line that is orthogonal to a lengthwise axis of the connecting rod {[FIG. 2] note that second weld jaw 120 has a vertical median line going thru 142 that is perpendicular to 112}.
Regarding claim 15 and 22-24 ACTIS discloses A weld assembly {[abstract]} comprising:
a weld head comprising a first weld jaw and a second weld jaw having a weld interface therebetween {[FIG. 2] 110 is the first weld jaw and 120 is the second weld jaw and 122 is the interface in-between};
a connecting piece connected to a drive end for oscillating the first weld jaw {[FIG. 2] 112 is the connecting piece}.
ACTIS, however, is silent on a spring that is connected to the first weld jaw and is a connecting spring that is to the weld head (claim 15) and that the spring is directly connected to the connecting piece (claim 22).
In the same field of endeavor that is related to strapping systems, JAENSON discloses wherein at least one spring is directly or indirectly connected to the first weld jaw to support vibration and angular forces as the first weld jaw oscillates; and wherein the at least one spring is (a) a connecting spring that is in line with and connected to the connecting piece so as to be translated by the connecting piece to then oscillate the weld head or (b) a support spring comprising a first end and a second end, the support spring supports the first weld jaw at the first end of the support spring and connects to a structure that is spaced from the first weld jaw at the second end of the support spring, and wherein the support spring is located closer to the weld jaw than to the connecting piece (claim 15), wherein the connecting spring is directly connected to connecting piece (claim 22), wherein the support spring is a first support spring and further comprising a second support spring spaced from the first support spring (claim 23), wherein the support spring connects indirectly to the first weld jaw (claim 24) {note that (b) in claim 15 is optional and is not mapped here; as the result, claims 23-24 that are related to option (b) in claim 15 also become optional and, therefore, are not mapped here, [C16, L 12-23] note lever arm 94 that is equivalent to connecting piece can be attached to a spring to replace the link arm 99, note that this spring is being taught to connect to the connecting piece, thus it can be directly connected to the second end of the connecting rod and thus to the first weld jaw and since it is part of the connecting piece (also see more discussion below)}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of JAENSON in the weld assembly of ACTIS and have included a spring in the connecting piece 112 of ACTIS {[FIG. 2]} such that it is directly connected to the jaw 110 and moves with the first jaw.
As disclosed by JAENSON, the advantage of this spring is that it enables a more precise exertion of pressure and furthermore the spring can be adjusted for specific strap material and thickness {[C16, L 12-23]}.
Regarding the remaining and amended limitation of claim 15 reciting “which is spaced from the connection piece”, as discussed above, JAENSON teaches the advantage of connecting this spring to the connecting piece, however, explicitly teaches its connection to the first end of the connecting piece. Only by connecting the spring to the second end of the connecting piece, the connecting piece becomes spaced away from the first weld jaw and also the spring becomes in line with the connecting piece (emphasis added by the Examiner).
The Examiner submits that knowing the advantage disclosed by JAENSON, and since it has been held that either duplicating or rearranging of a working part of device without modification of the operation of the device is within the skill of an artisan {see MPEP 2144.04 (VI)(C) and MPEP 214.04 (VI)(B)}, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have placed this spring at the second end of the connection rod where it is connected to the first weld jaw and creates a separation or a space away between the connecting piece and the first weld jaw, since now the duplicated spring and/or the rearranged spring at one is connected to the first weld jaw and at its other end it is connected to the connecting piece, it becomes in line with the connecting piece.
Regarding the limitation of “to support vibration and angular forces as the first weld jaw oscillates”, the Examiner notes that this limitation recites what the apparatus does. The Examiner has shown an apparatus with similar components. Apparatus claims covers what a device is, not what a device does. A claims 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 {see MPEP 2114 (II)}. Furthermore, the Examiner showed that the modified ACTIS has the same components and thus capable of supporting vibration and angular forces.
Note that for the rest of dependent claims the modified weld assembly of ACTIS has a spring attached to the second end of its connecting rod or directly to its first weld jaw.
Regarding claim 17, modified ACTIS discloses wherein the drive end is a motor that is driven by a battery or AC power {[0033] note motor 124 that it is known to be powered by AC or battery}.
Claims 2, 12-13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over combination of ACTIS and JAENSON as applied to claims 1 and 15 above, and further in view of ACTIS356 (US-2008/0202356), hereinafter ACTIS.
Regarding claims 2, 12, and 16, combination of ACTIS and JAENSON discloses all the limitations of claims 1 and 15 as discussed above. Furthermore, and as discussed under claim 1, modified ACTIS discloses claim 12 limitation of “and wherein a spring is located between the first end and the second end of the connecting rod”.
Combination above, however, is silent on the spring being a flat spring. In the same filed of endeavor that is related to strap welding system, ACTIS356 discloses a flat spring {[0044] note replacing a shock absorber with a flat spring (note leaf spring is a plurality of flat springs), note that as discussed under claims 1 and 15, JAENSON teaches that the spring replaces its shock absorber 99}.
At the effective filing date of instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of ACTIS356 in the combination welding assembly of ACTIS and JAENSON and have used a flat spring for the spring of JAENSON that replaced its shock absorber. As disclosed by ACTIS356, it is known that a flat spring can replace the shock absorber {[0044]}.
Regarding claim 13 limitation of “wherein the spring is a first flat spring supporting a first end of the first weld jaw, and further comprising a second flat spring supporting a second end of the first weld jaw”, as discussed above under claims 1 and 12, modified ACTIS has the first flat spring that is connected to a first end of the first weld jaw. Modified ACTIS, however, is silent on a second flat spring that is connected to a second end of first weld jaw. Note that instant claim 13 does not further recite the positional relationship of these two ends.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have duplicated the first flat spring and have attached the second spring at a second end of first weld jaw (i.e. bottom) of ACTIS, since it has been held that a mere duplication of working parts of a device involves only routine skill in the art {see MPEP 2144.04 (Vl)(B)}.
One would have been motivated to have duplicate this spring to exert and more precise control over pressure since as disclosed by JAENSON this is the functionality of the spring {[C16, L15-21]}.
Allowable Subject Matter
Claim 21 is 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.
Claim 21 limits claim 15 to the presence of both (a) and (b) clauses. No prior art were found to discloses clause (b) of claim 15.
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 15-17 and 22-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, and 18-19 of U.S. Patent No. 12,097,663 (hereinafter ‘663). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 15 is claimed by claim 15 of ‘663 noting that it claims the option (b) of instant claim 15. Instant claim 16 is claimed by claim 19 of ‘663 and instant claim 17 is claimed by claim 18 of ‘663. Instant claim 22 relates to the option (a) of instant claim 15 that is not mapped. Instant claim 23 is obvious since it is within the skill of artisan to have duplicated the spring (see duplication arguments above). Instant claim 24 is claimed by claim 15 of ‘663.
Claims 1-5 and 10-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7-8, and 15-18 of U.S. Patent No. 12,097,663 (hereinafter ‘663), in view of ACTIS.
Regarding instant claim 1, claims 1 and 15 of ‘663 claim all the limitation of claim 1, except for the limitation of “wherein the second weld jaw is pivotable mounted”.
In the same filed of endeavor that is related to strap welding, ACTIS discloses wherein the second weld jaw is pivotable mounted {[FIG. 2] 120 is the second weld jaw that can pivot around pivot pin 142}.
At the effective filing date of the instant invention, it would have been obvious to have incorporated the teachings of ACTIS in the claim 1/15 of ‘663 and have pivotably mounted the second weld jaw. As shown by ACTIS, this pivot function enables the second jaw to fully cooperate with the first jaw and facilitate the welding {[FIGs. 3-5] note cooperation of 120 with 110 in three different orientations}.
Instant claim 2 is claimed by claim 19 of ‘663.
Instant claims 3 and 5 are claimed by claims 16-17 of ‘663.
Instant claim 4 is claimed by claim 18 of ‘663.
Instant claim 10 is claimed by claim 1 of ‘663.
Regarding instant claim 11, the Examiner notes that material acted upon by an apparatus does not limit the apparatus (see MPEP 2115).
Instant claim 12 is claimed by claim 19 of ‘663.
Instant claim 13 is claimed by claim 2 of ‘663.
Instant claim 14 is claimed by claims 5 and 7-8 of ‘663.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
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