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 Amendment
This is a response to the amendment filed 6/23/2026. Claims 31, 32, and 34 have been amended. Claim 35 and 36 are added.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues that the purpose of the footboard is for an operator to stand on to work above the floor, and plate [41] in Elder et al. (US 2005/0153427) cannot hold a labeling aggregate and simultaneously function as a footboard. This argument is directed to intended use and is insufficient to distinguish the instantly claimed structure of the apparatus of Claim 18 from the prior art structure. It is noted that 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. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226,228-29 (CCPA 1971 ); In re Danly, 263 F.2d 844,847, 120 USPQ 528,531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Further, a claim 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" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Claim 18 requires that, in the active condition, the footboard "defines a resting surface for at least one foot of the operator, arranged spaced apart above a floor," and in the inactive condition "occupies a smaller space, laterally to said frame." Claim 18 does not require that the footboard be usable as a foot rest during labeling operations, nor that it perform only as a foot rest with no alternate function. Eder et al. discloses plate [41] as a horizontal plate-like element standing on feet [42] (See page 3, paragraph [0041]), which provides an upwardly directed surface spaced apart above the floor that is capable of resting a foot, or standing on as a support. The fact the plate [41] also serves as a support holder for a labeling aggregate does not negate this capability since the labeling aggregate is not necessarily present on the plate [42] and the plate need not act as a foot rest during labelling.
Applicant's contention that the "labeling aggregate" corresponds to the claimed "labeling unit" is acknowledged, but does not prevent anticipation of Claim 18. Plate [41] is a distinct element from labeling aggregate [8]. Eder discloses each recited element: frame [2], conveyance means [3], at least one labeling unit [8], and a footboard [41] movable between the active condition and the inactive condition. As such, the rejection of Claim 18 is not overcome.
Claim 36 is addressed below. Claimed 35 is indicated allowable as the footboard and labeling unit are not offset as the labeling unit is either remote from the rotating structure or on the “footboard” and thus Applicant’s argument is persuasive for this added claim.
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.
“Conveyance means” is considered to be some sort of conveyor belt, turntable, carousel, or equivalent device for conveying containers.
“Means for resting” is considered to be support feet or like supporting structure for the footboard.
“Removable means” is considered a mechanical locking device, such as physical snapping devices, or electromechanical devices, such as may use current to restrict movement.
“Sensor means” is interpreted as being a sensor using known methods for presence detection such as light, pressure, etc.
“Signaling means” is considered to be a signal emitter such as a light or sound emitter, etc.
“Fixing means” is considered to be a detachable mechanism, such a snapping, screws, or any known means to re-detachably secure a part.
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.
Claim 32-34 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 32, “the condition of engagement” has no antecedent basis. Examiner assumes this indicates “the detection means detects when the supporting structure is engaged with the footing” and encourages Applicant to write it as such for clarity.
Regarding Claim 33, the Examiner submits the language of this claim remains confusing and requests Applicant re-write with more clarity. The detection means is previously described as detecting position of the supporting structure and the removable means allows locking of the footboard, such as a snap or electromagnetic lock. The language “of the positioning in the condition of engagement of said supporting structure with said footing” is not clear. The Examiner previously asked Applicant to re-write this language or at least provide clarity on the record for the final portion of this claim what is the intended function. Examiner assumes the claim requires the footboard to remain locked in the inactive condition if the supporting structure is not present and is automatically unlocked upon positioning of the support structure upon the footing to allow movement to the active condition. Examiner requests Applicant re-write, “upon the detection, by said detection means, that said supporting structure is engaged with said footing.”
Claim 34 is rejected as being dependent on Claim 32.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 18-20, 22, 23, 26, 27, 28 and 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eder et al. (US 2005/0153427).
Regarding Claims 18 and 26, Eder et al. a labeling machine (See Abstract), comprising a frame [2] which supports conveyance means [3] for containers to be labeled (See page 2, paragraph [0024], page 3, paragraphs [0040], and Fig. 6, wherein a rotating carousel [3], which can convey bottles for labeling, is a conveyance means as claimed) at least one labeling unit [8] for the containers conveyed by said conveyance means (See page 2, paragraph [0024] and Fig. 2, wherein a labelling aggregate, i.e. a labelling unit, may be arranged to able labels to the conveyed articles, such as bottle containers), wherein said frame [2] supports at least one board [41] configured to move between an active condition, in which the footboard defines a resting surface, arranged spaced apart above a floor, and at least one inactive condition, in which the board [41] occupies a smaller space, laterally to said frame [2], with respect to said active condition (See page 3, paragraphs [0041]-[0042] and Fig. 8, showing a board [41] flipped, by rotation around an parallel to the floor, between active and inactive conditions as claimed; note such “flipping” is considered to oscillate as in Claim 26 since it is unclear how else “oscillate around a rotation axis” can be interpreted).
Although not taught specifically as a footboard for the foot of an operator, Examiner submits to the extent this limits structure, it implies a study structurally secure flat surface close to, but above the ground, and the plate [41] qualifies. Surely an operator could easily step onto such a surface, and such a surface would support their weight with ease, thus making the plate [41] reasonably interpreted as a “footboard” as claimed unless Applicant can articulate a clear structural distinction such terminology conveys that distinguishes from said plate [41]. Examiner submits the intended use of a given structure does not convey patentability when all structure of such a device is otherwise identical.
Regarding Claim 19, 27, and 28, Eder et al. teaches a footing [2] for supporting conveyance means [3] (See Fig. 8, clearly showing frame [2] on “feet” as a “footing”) and teaches the labeling aggregate is centered relative to the carousel (See page 1, paragraph [0009], clearly indicating close proximity), and Examiner submits anything that supports the area where labels are applied (i.e. the label head, etc.), which necessarily must be present, is a support structure that may be considered part of the device frame of the device, which is considered the support base in contact with the ground/floor. Note feet [42] are distinct from board [41] and form such a supporting structure. Said footboard [41] is reasonably mounted on both frame [2] and supporting structure [42] (See Fig. 8).
Regarding Claims 20 and 22, Eder et al. teaches means for resting [42], i.e. feet, on the floor for the board [41], and disposed substantially at an end of board [41] furthest from frame [2] (See Fig. 8 and page 3, paragraph [0041]). Note Claim 20 is not dependent on Claim 19 and thus distinct interpretations of the same feet [42] are valid.
Regarding Claim 23, Examiner notes this language is extremely vague and given broad interpretation to mean any overlap in a plan view of anything that may be interpreted to be frame and anything interpreted to be board reads on claim 23. Examiner submits ring [4] is considered part of the frame and connection element [10’] is considered part of the footboard, and they clearly overlap (See Fig. 8, where in connection element [10’] wraps around ring [4], including in the inactive condition) and thus have “perimetric space occupation” as claimed.
Regarding Claim 36, the surface of the board [41] is clearly a flat surface across its width and the fact ledges [48] may be attached to said flat surface does not negate it as a flat surface, nor does the claim mandate nothing can be secured on the flat surface as claimed.
Allowable Subject Matter
Claims 21, 24, 25, 29 and 30, 31, and 35 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 32-34 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Examiner notes the “removable means” must lock in both the inactive AND active condition. Although locking in an inactive condition is likely obvious, locking in both active and inactive is much more specific and the board [41] in Eder et al. would appear to use gravity to remain in an active condition.
Although Eder et al. teaches a board that reads on the board as claimed, it is for a different intent and thus any further engineering of the board in line with known footboards generally cannot be considered obvious. Footboards for functional use are known in labelling, such as a foot pedal to accomplish a function (See, for example, CH1321962, Figs. 3-4, showing foot pedal [8] in labelling device), but this is distinct from the purpose in the instant invention and may be made small and located in a less accessible area, thus providing limited motivation for an inactive condition where it takes up less lateral space.
Examiner notes although foot supports or stands are surely common in any factory settings to engage in work higher up, such a support would typically be loose and moved where needed. Although simplistic steps or stands, such as welded in place supports, are also surely known, their documentation is sparse, indicating a lack of engineering associated with such supported. CN202212959 (Fig. 6) and Kodama et al. (US 2017/0057766) (Fig. 2) teaches steps in factory settings, but these are fixed steps that do not retract or stow as claimed. Such stowable footboards are well-known in seating (See e.g., Johnson et al., US 3,869,169, teaching a sliding stowable footrest), and transportation (See e.g., Reitnouer, US 10,710,508, teaching a retractable foot support/step), but such technology is not considered analogous to factory settings, such as in labelling machinery. Therefore, since step supports such as footboards are sparse in factory and industry setting such as in a labelling machine as claimed, there appears to be limited engineering effort put into efforts for such steps. As such, for the specific aspects of the instant claims not readable or generally inferable from the support [41] in Eder et al., there is considered limited motivation to implement them in a labelling machine as described absent hindsight.
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 SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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