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 8/12/2026. Claims 4 have been canceled. Claims 1, 3, 9 and 11 have been amended. Claim 21 is added.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues precise proportions drawn from figures may not be relied upon when the specification is silent on the issue. However, the figures are not relied upon for support only for general feasibility of structure. Koch et al. expressly teaches the tamp pad may be made of polyurethane foam or EVA foam having shore 00 hardness 10-60 (See col. 4. Lines 39-41, col. 8, lines 8-10, and col. 9, line 66 to col. 10, line 4), wherein Examiner submits even absent the hollow appendages, foam of such hardness would have been expected to have cavities occupying at least half the pad volume in foam bubbling alone. Further, even assuming the space in foam doesn’t count (and note there is no reason to discount the space in foam without a limitation in the claims), routine optimization as described in the previous action is independently proper because Koch et al. identifies void content as a result effective variable, specifically teaches the hollow appendages reduce the force to compress or deform each appendage (See col. 9, lines 58-63), and pressing pressure is set by the thickness, density, and spaces of appendages (See col. 5, lines 3-10 and col. 9, lines 58-63). This directly indicates increasing void fraction to reduce pressing force and increase flexibility is a predictable adjustment of a disclosed variable and thus supports the routine optimization position. This is especially true since Applicant has no data supporting any special findings at 50% void faction and generally indicates similar properties as suggested in Koh et al.
Applicant argues the treatment of the space between the space as cavity space is not supported by the text in Koch et al. However, the claim is broadly written and there is no reason the entire area beneath the sheet [330] cannot be considered part of the pad and the spaces between the appendages considered part of the void. Examiner considers everything beneath the sheet part of the pad unless Applicant can articulate a reason the instant claim excludes such an interpretation. Examiner notes, even absent such an interpretation being appropriate, and there is no reason to think this is the case, the same optimization logic applies to render the claim obvious.
Applicant further argues Koch does not disclose “at least one additively layered material.” However, this is broadly inclusive of any material that could theoretically be additively layers, such as any plastic/polymer material. Applicant has shown no evidence this limitation refers to anything specific. Further, additive layering is not claimed since the claim refers to a structure a not a process and thus any material that theoretically could have been used in additive layer reads on the claim as written. Note the patentability of a product does not depend on its method of production. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The determination of patentability in product-by-process claims is based on the product itself even though product-by-process claims are limited by and defined by the process. Id. Therefore, “[i]f the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Id.
Applicant argues the compressible material cannot be integral with the base. Examiner respectfully disagrees. Koch et al. teaches an integral structure with hollow finger that “deform and compress with little resistance” and extending from a solid base slab (See col. 7, lines 30-33). The hollow fingers are flexible relative to the base supporting it, which is exactly what Applicant’s own specification teaches (See instant PgPub 2025/0223072, page 4, paragraph [0057], wherein the pressing and securing section are made from the same material).
DE202015106745 indicates the foam structure of Koch et al. may have been formed by 3D printing, i.e. additive layering, even through the claims to not require this process, and any materially potentially used in additive layering is suitable. Regardless, it is clear this would have been a viable forming method in Koch et al. and teaches integrally formed latching elements. Examiner notes Koch et al. teaches a securing section on its own, which is essentially any section less elastically flexible and integrally formed opposite the pressing section, which Koch et al. clearly teaches. Any integral latches may be on this structure in Koch et al. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant also argues bubbles and cavities are distinct, appearing to imply spaces in bubbles does not count as void space. Examiner larger cavity void space is obvious for the reasons above, and further, nothing in the claims limits the space in foam bubbles from coating as cavities as claimed. It is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
For the above reasons, the arguments are not persuasive, and the rejections are maintained.
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) 1-3, 5-7, 10 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 11,225,350) in view of DE202015106745, wherein all textual citations are to the English translation provided).
Regarding Claims 1, 2, 3, 10 and 21, Koch et al. teaches a pressing element for pressing labels onto bottles in a labeling machine (See Abstract, col. 2, lines 60-61, and col. 5, 16-25, wherein the tamp pad is a pressing element as claimed, usable in a labeling device for applying labels to bottles), comprising:
a pressing pad [120] comprising a front-face pressing contour [128] configured to press the labels onto a surface of wall sections of the bottles (See col. 5, lines 6-25, wherein the appendages [128] are a contoured surface for applying pressure to objects such as bottles); and
a rear-face securing section [122] configured to fasten the pressing element to an associated support (See col. 4, lines 24-27), wherein a region of the pressing contour is elastically flexible with respect to the securing section (See col. 7, lines 30-33 and lines 60-63, and it is clear the appendages are flexible relative to the base structure as their design is to flex on the base), wherein the pressing pad and the securing section are integrally formed together (See col. 4, lines 32-35, wherein the base [122] and pressing contour may be integral and arranged additively on top of each other; note the “print layers extending on top of each other is another way of stating the section are integral; and note even though it is not required, additive layering for have been an obvious formation method for the reasons described below) and are made of at least one additively layered material (See col. 8, lines 7-10, and note plastic is an additive material since is capable of use in such process; further no additive laying process is required, see In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), indicating patentability in product-by-process claims is based on the product itself even though product-by-process claims are limited by and defined by the process), and wherein elastically deformable cavities are formed in the pressing pad (See col. 8, lines 3-4 and Figs. 3F, showing a plurality of elongated elastically deformable cavities, the direction of elongation being the longitudinal direction in claim 2).
Koch et al. teaches fastening to a base and thus reasonably indicates it is configured to be fastened to said base, which may be part of an arm (and note the arm is not claimed). However, even assuming such language implies an actual fastening device (and note none is explicitly claimed), this is well-known in similar label pressing pads. DE202015106745 teach a similar pressing pad with locking mechanisms integrally formed with the remainder of the pressing pad in a 3D printing process, i.e. additive layer methods, that secure the press to an arm [16],[13] in a labeling device (See page 1, paragraph [0001], page 10, paragraph [0027], page 19, paragraph [0055] and Fig. 9a, teaching a similar pressing pad with fasteners/locking mechanisms integrally formed in 3D printing and having fasteners [14] to secure it to an arm; note these fasteners [14] are reasonably considered rails that run in the same direction as the appendages, i.e. the longitudinal direction, as in claim 10). Thus, even if a fastening portion and additive layering are required, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize such methods and such fastening device integrally formed on the base. Such methods and structures are well-known to integrally form similar label pressing pads and provide elements to facilitate securing to the base in the labeling machine, i.e. such as an arm. DE202015106745 teaches 3D printing the gripper sponge and its latching elements as one piece (See pages 8-10, paragraphs [0024] and [0027]), and in a one-piece construction, the print layers extend over both the pad and securing section where they adjoin. Examiner further notes no identifiable structural distinction appears to result from this description in Claim 21. See MPEP 2113.
Examiner notes the figures show the cavities wider than the side walls, wherein the cavities extend into the base (See Fig. 3F). Further, a top sheet [330] may also be integrally formed on the appendages, effectively creating new cavities between the base and the sheet (See Fig. 3H and col. 10, lines 10-20). This indicates the appendages section can have cavities between the appendages and within the appendages, making this section almost all cavities. Although the exact volume of cavities is not taught, Koch et al. expressly teaches the tamp pad may be made of polyurethane foam or EVA foam having shore 00 hardness 10-60 (See col. 4. Lines 39-41, col. 8, lines 8-10, and col. 9, line 66 to col. 10, line 4), wherein Examiner submits even absent the hollow appendages, foam of such hardness would have been expected to have cavities occupying at least half the pad volume in foam bubbling alone. Further, even assuming the space in foam doesn’t count (and note there is no reason to discount the space in foam without a limitation in the claims), routine optimization as described in the previous action is independently proper because Koch et al. identifies void content as a result effective variable, specifically teaches the hollow appendages reduce the force to compress or deform each appendage (See col. 9, lines 58-63), and pressing pressure is set by the thickness, density, and spaces of appendages (See col. 5, lines 3-10 and col. 9, lines 58-63). This directly indicates increasing void fraction to reduce pressing force and increase flexibility is a predictable adjustment of a disclosed variable and thus supports the routine optimization position. This is especially true since Applicant has no data supporting any special findings at 50% void faction and generally indicates similar properties as suggested in Koch et al.
Examiner submits it is not inventive to discover the optimum or workable ranges by routine experimentation (See MPEP 2144.05 (II)(A)). Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to use routine experimentation to arrive at the best amount of cavity space and/or wall thickness, such as that which is claimed, in order to meet customer specifications or consumer demands. Doing so would have predictably allowed pressing force and flexibility of the pressing element to be adapted as desired.
Regarding Claim 5, Koch et al. illustrates all appendages as having adjacent wall lines when formed as cavities (See Fig. 3F).
Regarding Claim 6, Koch et al. illustrates a concave outer contour (See Fig. 3D).
Regarding Claim 7, Koch et al. teaches the base may be a rigid material whereas the appendages are flexible, compressible, and/or deformable material (See col. 4, lines 28-41), and also teaches the appendages themselves may have different hardnesses (See col. 8, lines 16-32). Further, DE202015106745 teaches 3D printing easily enables the implementation of different hardness in different location of a pressing pad (See pages 8-9, paragraph [0024]). Thus, at the very least, it would have been obvious to a person having ordinary skill in the art at the time of invention to form the appendage portion softer than the base in Koch et al. This relationship would have predictably enabled the appendage section to conform to what it presses as the base supports it, the desired outcome in Koch et al.
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. and DE202015106745 as applied to Claim 1, and further in view of EP3854709 and Hansen et al. (US 10,388,436).
Regarding Claims 8 and 9, Koch et al. and DE202015106745 teach the method of Claim 1 as described above. Koch et al. further teaches the base [122] and appendages [128] may each be made of the same material (See col. 4, lines 35-36), specifically “a flexible material, such as silicone, silicon rubber, plastic, foam, … or the like” (See col. 8, lines 8-10). Koch et al. doesn’t specifically teach thermoplastic polyurethanes such as TPU95a, but this is an elastic thermoplastic material known to behave like a tough rubber. EP3854709 indicates 3D printed materials can act similar to foams and 3D printing is well-known to enable shaping of elastic material into desired complex shapes for label pressers (See page 10, paragraph [0026] and page 12, paragraph [0032]), which echoes the teachings of DE202015106745. Further, TPU95a, i.e. thermoplastic polyurethane, is well-known as a common material used in 3D printing that is a known alternative to foams and rubbers (See, for example, Hansen et al., col. 6, lines 25-27). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize TPU95a as the material for forming the pressing pad of Koch et al. Koch et al. teaches rubbers, foams, and plastics are suitable materials, and it has been established 3D printing is an ideal forming method. TPU95a is a plastic material well-suited for 3D printing and that is known to function similarly to foams and rubbers. As such, TPU95a would have predictably been a suitable material to achieve the desired properties of the presser in Koch et al. while facilitating use of desirable forming methods such as 3D printing.
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.
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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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