DETAILED ACTION
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 .
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: “a cutting element” in claims 1, 4, 29, 45, 48 (interpreted to be a laser cutter), “a positioning device” in claims 1, 4, 45, 48 (interpreted to be a positioning unit and a pressing element, see pages 47-48 of Applicant’s specification, see 35 USC 112(a) and 112(b) rejection below), “a conveying device” in claim 5, 45, 48 (interpreted to be a stationary conveyor or a mobile conveyor, see page 7 of Applicant’s specification), “a movement device” in claims 11 and 29 (interpreted to be gantry robots or articulated-arm robots, see page 13 of Applicant’s specification), “a rotating device” in claim 13 (interpreted to be any device which can rotate, see below 35 USC 112(a) and 112(b) rejection), “a detection unit” in claims 14 and 55 (interpreted to be a sensor system, see page 16 of Applicant’s specification), “a vertically movable pressing element” in claims 16 and 19 (interpreted to be any element which can press, see below 35 USC 112(a) and 112(b) rejection), “positioning means” in claims 17 and 59 (interpreted to be any element which can position, see below 35 USC 112(a) and 112(b) rejection), “at least one contact means” in claim 18 (interpreted to be a coating, see page 19 of Applicant’s specification), “a lifting device” in claims 19 and 60 (interpreted to be clamping grippers, suction grippers, or needle grippers, see page 48 of Applicant’s specification), “a monitoring device” in claim 26 (interpreted to be a sensor system, see page 23 of Applicant’s specification), “an adjusting device” in claims 43 and 66 (interpreted to be any element which can adjust, see below 35 USC 112(a) and 112(b) rejection) .
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-67 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 4, 45, 48, “a positioning device” fails to comply with the written description requirement because “a positioning device” invokes 35 USC 112(f), but the specification does not describe the relevant structural elements required when a claim limitation is interpreted under 35 USC 112(f). See below 35 USC 112(b) rejection.
Regarding claim 13, “a rotating device” fails to comply with the written description requirement because “a rotating device” invokes 35 USC 112(f), but the specification does not describe the relevant structural elements required when a claim limitation is interpreted under 35 USC 112(f). See below 35 USC 112(b) rejection.
Regarding claims 16 and 19, “a vertically movable pressing element” fails to comply with the written description requirement because “a vertically movable pressing element” invokes 35 USC 112(f), but the specification does not describe the relevant structural elements required when a claim limitation is interpreted under 35 USC 112(f). See below 35 USC 112(b) rejection.
Regarding claim 17, “positioning means” fails to comply with the written description requirement because “positioning means” invokes 35 USC 112(f), but the specification does not describe the relevant structural elements required when a claim limitation is interpreted under 35 USC 112(f). See below 35 USC 112(b) rejection.
Regarding claim 43, “an adjusting device” fails to comply with the written description requirement because “an adjusting device” invokes 35 USC 112(f), but the specification does not describe the relevant structural elements required when a claim limitation is interpreted under 35 USC 112(f). See below 35 USC 112(b) rejection.
Regarding claim 59, “positioning means” fails to comply with the written description requirement because “positioning means” invokes 35 USC 112(f), but the specification does not describe the relevant structural elements required when a claim limitation is interpreted under 35 USC 112(f). See below 35 USC 112(b) rejection.
Regarding claim 66, “an adjusting device” fails to comply with the written description requirement because “an adjusting device” invokes 35 USC 112(f), but the specification does not describe the relevant structural elements required when a claim limitation is interpreted under 35 USC 112(f). See below 35 USC 112(b) rejection.
All other claims are rejected because they depend from a rejected claim.
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 1-67 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.
Regarding claims 1, 4, “the circumferential cutting path” and “the cutting paths” lack antecedent basis. Additionally, “a substantially circumferential cutting path” is indefinite because it is unclear how circumferential the cutting path must be in order to be “substantially circumferential”. For examination purposes, “a substantially circumferential cutting path” is being interpreted as “a circumferential cutting path”.
Claim limitation “a positioning device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification describes the positioning devices as comprising “a pressing element” and “a positioning unit”, but neither of these features contain the required relevant structure to satisfy the requirements of 35 USC 112(f). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 4, claim 4 is indefinite because it is unclear which limitations of claim 4 are part of the preamble and which limitations are part of the body of the claim. Claim 4 does not contain the required transitional phrases (“comprising”, “consisting”) to indicate which limitations are part of the preamble of the claim and which limitations are the body of the claim.
Regarding claim 6, “the opposite side walls” and “the region” lack antecedent basis.
Regarding claim 7, “the second cutting module” lacks antecedent basis.
Regarding claim 8, “the second cutting module” lacks antecedent basis.
Regarding claim 9, “the second cutting direction” lacks antecedent basis.
Regarding claim 10, “the respective cutting path” and “the respective side wall” lacks antecedent basis.
Regarding claim 12, “the movement devices” lacks antecedent basis.
Regarding claim 13, “the conveying device” lacks antecedent basis.
Claim limitation “a rotating device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 15, “the basis” lacks antecedent basis.
Regarding claim 16, “the latter”, “the pressing element”, and “the conveying device” lacks antecedent basis. Additionally, “the latter” is indefinite because it is unclear what “the latter” refers to. For examination purposes, “the latter” is being interpreted to mean “the outer packaging”.
Claim limitation “a vertically movable pressing element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 17, claim limitation “positioning means” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 18, “the respective positioning means” and “the respective side wall” lacks antecedent basis.
Regarding claim 19, claim limitation “a vertically movable pressing element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 25, “the operating region” and “the cut-off collar” lack antecedent basis.
Regarding claim 26, “the respective cutting position” lacks antecedent basis.
Regarding claim 29, “in particular in side walls and/or a lid of an outer packaging” is indefinite because it is unclear if this limitation is required. For examination purposes, this limitation is being treated as an optional limitation.
Additionally, “in particular for a cutting device according to claim 1” is indefinite because it is unclear if this limitation is required. For examination purposes, this limitation is being treated as an optional limitation, such that claim 29 does not depend from claim 1.
Regarding claim 36, “the spring force” lacks antecedent basis.
Regarding claim 38, “the cutting element housing” lacks antecedent basis.
Regarding claim 40, “the cutting direction” lacks antecedent basis.
Regarding claim 41, “the cutting direction” lacks antecedent basis.
Regarding claim 43, claim limitation “an adjusting device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 45, claim 45 is indefinite because a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite (see MPEP 2173.05(p)). The scope of claim 45 is unclear because claim 45 falls across two statutory categories, such that it is unclear when infringement occurs. Claim 45 is being treated as an independent claim.
Additionally, “the circumferential cutting path”, “the control unit”, “the determined cutting height”, and “the cut-off collar” lack antecedent basis. In step viii) of claim 45, “a first, second, third and fourth cutting path” is indefinite because it is unclear if “a first, second, third and fourth cutting path” in step viii) is the same as “a first and second cutting path” in step iv) and “a third and fourth cutting path” in step vii). For examination purposes, “a first, second, third and fourth cutting path” in step viii) is being interpreted as “the first, second, third and fourth cutting path”.
Moreover, “a substantially circumferential cutting path” is indefinite because it is unclear how circumferential the cutting path must be in order to be “substantially circumferential”. For examination purposes, “a substantially circumferential cutting path” is being interpreted as “a circumferential cutting path”.
Claim limitation “a positioning device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification describes the positioning devices as comprising “a pressing element” and “a positioning unit”, but neither of these features contain the required relevant structure to satisfy the requirements of 35 USC 112(f). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 48, “the circumferential cutting path”, “the determined cutting height”, and “the cut-off collar” lack antecedent basis. Additionally, in step viii) of claim 45, “a first, second, third and fourth cutting path” is indefinite because it is unclear if “a first, second, third and fourth cutting path” in step viii) is the same as “a first and second cutting path” in step iv) and “a third and fourth cutting path” in step vii). For examination purposes, “a first, second, third and fourth cutting path” in step viii) is being interpreted as “the first, second, third and fourth cutting path”.
Moreover, “a substantially circumferential cutting path” is indefinite because it is unclear how circumferential the cutting path must be in order to be “substantially circumferential”. For examination purposes, “a substantially circumferential cutting path” is being interpreted as “a circumferential cutting path”.
Claim limitation “a positioning device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification describes the positioning devices as comprising “a pressing element” and “a positioning unit”, but neither of these features contain the required relevant structure to satisfy the requirements of 35 USC 112(f). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 49, “the movement” lacks antecedent basis.
Regarding claim 50, “the same cutting systems” lacks antecedent basis.
Regarding claim 54, “the cutting paths”, “the respective cutting element” and “the respective side wall” lacks antecedent basis.
Regarding claim 56, “the basis” and “the detected outer packaging data” lack antecedent basis.
Regarding claim 57, “such that it” is indefinite because it is unclear what “it” refers to. For examination purposes, “such that it” is being interpreted to mean “such that the cutting height”. Additionally, “the same level”, “the height”, and “the lid” lack antecedent basis.
Regarding claim 58, “the positioning” lacks antecedent basis.
Regarding claim 59, “the positioning” lacks antecedent basis.
Claim limitation “positioning means” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 60, “the cut-off collar” lacks antecedent basis.
Regarding claim 61, “the cut-off collar”, “the severing of regions”, and “the cutting paths” lacks antecedent basis.
Regarding claim 63, “the respective cutting direction” and “the cutting paths” lacks antecedent basis.
Regarding claim 64, “the respective cutting direction” and “the cutting paths” lack antecedent basis.
Regarding claim 65, “the penetration end”, “the cutting paths”, and “the respective cutting element” lack antecedent basis.
Regarding claim 66, “the respective cutting unit” lacks antecedent basis.
Claim limitation “an adjusting device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
All other claims are rejected because they depend from a rejected claim.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 29-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ours et al (US 6,694,852), hereinafter Ours.
Regarding claim 29, Ours discloses a cutting system (Fig. 1) for an automatically operated cutting device for applying cutting paths (Fig. 2, item 212, 214, 216), in particular in side walls and/or a lid of an outer packaging (Fig. 2, item 204, 202), in particular for a cutting device (Fig. 3, item 124, 126) according to claim 1 (Col. 2, line 63-Col. 3, line 60), comprising a movement device (Fig. 3, item 328, 330, 306, 308) (Col. 2, line 63-Col. 3, line 60) and a cutting unit (Fig. 3, item 310, 312) mounted thereon, wherein the cutting unit has a cutting head (Fig. 3, item 310, 312) and a cutting element (Fig. 3, item 310, 312, rotary blade 310, 312 is an equivalent of a laser cutter, as “cutting element” is interpreted under 35 USC 112(f) above) mounted on the cutting head (Col. 2, line 63-Col. 3, line 60).
Regarding claim 30, Ours discloses the cutting system according to claim 29, wherein the cutting element is configured to be vertically adjustable (Col. 2, line 63-Col. 3, line 60, cutting devices 302, 304 is adjustable).
Regarding claim 31, Ours discloses the cutting system according to claim 29 wherein the cutting head is mounted on the cutting unit so as to be pivotable about a horizontal axis (Col. 2, line 63-Col. 3, line 60, cutting head 302, 304 is pivotable because cutting head rotates).
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.
Claims 33-35, 37, and 40-42 are rejected under 35 U.S.C. 103 as being unpatentable over Ours in view of Porter et al (US 2004/0250670), hereinafter Porter.
Regarding claim 33, Ours is silent about the cutting system according to claim 29, wherein the cutting head comprises a connection arrangement, a base body arranged on the connection arrangement, and a cutting element support arranged on the base body, the cutting element being mounted on the cutting element support.
However, Porter teaches a cutting system (Porter, Fig.5) wherein a cutting head (Porter, Fig. 5) comprises a connection arrangement (Porter, Fig. 5, item 45), a base body (Porter, Fig. 5, item 44) arranged on the connection arrangement (Porter, Para. 0098-0102), and a cutting element support (Porter, Fig. 5, item 64, 66) arranged on the base body (Porter, Para. 0098-0102), the cutting element (Porter, Fig. 5, item 63, 8A) being mounted on the cutting element support (Porter, Para. 0098-0102).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Ours and Porter to modify the cutting system of Ours to include the cutting head of Porter. A person of ordinary skill in the art would have been motivated to make such change in order to efficiently, accurately, and automatically remove packaging material during the shipping or mailing process, thus reducing bottlenecks during the sorting process (Porter, Para. 0005).
Regarding claim 34, as combined above, Porter teaches the cutting system according to claim 33, wherein the cutting unit comprises a cutting head holder (Porter, Fig. 5, cutting head holder is base which drive 45 is mounted on), wherein the connection arrangement is arranged on the cutting head holder (Porter, Para. 0098-0102).
Regarding claim 35, as combined above, Porter teaches the cutting system according to claim 34, wherein the connection arrangement is mounted on the cutting head holder in a horizontally displaceable manner (Porter, Para. 0098-0102) such that the cutting element can be guided along a cutting path (Porter, Para. 0098-0102) curved in a horizontal plane (Porter, Para. 0098-0102).
Regarding claim 37, Ours is silent about the cutting system according to claim 29, wherein the cutting head comprises a support member, which can be positioned against a side wall of an outer packaging, wherein a normal distance between a vertical tangential plane of a vertex of the cutting element and a contact surface of the support member is constant.
However, Porter teaches a cutting system wherein the cutting head comprises a support member (Porter, Fig. 5, item 64, 63), which can be positioned against a side wall of an outer packaging (Porter, Para. 0098-0102), wherein a normal distance between a vertical tangential plane (Porter, Para. 0098-0102) of a vertex of the cutting element (Porter, Para. 0098-0102) and a contact surface of the support member is constant (Porter, Para. 0098-0102, cutting elements 8A, 8B can remain stationary during cutting such that the distance between the cutting element and the support member is constant).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Ours and Porter to modify the cutting system of Ours to include the cutting head of Porter. A person of ordinary skill in the art would have been motivated to make such change in order to efficiently, accurately, and automatically remove packaging material during the shipping or mailing process, thus reducing bottlenecks during the sorting process (Porter, Para. 0005).
Regarding claim 40, Ours is silent about the cutting system according to claim 34, wherein the cutting element is movably mounted on the cutting element support and is driven by a cutting element drive device to perform an oscillating movement relative to the cutting head parallel to the cutting direction.
However, Porter teaches a cutting system (Porter, Para. 0098-0102) wherein the cutting element is movably mounted on the cutting element support (Porter, Para. 0098-0102) and is driven by a cutting element drive device (Porter, Fig. 5, item 64, 66) to perform an oscillating movement (Porter, Para. 0098-0102) relative to the cutting head parallel to the cutting direction (Porter, Para. 0098-0102).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Ours and Porter to modify the cutting system of Ours to include the cutting head of Porter. A person of ordinary skill in the art would have been motivated to make such change in order to efficiently, accurately, and automatically remove packaging material during the shipping or mailing process, thus reducing bottlenecks during the sorting process (Porter, Para. 0005).
Regarding claim 41, Ours is silent about the cutting system according to claim 34, wherein the cutting element is movably mounted on the cutting element support and is driven by a cutting element drive device to perform an oscillating movement relative to the cutting head orthogonal to the cutting direction.
However, Porter teaches a cutting system (Porter, Para. 0098-0102) wherein the cutting element is movably mounted on the cutting element support (Porter, Para. 0098-0102) and is driven by a cutting element drive device (Porter, Fig. 5, item 64, 66) to perform an oscillating movement (Porter, Para. 0098-0102) relative to the cutting head orthogonal to the cutting direction (Porter, Para. 0098-0102).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Ours and Porter to modify the cutting system of Ours to include the cutting head of Porter. A person of ordinary skill in the art would have been motivated to make such change in order to efficiently, accurately, and automatically remove packaging material during the shipping or mailing process, thus reducing bottlenecks during the sorting process (Porter, Para. 0005).
Regarding claim 42, Ours discloses the cutting system according to claim 41, characterized in that wherein the cutting element has a rounded penetration end (Fig. 3, item 310, 312).
Prior Art Rejection
Claims 1-28, 32, 36, 38-39, and 43-67 are currently free from prior art, however, a subsequent prior art rejection may be made in view of Applicant’s amendments submitted to overcome the above rejections.
Conclusion
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/VERONICA MARTIN/Primary Examiner, Art Unit 3731
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