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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “a rotation transmission means” and “a stress relief means” in claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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) 1-4, and 11-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kai, Foreign Patent Document, WO2014065079 (refer to the 3/12/2026, Examiner provided, English Translation for corresponding page and line numbers).
Regarding independent claim 1, Kai discloses a transfer tool (Page 1, Description, line 1) that allows a transfer tape fed out from a feed reel to be wound onto a take-up reel via a transfer head (Page 2, lines 3-5), the transfer tool comprising a rotation transmission means having a plurality of rotation transmission members that have a disc shape and transmitting rotation of the feed reel to the take-up reel (113, 115, 116, Fig. 9), wherein each rotation transmission member is rotatably supported by a support shaft (111, 112, 211, Fig. 5), and wherein at least one rotation transmission member of the plurality of rotation transmission members is provided with a stress relief means (see section regarding Claim Interpretation above) that relieves bending stress when the rotation transmission member is attached to the support shaft (Page 15, lines 5-7), wherein for the at least one rotation transmission member (115, Fig. 5, 7) the support shaft that rotatably supports the at least one rotation transmission member has a plurality of shaft portions divided in a circumferential direction (112 divided by slit 112a, Fig. 5 to make a plurality of shaft portions), wherein the stress relief means comprises an opening arranged relative to a base portion of at least one of the shaft portions (first, second, and third slit openings shown in Annotated Figure 7 of Kai, below are arranged relative to base portion of 112) so as to allow the base portion to move in a direction in which the shaft portion deforms when the rotation transmission member is attached to the support shaft, thereby reducing the bending stress when attaching the rotation transmission member to the support shaft (Page 15, lines 5-7; The structure of Kai is equivalent to applicant’s claimed structure and would therefore be capable of performing the function as claimed - so as to allow the base portion to move in a direction in which the shaft portion deforms when the rotation transmission member is attached to the support shaft, thereby reducing the bending stress when attaching the rotation transmission member to the support shaft).
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Annotated Figure 7 of Kai
Regarding claim 2, Kai discloses the limitations of claim 1, and wherein the support shaft has a plurality of shaft portions divided in a circumferential direction, and wherein the stress relief means includes an opening provided inside the plurality of shaft portions (Page 15, lines 4-7; 112a, Fig. 5).
Regarding claim 3, Kai discloses the limitations of claim 2, and wherein the stress relief means includes a first slit opening, a second slit opening, and a third slit opening (See annotated Figure 7 of Kai, above), wherein the support shaft has a first shaft portion and a second shaft portion divided in a circumferential direction (112 divided by slit 112a, Fig. 5 to make first and second shaft portions), wherein the first shaft portion is provided in a first support portion disposed between the first slit opening and the second slit opening, and wherein the second shaft portion is provided in a second support portion disposed between the second slit opening and the third slit opening (See annotated Figure 7 of Kai, above).
Regarding claim 4, Kai discloses the limitations of claim 3, and wherein a first thick portion whose width along the second slit opening is wider than a tip portion of the first shaft portion is formed at a root portion of the first shaft portion (see root portion on annotated Figure 7 of Kai, above, and 112 Figure 6 which shows root portion wider than tip portion of 112), and wherein a second thick portion whose width along the second slit opening is wider than a tip portion of the second shaft portion is formed at a root portion of the second shaft portion (see root portion on annotated Figure 7 of Kai, above, and 112 Figure 6 which shows root portion wider than tip portion of 112).
Regarding claims 11-14, Kai discloses the limitations of claims 1-4, and the rotation transmission means comprising: a feed rotation transmission member rotatably supported by a feed support shaft and integrally rotatable with the feed reel (113, Fig. 6); a take-up rotation transmission member rotatably supported by a take-up support shaft and integrally rotatable with the take-up reel (116, Fig. 6); and an intermediate rotation transmission member rotatably supported by an intermediate support shaft and disposed between the feed rotation transmission member and the take-up rotation transmission member (115, 112, Fig. 5, 6), wherein the stress relief means is provided to relieve bending stress when the rotation transmission member is attached to at least a support shaft having a smallest shaft diameter among the feed support shaft, the take-up support shaft, and the intermediate support shaft (Page 15, lines 4-7; shaft 112 is the smallest of 111, 112, 211, Fig. 5).
Regarding claims 15-18, Kai discloses the limitations of claims 1-4, and the rotation transmission member is a gear (115, Fig. 6).
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.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kai, Foreign Patent Document, WO2014065079 in view of Kinugasa et al., US7793883.
Regarding claims 9 and 10, Kai discloses the limitations of claims 3-4, and first to third slit openings (see annotated Figure 7 of Kai, above). Kai does not disclose the openings extend substantially parallel to a direction of stress acting on the rotation transmission member via the transfer tape when the transfer tape is used.
However, Kinugasa et al., teaches a transfer tool for a transfer tape wherein openings (34x, Fig. 5) extend substantially parallel to a direction of stress acting on the rotation transmission member via the transfer tape when the transfer tape is used (transfer tape will put stress on wheel in the left/right direction of Fig. 5, thus openings 34x are substantially parallel). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of Kai and Kinugasa et al. because it is one of a finite number of identified, predictable solutions (openings could be oriented between 0°-180° with respect to the stress acting on the rotation transmission wheel), with a reasonable expectation of success. Likewise, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kai, Foreign Patent Document, WO2014065079 in view of Watanabe, US11492225.
Regarding claims 19-22, Kai discloses the limitations of claims 1-4, and the rotation transmission member. Kai does not disclose the rotation transmission member is a pulley.
However, Watanabe teaches a transfer tool for transfer tape, wherein the rotation transmission member is a pulley (8, Fig. 2A). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of Kai and Watanabe to use a pulley as the rotation transmission member because it is one of a finite number of identified, predictable solutions (rotation transmission systems are well known to be gears, belt and pulleys, or chain and sprockets), with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 6/8/2026 have been fully considered but they are not persuasive.
With respect to applicant’s arguments on pages 12-14 that Kai does not disclose the features of claim 1, as claimed. It is noted that Kai discloses an opening arranged relative to a base portion of at least one of the shaft portions, see annotated Figure 7 of Kai above which shows first, second, and third slit openings arranged relative to shaft portions 112a, 112b. Applicant’s arguments are therefore not persuasive.
In response to applicant's argument that Kai does not disclose the function of “so as to allow the base portion to move in a direction in which the shaft portion deforms when the rotation transmission member is attached to the support shaft”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case the prior art structure is equivalent to applicant’s claimed invention, and thus would be capable of performing the intended use. Applicant’s arguments are therefore not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/K.R.B./Examiner, Art Unit 3654
/Victoria P Augustine/ Supervisory Patent Examiner, Art Unit 3654
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