DETAILED ACTION
No Attorneys of Record
The examiner suggests filing a power of attorney to facilitate efficient prosecution.
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 limitations are:
i. Claims 1, 4, 6, 14 and 17-19, “labelling module”, which has been interpreted as, in the alternative, two support shafts for supporting a reel of web material, guide rollers, a cutter, or a transfer drum, or equivalents thereof. See Applicant’s published application (paragraphs 97-100).
ii. Claims 1, 14-15 and 17-19, “splicing device”, which has been interpreted as a web splicer, or equivalents thereof. See Applicant’s published application (paragraph 38; Figure 1). It is noted the pad structure recited in claims 18-19 is not disclosed as being sufficient in itself for performing the function of splicing. Accordingly, this limitation is still interpreted under 35 USC 112(f) in claims 18-19, with the additional positive recitation of at least one pad as recited in claims 18-19.
iii. Claims 4 and 6, “web feeding unit”, which has been interpreted as a support for a reel of web material, or equivalents thereof. See Applicant’s original claim 3. This limitation is not interpreted under 35 USC 112(f) in claims 1, 14 and 17-19 in view of the recited support structure. It is noted that the specific web feeding unit recited in claims 4 and 6 is not clearly limited to having the support for supporting a reel of the web as recited in parent claim 1 because claims 4 and 6 do not clearly refer back to the web feeding unit of claim 1.
iv. Claims 1, 6 and 18, “transport element”, which has been interpreted as a structure integral with a leading portion of the web which can be coupled with the positioning device, or equivalents thereof. Such structure is implicitly indicated in paragraph 94 of Applicant’s published application.
v. Claims 1, 6, 14 and 16-19, “positioning device”, which has been interpreted as, in the alternative, at least one robot, or the combination of a guide rail and a cart, or equivalents thereof. See Applicant’s published application (paragraphs 77-81). This limitation is not interpreted under 35 USC 112(f) in claim 2 in view of the recited at least one robot.
vi. Claim 6, “detectable element(s)”, which has been interpreted as, in the alternative, a QR code, a bar code, a tag, or a mark, or equivalents thereof. See Applicant’s published application (paragraph 39).
vii. Claim 6, “means of automatically reading”, which has been interpreted as a magnetic or optical reader, or equivalents thereof. See Applicant’s published application (paragraphs 89-90).
viii. Claim 17-19, “feeding system”, which has been interpreted as the combination of a splicing device and a positioning device, each interpreted as above, or equivalents thereof. See Applicant’s published application (original claim 1).
ix. Claim 20, “means of a suction action”, which has been interpreted as a vacuum pad, or equivalents thereof. See Applicant’s published application (paragraph 71).
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 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 18-20 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 claim 18, line 3, it is unclear if “a positioning device” is referring back to the positioning device recited in parent claim 17. The examiner suggests --the is configured to automatically:--.
Regarding claim 18, line 8, it is unclear if “a splicing position” and “a web leading portion” are referring back to the corresponding terms recited in parent claim 17. The examiner suggests --[[a]] the splicing position-- and --[[a]] the web leading portion--.
Regarding claim 19, lines 4-10, these limitations have been added to amended parent claim 17. It is unclear why they are repeated in claim 19 and this also makes it unclear if “a positioning device”, “a web leading portion”, “a splicing position”, “a web feeding unit”, “a support” and “a reel of the new web” are referencing the corresponding terms in parent claim 17. The examiner suggests deleting lines 4-10 of claim 19.
Allowable Subject Matter
Claim 1-2, 4, 6 and 9-17 are allowed. Dependent claims 18-20 will be in also be in condition for allowance upon correcting the above noted issues of clarity in claims 18-19, for example as suggested by the examiner.
Claim 1 has been amended to incorporate previously indicated allowable subject matter, as noted in the arguments filed 16 June 2026.
Claim 17 is allowable in view of the 16 June 2026 amendment for the reasons argued by Applicant.
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 MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745c
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