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.
The claim limitation(s) being treated under 35 USC 112(f) are: “handling means” in claim 1 (interpreted to be wheels and/or a motor, see for example Para. 0061-0062 of Applicant’s specification), “guiding member” in claim 1 (interpreted to be any structure which can guide the deflecting means, see below 35 USC 112(a) and 112(b) rejection), “deflecting means” in claim 1 (interpreted to be a frame and rollers, see for example Para. 0040 of Applicant’s specification), “first actuating means” in claim 10 (interpreted to be a motor, see for example Para. 0043 of Applicant’s specification), “a first rotating element” in claim 13 (interpreted to be a first pinion, see for example Para. 0111 of Applicant’s specification), and “a second rotating element” in claim 13 (interpreted to be a second pinion, see for example Para. 0111 of Applicant’s specification).
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 1-16 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 claim 1, “a guiding member” fails to comply with the written description requirement because the disclosure does not adequately describe the relevant structure for “a guiding member”. This limitation is interpreted under 35 USC 112(f), however the specification does not disclose the structure associated with “a guiding member” capable of performing the recited function, as required under 35 USC 112(f).
Regarding claims 2-16, claims 2-16 are rejected because they depend from rejected claim 1.
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 1-16 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 1, claim limitation “a guiding member” 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 claims 2-16, claims 2-16 are rejected because they depend from rejected claim 1.
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 1-4, 10-11, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Roberto (EP 3835220 B1) in view of Casale et al (US 2024/0010372), hereinafter Casale.
Regarding claim 1, Roberto discloses a packaging machine (Fig. 5), configured to wrap one or more objects with a tape of packaging material, comprising:
a support structure (Fig. 5, item 23, 2) (Fig. 3, item 2, 54, 55, 50, 52, 53) configured to accommodate a reel (Fig. 5, item 100) of the tape of packaging material (Fig. 5);
a guiding member (Fig. 5, item 21) mechanically connected to said support structure (Fig. 5) and extending overhanging (Fig. 5, guiding member 21 extends upwardly from support 23) with respect to said support structure along an axis Z (Fig. 5, axis Z is in the up down direction through guiding member 21); and
deflecting means (Fig. 5, item 22) (Fig. 4, item 56, 57) configured to deflect the tape of packaging material (Para. 0070-0079) (Para. 0086-0100);
wherein said deflecting means are slidingly coupled to said guiding member (Para. 0070-0079), and in that wherein said deflecting means are movable between a proximal position (Para. 0070-0079), wherein said deflecting means approach said support structure (Para. 0070-0079), and a distal position (Para. 0070-0079), wherein said deflecting means move away from said support structure (Para. 0070-0079) to wrap said one or more objects with said tape of packaging material at least partially along said axis Z (Para. 0070-0079).
Roberto is silent about the support structure including handling means configured to handle said support structure.
However, Casale teaches a packaging machine (Casale, Fig. 1, item 1) configured to wrap objects, the packaging machine comprising a support structure (Casale, Fig. 1, item 2) including handling means (Casale, Fig. 1, item 21) configured to handle said support structure (Casale, Fig. 1) (Casale, Para. 0063-0064).
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 Roberto and Casale to modify the packaging machine of Roberto to include the handling machine of Casale. A person of ordinary skill in the art would have been motivated to make such change in order to precisely position the packaging machine around the object to be wrapped (Casale, Para. 0008).
Regarding claim 2, Roberto discloses the packaging machine (10) according to claim 1, wherein said support structure defines a housing compartment (Fig. 1, plate 2 defines a housing compartment for reel 100), extending along an axis W (Fig. 3, plate 2 extends parallel to the floor), so as to contain at least partially said reel (Fig. 2, plate 2 supports reel 100); said deflecting means being mechanically separated from said housing compartment (Fig. 5, deflecting means 22 are a separate component from housing compartment defined by plate 2).
Regarding claim 3, Roberto discloses the packaging machine (10) according to claim 2, wherein said axis Z of said guiding member (Fig. 5, axis Z is in the up down direction through guiding member 21) is orthogonal with respect to said axis W of said housing compartment of said support structure (Fig. 5, axis W runs parallel to the floor, through plate 2) for facilitating an unwinding of said tape of packaging material from said reel (Para. 0048-0063).
Regarding claim 4, Roberto discloses the packaging machine (10) according to claim 2, wherein said deflecting means are configured to receive said tape along an unwinding direction (Para. 0070-0079) (Para. 0086-0100) starting from said housing compartment (Para. 0070-0079) (Para. 0086-0100) and to deflect said tape along an exit direction (Para. 0070-0079) (Para. 0086-0100) different from said unwinding direction (Fig. 5, direction that film is fed to deflecting means 22 is different from the directly that film exits deflecting means 22), so that, in use, said exit direction is directed towards said one or more objects to be wrapped (Para. 0070-0079) (Para. 0086-0100).
Regarding claim 10, Roberto discloses the packaging machine (10) according to claim 1, further comprising: first actuating means (Fig. 5, item 26) mechanically connected to said deflecting means (Para. 0070-0079) in order to move said deflecting means along said guiding member (Para. 0070-0079);
Roberto is silent about an electronic control unit, electronically linked to said first actuating means and configured to control an activation and/or operation of said first actuating means.
However, Casale teaches an electronic control unit (Casale, Para. 0064-0065), electronically linked to said first actuating means (Casale, Para. 0064-0065) and configured to control an activation and/or operation of said first actuating means (Casale, Para. 0064-0065).
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 Roberto and Casale to modify the packaging machine of Roberto to include the electronic control unit of Casale. A person of ordinary skill in the art would have been motivate dot make such change in order to operate and control in a coordinated way the supply of the film from the reel (Casale, Para. 0065).
Regarding claim 11, Roberto discloses the packaging machine according to claim 10, wherein said first actuating means comprise: a first motor (Fig. 5, item 26) mechanically mounted on said support structure (Para. 0070-0079); and a transmission group (Fig. 5, item 25) housed within said guiding member (Para. 0070-0079) and mechanically connected to said first motor and to said deflecting means (Para. 0070-0079).
Regarding claim 14, Roberto discloses the packaging machine according to claim 2, wherein said support structure comprises at least two rollers (Fig. 3, item 52, 53, 54) configured to support said reel (Para. 0059-0063) and allow said reel to rotate about the axis to unwind said tape (Para. 0059-0063).
Regarding claim 15, Roberto discloses the packaging machine according to claim 2, wherein said reel unwinds by rotating about the axis (Para. 0048-0063), facilitating an unwinding of the tape (Para. 0048-0063) directly towards said deflecting means (Para. 0048-0063).
Roberto does not expressly disclose the axis W extends horizontally. However, it would have been an obvious matter of design choice to position the reel such that it rotates about a horizontal axis, since applicant has not disclosed that the axis W extending horizontally solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well with the reel rotating about a vertical axis, as taught by Roberto.
Allowable Subject Matter
Claims 5-9, 12-13, and 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 5, Roberto does not teach a first roller rotatably mounted on said frame and configured to rotate about an axis V parallel to said axis W; and a second roller rotatably mounted on said frame and configured to rotate about an axis U orthogonal to said axis W and substantially parallel to said axis Z of said guiding member.
Regarding claims 6-9 and 16, claims 6-9 and 16 would be allowable because they contain the allowable subject matter of claim 5.
Regarding claim 12, Roberto does not teach a transmission group housed within the guiding member having a movable body arranged at least partially parallel to said axis Z and mechanically constrained to said deflecting means by at least one connecting element placed at a crossing of said guiding member.
Regarding claim 13, claim 13 would be allowable because it contains the allowable subject matter of claim 12.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VERONICA MARTIN whose telephone number is (571)272-3541. The examiner can normally be reached Monday-Thursday 8:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571)270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VERONICA MARTIN/Primary Examiner, Art Unit 3731
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