Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments with respect to claims 1-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-13 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, there is no written description regarding “moving a unit comprising the punch and the counter holder relative to a unit comprising the punch guiding plate and the blanking plate in a direction orthogonal to a plane of a blanking gap between the blanking plate and the counter holder; and whereby the workpiece is displaced with respect to the starting material a orthogonally to the plane of the blanking gap”, the entire specification submission on 10/03/2024 is silent regarding “moving a unit comprising the punch and the counter holder relative to a unit comprising the punch guiding plate and the blanking plate in a direction orthogonal to a plane of a blanking gap between the blanking plate and the counter holder; and whereby the workpiece is displaced with respect to the starting material a orthogonally to the plane of the blanking gap”;
Applicant has not pointed out where the claims are supported in Applicant's specification, nor does there appear to be a written description of “moving a unit comprising the punch and the counter holder relative to a unit comprising the punch guiding plate and the blanking plate in a direction orthogonal to a plane of a blanking gap between the blanking plate and the counter holder; and whereby the workpiece is displaced with respect to the starting material a orthogonally to the plane of the blanking gap”.
Therefore, the applicant does not have written support to show that the applicant had possession of the claimed invention at the time of filing based on the applicant’s original disclosure.
Therein, the amended claims 1 has introduce a new matter.
Claims 2-12 are rejected because they depend from claim 1.
Regarding claim 13, there is no written description regarding “whereby the workpiece is displaced with respect to the starting material orthogonally to a plane of a blanking gap formed between the blanking plate and the counter holder”, the entire specification submission on 10/03/2024 is silent regarding “whereby the workpiece is displaced with respect to the starting material orthogonally to a plane of a blanking gap formed between the blanking plate and the counter holder”;
Applicant has not pointed out where the claims are supported in Applicant's specification, nor does there appear to be a written description of “whereby the workpiece is displaced with respect to the starting material orthogonally to a plane of a blanking gap formed between the blanking plate and the counter holder”.
Therefore, the applicant does not have written support to show that the applicant had possession of the claimed invention at the time of filing based on the applicant’s original disclosure.
Therein, the amended claims 13 has introduce a new matter.
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 MOHAMMED S ALAWADI whose telephone number is (571)272-2224. The examiner can normally be reached 08:00 am- 05:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHRISTOPHER TEMPLETON can be reached at (571)270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMED S. ALAWADI/Primary Examiner, Art Unit 3725
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