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 .
Specification
The abstract of the disclosure is objected to because of implied phraseology (i.e., “Provided is”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-3 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, the phrase “a gap provided along the circumferential direction between the center suction pads and the end suction pads” in lines 13-14 is unclear. The center suction pads and end suction pads are previously provided axially from each other so it is unclear why the gap is provided in the circumferential direction and not the axial direction. Moreover, the claim also requires “an adjustment device that adjusts a length of the gap in the axial direction,” which is again referring to the gap in the axial direction. Furthermore, Applicant’s specification and figures predominantly disclose that the gap is axially provided (Fig. 4: 59a, 59b) (Page 11 lines 16-22; Page 12 lines 5-11; Page 13 lines 3-9; Page 14 lines 5-14), not circumferentially. Additionally, all dependent claims also refer to the gap in the axial direction. Thereby, it is unclear how the gap is intended to be positioned in the circumferential direction and further clarification is requested. For the purposes of examination, the examiner assumes the gap is provided in the axial direction and not the circumferential direction.
Claims 2-3 are indefinite by dependence on claim 1.
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.
(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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Dupommier (US 4634489).
Regarding claim 1, Dupommier discloses a conveyance device (Figs. 1-3, 6: 11) for receiving a cylindrical tire forming member (Fig. 6: 60) formed on a first drum from the first drum (Figs. 1, 6: C) and conveying the tire forming member to a second drum (Fig. 1: D), comprising: an annular frame (Figs. 2, 6: 12) capable of surrounding outer peripheries of the first drum (Figs. 1, 6: C) and the second drum (Fig. 1: D); a sucker (Figs. 2, 6: 39) provided for the annular frame (Figs. 2, 6: 12); and a frame conveyer (Fig. 1: E) that conveys the annular frame between the first drum (Fig. 1: C) and the second drum (Fig. 1: D), wherein the sucker includes a plurality of center suction pads (Figs. 2, 6: 39; Fig. 3: 13) provided side by side in the circumferential direction to suck a center portion of the tire forming member in an axial direction, a plurality of end suction pads (Figs. 2, 6: 39; Fig. 3: 15) provided side by side in the circumferential direction to suck end portions of the tire forming member in the axial direction (Col. 2 lines 48-64; Col. 3 lines 65-68; Col. 4 lines 1-9, 18-22, 51-59), a gap provided along the axial direction between the center suction pads and the end suction pads, and an adjustment device (Figs. 2, 6: 21, 22, 23; Fig. 3: 23) that adjusts a length of the gap in the axial direction (Col. 2 lines 48-68; Col. 3 lines 1-9).
The examiner notes that in view of the interpretation of the gap provided along the axial direction between the center suction pads and the end suction pads, Dupommier discloses every limitation of the claim. However, even if the claim language were to require the gap provided along the circumferential direction between the center suction pads and the end suction pads, Dupommier discloses center suction pads and end suction pads, wherein there is circumferential spacing between different sets of center and end suction pads (Fig. 6).
Regarding claim 2, Dupommier further discloses the adjustment device (Figs. 2, 6: 21, 22, 23; Fig. 3: 23) moves the end suction pads (Figs. 2, 6: 39; Fig. 3: 15) in the axial direction to adjust the length of the gap in the axial direction (Col. 2 lines 48-64; Col. 3 lines 65-68; Col. 4 lines 1-9).
Regarding claim 3, Dupommier further discloses the end suction pads include a first end suction pad provided at one end portion of the tire forming member in the axial direction and a second end suction pad provided at the other end portion of the tire forming member in the axial direction (Figs. 2, 6: 39; Fig. 3: 15), and the adjustment device (Figs. 2, 6: 21, 22, 23; Fig. 3: 23) moves the first end suction pad and the second end suction pad in opposite directions in the axial direction simultaneously (i.e., in synchronization) with each other to adjust the length of the gap in the axial direction (Col. 2 lines 48-64; Col. 3 lines 30-59, 65-68; Col. 4 lines 1-9).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-7 of copending Application No. 18/943,021 or US 20250197135 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claim 1 of the instant Applicant is entirely disclosed in claim 5 (which includes the subject matter of independent claim 1) of the copending Applicant. While claim 1 of the instant Application recites “a gap provided along the circumferential direction between the center suction pads and the end suction pads” and claim 5 of the copending Application recites “a gap provided along the axial direction between the center suction pads and the end suction pads,” case law holds that shifting the position of a component would have been obvious absent a showing that the rearrangement modified the operation of the device. See MPEP 2144.04. Moreover, the subject matter of claim 2 of the instant application and claim 6 of the copending application are identical, and claim 3 of the instant application and claim 7 of the copending application are identical. The examiner notes that claim 1 is only provisionally rejected on the ground of nonstatutory double patenting because the gap is expressly recited in the claim language as being provided along the circumferential direction between the center suction pads and the end suction pads while the copending Application recites it as being provided along the axial direction. However, in view of the interpretation under 35 U.S.C. 112(b) above where the examiner believes Applicant intended for the gap to have been provided in the axial direction, the claims would be provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of the copending Application (i.e., statutory double patenting) if the language were to be amended in line with the examiner’s interpretation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
Felten (LU 86110, see machine translation) discloses a conveyance device (Figs. 1-4: 111) for receiving a cylindrical tire forming member (Figs. 3-4: 160) formed on a first drum (Figs. 3-4: 153) from the first drum and conveying the tire forming member to a second drum (Fig. 4: 154) ([0032]-[0035]), comprising: an annular frame (Figs. 1-3: 112) capable of surrounding outer peripheries of the first drum (Figs. 3-4: 153) and the second drum (Fig. 4: 154) ([0027]-[0029]); a sucker (Figs. 1-3: 21) provided for the annular frame (Figs. 1-3: 112); and a frame conveyer (Fig. 4: 118, 155) that conveys the annular frame between the first drum (Fig. 4: 153) and the second drum (Fig. 4: 154) ([0029], [0032]), wherein the sucker includes a plurality of suction pads (Figs. 1, 3: 21) that sucks the tire forming member (Fig. 3: 160) and the plurality of suction pads (Figs. 1, 3: 21) is provided side by side in a circumferential direction of the annular frame (Figs. 1, 3: 112).
Naedler (DE 2420329, see machine translation) discloses a conveyance device for receiving a cylindrical tire forming member (Figs. 2, 4-5: 8) formed on a first drum (Figs. 1-2: 4) from the first drum and conveying the tire forming member to a second drum (Figs. 2, 5: 5) ([0012]), comprising: an annular frame (Figs. 1-6: 7) capable of surrounding outer peripheries of the first drum (Figs. 1-2: 4) and the second drum (Figs. 2, 5: 5) ([0012]); a sucker (Figs. 3, 6: 38) provided for the annular frame (Figs. 1-6: 7) ([0019], [0021]); and a frame conveyer (Fig. 1: 6) that conveys the annular frame (Figs. 1-6: 7) between the first drum (Figs. 1-2: 4) and the second drum (Figs. 2, 5: 5) ([0012]), wherein the sucker includes a plurality of suction pads (Figs. 3, 6: 38) ([0019], [0021]) that sucks the tire forming member (Figs. 2, 4-5: 8), and the plurality of suction pads (Fig. 6: 38) is provided side by side in a circumferential direction of the annular frame (Fig. 6: 7) ([0019]).
Porter (US 3212951) discloses a conveyance device for receiving a cylindrical tire forming member (Fig. 1: 37) formed on a first drum from the first drum (Fig. 1; 15) and conveying the tire forming member, comprising: an annular frame capable of surrounding outer peripheries of the first drum (Fig. 1); a sucker (Figs. 1-3: 19) provided for the annular frame; and a frame conveyer (Fig. 1: 12, 13, 14) that conveys the annular frame, wherein the sucker includes a plurality of suction pads that sucks the tire forming member, and the plurality of suction pads is provided side by side in a circumferential direction of the annular frame (Fig. 1).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEDEF PAQUETTE whose telephone number is (571) 272-5031. The examiner can normally be reached on Monday - Friday 8:00 AM EST - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KATELYN SMITH can be reached on (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The fax phone number for the examiner is (571) 273-5031.
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/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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