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 .
DETAILED ACTION
Response to Amendment
The Amendment filed has 17 July 2026 been entered. Claims 1-13 and 15-21 are pending. Applicant's amendments have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Non-Final Office Action mailed 22 April 2026, except for any objection(s) and/or rejection(s) under 35 USC 112 repeated below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The amended Fig. 1 filed 17 July 2026 is objected to under 35 U.S.C. 132(a) because Fig. 1 as amended introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Fig. 1 is amended to indicate a sensor ‘50’ that comprises a rotary encoder ‘52’, where the sensor and rotary encoder are located at an end wall of the gantry ‘20’. This location of the sensor and rotary encoder was disclosed in the present application as originally filed, such that the addition to the sensor and the rotary encoder at a position on an end wall of the gantry introduces new matter. No sensor and rotary encoder were illustrated in the present application as originally filed. Moreover, the present application as originally filed does not disclose the sensor and rotary encoder as being positioned on an end wall of the gantry. Paragraph 35 of the US Publication of the present application states, “For this purpose, the sensor preferably comprises a measuring wheel that runs on the web.” However, the sensor comprising the rotary encoder as illustrated in Fig. 1 as amended is not positioned so that a measuring wheel is able to run on the web. It is unclear how the rotary encoder, being on an end wall of the gantry, would be able to measure a web speed. Thus, the addition to Fig. 1 of the sensor comprising the rotary encoder being on the end of wall of the gantry introduces new matter. Applicant is required to cancel the new matter in the reply to this Office Action. The examiner’s recommendation is to amend the claims to avoid reciting the sensor and the rotary encoder, since these features were not illustrated in the drawings as originally filed.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features must be shown or the feature(s) canceled from the claim(s):
“the at least one separating device comprising a circular cutter” as recited in claim 9 (the specification at the first paragraph of page 10 explicitly acknowledges that no circular cutter is illustrated in the present drawings);
“a web conveying device” as recited in claim 15 (no web conveying device is illustrated in the present drawings – the drawings only illustrate the device for removing a section from a web, and not any additional structure that conveys the web);
“moving the at least one separating device at a speed synchronized with a web speed” as recited in claim 16 (e.g., no web is illustrated, and no movement of the web is illustrated, such that moving the separating device at a speed synchronized with the web speed is not illustrated); and
“wherein the linear module has a toothed belt axis” as recited in claim 21 (no toothed belt axis is illustrated in the present drawings).
No new matter should be entered. The examiner suggests amending the claims to be directed only to features that are illustrated in the drawings, and the examiner cautions that adding new features to the figures has the potential to add new subject matter into the disclosure.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
The claims are objected to because of the following informalities:
Claim 1 at line 11 recites, “a section from a web”. This recitation should read – the section from the web – since the section and the web are introduced at line 1 of the claim.
Claim 11 at line 2 recites, “the separated sections”. This recitation should read – the section separated from the web – noting that only one separated section is previously introduced, and that the section is introduced as “a section”, not a separated section.
Appropriate correction is required.
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.
Claim limitations identified below are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 limitation(s) is/are:
“at least one separating device” as recited in claim 1 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “for separating the section out of the web”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “separating” preceding the generic placeholder describes the function, not the structure, of the device);
“a linear module” as recited in claim 1 (first, “module” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “configured to linearly guide the gantry”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function);
“a cutting device” as recited in claim 10 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “cutting” – i.e., in order for a device to be considered as a ‘cutting device’, the device must perform a cutting function; third, the generic placeholder is not modified by sufficient structure for performing the claimed function);
“a counter-pressure device” as recited in claim 10 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “counter-pressure” – i.e., in order for a device to be considered as a ‘counter-pressure device’, the device must perform a function of providing counter-pressure, otherwise every device could be considered as a ‘counter-pressure device’; third, the generic placeholder is not modified by sufficient structure for performing the claimed function);
“a collecting device” as recited in claim 11 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “collecting” – i.e., in order for a device to be considered as a ‘collecting device’, the device must perform a collecting function; third, to the extent that the collecting device is not required to include a drawer, the generic placeholder is not modified by sufficient structure for performing the claimed function);
“two or more separating devices” as recited in claim 12 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “for separating two or more respective sections”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “separating” preceding the generic placeholder describes the function, not the structure, of the devices); and
“a web conveying device” as recited in claim 15 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “web conveying” – i.e., in order for a device to be a ‘web conveying device’, the device must perform a web conveying function, the device must perform a collecting function; third, the generic placeholder is not modified by sufficient structure for performing the claimed function).
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.
The recitation of “a guiding device” in claim 1 is no longer interpreted under 35 USC 112(f) in view of claim 1 being amended to recite sufficient structure (in particular, the guiding device comprising a gantry) for performing the recited function.
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.
Claim(s) 12-13 and 20-21 is/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.
Claim 12 recites, “wherein the device comprises two or more separating devices”. This recitation is indefinite because the relationship between the separating device already introduced claim 1 and the two or more separating devices of claim 12 is unclear. Is claim 12 requiring two or more additional separating devices, or is the separating device of claim 1 permitted to be one of the several separating devices of claim 12? The distinction is important to determine the minimum number of separating devices required. In one interpretation, claim 12 can be satisfied by two total separating devices (if the separating device required by claim 1 is permitted to be a member of the two or more separating devices). In another interpretation, claim 12 requires at least three separating devices (if claim 12 requires two additional separating devices). Either interpretation appears consistent with the present disclosure. The examiner suggests amending claim 12 to recite, “wherein the at least one separating device comprises two separating devices”, or “wherein the device comprises two or more additional separating devices”, depending on Applicant intended interpretation.
Claim 13 recites, “a linear module”. Claim 13 is indefinite because it is unclear whether double inclusion of a linear module is required, noting that claim 1 already introduces a linear module. If a second linear module is not required, it is unclear why claim 13 fails to refer to “the” or “said” linear module. If a second linear module is required, it is unclear why the Applicant does not use a unique name (such as – a second linear module --) to refer to the additionally required linear module of claim 13. Note that the present specification discloses more than one linear module, so the present specification cannot be relied on to resolve this issue.
Claim 21 recites, “a toothed belt axis”. This recitation is indefinite because it unclear what is structurally required for a linear module to have a toothed belt axis. For example, it is unclear whether the linear module is required to have a structure that is able to guide a toothed belt (in which case the linear module may define an axis along which a toothed belt runs), or whether the linear module is actually required to have a toothed belt. The present application does not disclose any structure of “a toothed belt axis” in the specification, and instead only refers to the structure by the name “toothed belt axis” without defining the structure of the toothed belt axis. Indeed, the present drawings fail to illustrate any “toothed belt axis”. The examiner conducted a search for -- AND ((tooth$3belt OR (tooth$4 near2 belt)) near2 axis) – across a variety of relevant classifications1 and did not find any use of the term “toothed belt axis”. Thus, the Applicant appears to be acting as his own lexicographer without defining the term “toothed belt axis”. It is unclear structurally what is required of a “toothed belt axis”. Is a guiding structure for a toothed belt a “toothed belt axis”? Is a toothed belt the same as “a toothed belt axis”? Is some other structure not contemplated by the examiner required by “a toothed belt axis”? Since the meaning of the term “a toothed belt axis” is unclear, claim 21 is indefinite.
Claim Rejections - 35 USC § 102
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, 8, 10, 12-13, 16-18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 4,785,698 Stork.
Regarding claim 1, Stork discloses a device 1 for removing a section from a web 20 (see Fig. 1, where the device 1 removes a section from the web 20 between edges 29 and 30; note also that the body of claim 1 fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, such that not structurally limiting -- see Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)) comprising:
at least one separating device (see Figs. 2 and 4 showing two separating devices, each of which includes one of the knives 18; a cutting device is a corresponding structure of the separating device as disclosed in the present specification; alternatively, the separating devices of Stork perform the function of separating a section out of a workpiece as specified in the claim, are not excluded by any definition for an equivalent provided in the present specification, and a person of ordinary skill in the art would have recognized the interchangeability of the separating devices of Stork for this disclosed in the present specification, at least because the present specification discloses various interchangeable separating devices including a circular cutter or a punch) for separating the section out of the web 20 (see Fig. 1 showing the separated section of the web 20 being between edges 29 and 30; see also col. 4, lines 28-38); and
a guiding device (see Fig. 1, where the guiding device includes elements 2, 3, and 9), wherein the guiding device movably guides the at least one separating device in a direction of movement A of the web 20 (see Fig. 1, where the guiding device carries, and thus movably guides, the separating devices in the direction C, which is in the direction of movement A of the web 20; see also col. 2, line 67 to col. 3, line 6; see also col. 5, lines 23-33),
wherein the guiding device comprises a gantry 2 (see Fig. 1; note that the broadest reasonable interpretation of a ‘gantry’ includes a frame structure raised on side supports so as to span over or around something per merriam-webster.com, and elements 2, 3, and 9 satisfy this definition because element 2 is a frame structure that supports the separating devices and is raised on side supports 3 so as to span over a path of the web 20) connected to the at least one separating device (see Figs. 1 and 3) such that the gantry 2 and the at least one separating device move together (see Fig. 1, where the gantry and the separating devices move together in the direction C; see also col. 2, line 67 to col. 3, line 6; see also col. 5, lines 23-33); and
a linear module 8 configured to linearly guide the gantry 2 together with the at least one separating device relative to the web 20 (see Fig. 1; see also col. 2, line 67 to col. 3, line 6; see also col. 5, lines 23-33; note that a rail is a corresponding structure of the linear module disclosed in the present specification, and the linear module 8 of Stork is a rail),
wherein the device 1 for removing a section from a web 20 further comprises a web threading 31 configured to arrange the web 20 relative to the at least one separating device (see Fig. 1 and col. 2, lines 3-6), and
wherein the web threading 31 is connected to the gantry 2 so that the gantry 2 and the web threading 31 move together (see Fig. 1, the gantry 2 is connected to the web threading 31 via elements 3 and 9, so all of elements 2, 3, 9, and 31 move in direction C together).
Regarding claim 2, Stork discloses that the guiding device is set up to accelerate the at least one separating device in the direction of movement A of the web 20 (see Fig. 1, where the guiding device accelerates the separating devices in the direction C, which corresponds to the direction of movement A of the web 20; see also col. 2, line 67 to col. 3, line 6; see also col. 5, lines 23-33; note that this recitation encompasses another structure driving movement of the guiding device, consistent with the present specification).
Regarding claim 3, Stork discloses that the guiding device is set up to move the at least one separating device at a speed synchronized with a web speed (see col. 5, lines 28-33).
Regarding claim 4, Stork discloses that the at least one separating device is set up to separate the section when a web speed is reached and/or during a movement of the at least one separating device at the web speed (see Fig. 1 and col. 5, lines 23-58; also, claim 4 is satisfies because the separating device is carried by the gantry 2, which in turn is carried by the web threading 31, such that the separating device is moved at a speed synchronized with the web speed per col. 5, lines 28-33 – thus, the separating device is ‘set up’ as required by the claim do to moving with the carriage at the web speed).
Regarding claim 8, Stork discloses that the at least one separating device is displaceable transversely to the web 20 (see Fig. 1 and col. 3, line 2-5; the separating devices are displaceable in direction D shown in Fig. 1).
Regarding claim 10, Storck discloses a cutting device 18 of the at least one separating device is configured to be movable perpendicular to the web 20 (see Figs. 2 and 5 and col. 4, line 57 to col. 5, line 2; moving the pins 19 of the knife holders 16 out of the holes 17 includes movement of the cutting device 18 perpendicular to the web 20, since the direction of the pins 19 is perpendicular to the web 20 as is evident from Figs. 1-5).
Regarding claim 12, Stork disclose that the device 1 comprises two or more separating devices (see Figs. 2 and 4; each separating device includes a cutting device 18) for separating two or more respective sections (see Fig. 1; one section of the web is downstream of edge 29, another section is between edges 29 and 30, and a third section is upstream of edge 30, such that the two separating devices are ‘for separating’ three sections of the web 20 from one another), which are arranged next to one another (this recitation is describing the separating devices being arranged next to one another, which they are as illustrated in Figs. 2 and 4). [For examination purposes, claim 12 is interpreted as the ‘two or more separating devices’ being permitted to include the at least one separating device already introduced in claim 1.]
Regarding claim 13, Stork discloses that the guiding device comprises a linear module 8 (see Fig. 1, noting that a rail is a corresponding structure of the linear module disclosed in the present specification, and the linear module 8 of Stork is a rail; the guiding device of Stork ‘comprises’ the linear module because the two structures are connected, which is the same extent as to which the inventive guiding device ‘comprises’ a linear module; e.g., the ‘guiding device’ of Stork can be considered as the entirety of the device 1 except for the separating device) for linear guidance of the at least one separating device relative to the web 20 (see Fig. 1; see also col. 2, line 67 to col. 3, line 6; see also col. 5, lines 23-33).
Regarding claim 16, Stork discloses a method for removing a section 22 from a web 20 with the device 1 according to claim 1 (see Fig. 1 and the discussion of claim 1 above), the method comprising the steps of: moving the at least one separating device at a speed synchronized with a web speed (see Fig. 1 and col. 5, lines 28-33); and separating the section 22 out of the web 20 (see Fig. 1).
Regarding claim 17, Stork discloses that the guiding device is set up to move the at least one separating device at an identical speed synchronized with a web speed (see Fig. 1 and col. 5, lines 28-33).
Regarding claim 18, Stork discloses that the at least one separating device is adjustable transversely to the web 20 (see Fig. 1 showing movement of the separating devices in the direction D, which is transverse to the web 20, where this movement is controlled by a drive cylinder of the gantry, such that actuation of the drive cylinder adjusts the separating devices; see also col. 5, lines 51-54 disclosing an adjustment of the separating devices that includes returning the separating devices to a pre-cutting position, noting that the broadest reasonable interpretation of ‘adjust’ includes to bring to a more satisfactory state, where the state of the separating devices in the margin 21 is considered by Stork as a more satisfactory state).
Regarding claim 20, Stork discloses that the two or more separating devices for separating several sections are arranged transversely to the web 20 (see Figs. 1, 2, and 4 and the Abstract, where each of the separating devices includes one of the knives 18; the separating devices are ‘for separating several sections’ because the separating devices can be actuated multiple times to produce multiples of section 22).
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.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 4,785,698 Stork in view of US Pub. No. 2012/0299991 A1 to Wakita.
While Stork discloses that the guiding device is moved in synchronization with a web speed (see col. 5, lines 28-33; the web speed matches the speed of the plates, since the web is joined to the plates), Stork fails to disclose any structure for determining the workpiece speed. As such, Stork fails to disclose a sensor for detecting the web speed as required by claim 5 and also fails to disclose that the sensor comprises a rotary encoder as required by claim 6.
Wakita, though, teaches a sensor (see the rotary encoder of paragraph 56) that detects a web speed (see paragraph 56; a rotation amount of the roller 22 corresponds to a web speed since roller 22 is engaged with the web S as can be seen in Fig. 2), where the sensor is a rotary encoder (see paragraph 56). The rotary encoder is advantageous in order to provide data for control of the transport of the web (see paragraph 56).
Therefore, since Stork desires to synchronize the speed of its guiding device with the speed of the work, but since Stork fails to explicitly disclose any structure for determining the speed of the work, it would have been obvious to one of ordinary skill in the art to provide the device of Stork with a rotary encoder that detects a web speed in view of the teachings of Wakita. This modification is advantageous to provide the device of Stork with data regarding the speed of the web so that the device of Stork is able to determine the speed at which the guiding device should be driven in order to be synchronized with the work.
This modification is further obvious under KSR Rationale A – combining prior art elements according to known methods to yield predictable results. Stork and Wakita together disclose each claimed element. One of ordinary skill in the art could have combined the claimed elements by providing Stork with a rotary encoder that detects a web speed as taught by Wakita by known methods (since Wakita provides evidence that one of ordinary skill in the art is able to measure a web speed with a rotary encoder and provide the web speed as control data), and each element would have performed the same function as it did separately (no operation of Stork is altered, other than Stork being modified to include a sensor for detecting a web speed, since Stork already assumes the web speed is known; the sensor of Wakita continues to perform the same function of measuring a web speed). One of ordinary skill in the art would have recognized that the results of this combination were predictable, especially in view of the fact that Stork already desires synchronizing the speed of the guiding device with the web speed, and since the sensor of Wakita merely provides data indicating a web speed usable for control purposes.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 4,785,698 Stork in view of US Pub. No. 2017/0028579 A1 by Drebes et al.
Regarding claim 7, Stork discloses that the device is set up is set up to synchronize a speed of the at least one separating device with a web speed (see col. 5, lines 28-33).
Stork fails to disclose any particular structure of the device that determines the speed of the guiding device. As such, Stork fails to disclose a controller, wherein the controller is set up to synchronize the speed as required by claim 7.
Drebes teaches a controller (see paragraph 35), wherein the controller is set up to synchronize a speed v4 of a separating device 2 (the separating device 2 moves at the speed v4 along with a guiding device 4) with the web speed v1 (see paragraphs 35-36).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the device of Stork with a controller that synchronizes the speed of the separating device with the web speed in view of the teachings of Drebes. This modification is advantageous to fill a gap in the disclosure of Stork, which fails to explicitly disclose what structure controls operation of the guiding device to be synchronized with the web speed. Drebes teaches a controller is a suitable structure for synchronizing a separating device speed with a web speed.
This modification is further obvious under KSR Rationale A – combining prior art elements according to known methods to yield predictable results. Stork and Drebes together disclose each claimed element. One of ordinary skill in the art could have combined the claimed elements by providing Stork with a controller that synchronizes the speed of the separating device with the speed of the web as taught by Drebes by known methods (since Drebes provides evidence that one of ordinary skill in the art is able to configure a controller to perform this synchronization), and each element would have performed the same function as it did separately (no operation of Stork is altered, other than Stork being modified to include a controller for performing the synchronization already desired by Stork; the controller of Drebes continues to synchronization of a guiding device with a web speed). One of ordinary skill in the art would have recognized that the results of this combination were predictable, especially in view of the fact that Stork already desires synchronizing the speed of the guiding device with the web speed, and since the controller of Drebes merely achieves this function.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 4,785,698 Stork in view of US Pub. No. 2017/0028579 A1 by Drebes et al., as further evidenced by US Pub. No. 2005/0056676 A1 to Nakayama.
Stork fails to disclose that the at least one separating device comprises a circular cutter as required by claim 9 (i.e., the cutter 18 of Stork is not circular as can be seen in Fig. 5).
Drebes, though, teaches a separating device 2 that comprises a circular cutter 6 (see Fig. 8 showing an option of the cutter 6 being circular; see also paragraph 46). Drebes teaches that providing the cutter as a circular cutter is advantageous in effecting an initial cut (see paragraph 41). Moreover, it is further known in the web-cutting arts that providing a cutter as a circular cutter is advantageous because the cutter can be rotated to present a new portion of a cutting edge when an initially used portion of the cutting edge becomes dull, which reducing operating expenses by eliminating the cost of purchasing a new cutting blade (see Nakayama at paragraph 32).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the cutter of Stork in the form of a circular cutter in view of the teachings of Drebes. This modification is advantageous to aid in effecting the initial cut, and alternatively because the modification allows for rotating the cutter once one portion of the cutter becomes dull, which saves money by reducing the frequency of replacing the cutter (i.e., rotating the cutter does not require purchasing a replacement cutter).
Claim(s) 11 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 4,785,698 Stork in view of US Pub. No. 2,126,478 to Landrok et al., as evidenced by US Pub. No. 2012/0210839 A1 to Koseki and US Pat. No. 8,253,064 B2 to Beck et al.
Stork is silent regarding what happens to the cut section 22. As such, Stork fails to disclose a collecting device for the separated sections as required by claim 11, wherein the collecting device is a drawer as required by claim 19.
Landrok, though, teaches a device for removing a section from a web 32 that includes a collecting device that is a drawer 86 (see page 3, left col., lines 59-65). Landrok teaches that providing the drawer is advantageous because cut sections fall into the drawer, where the cut sections are retained until they are removed from time to time as desired (see page 3, left col., lines 59-65). Moreover, providing a cutting device with a collecting device for retaining cut sections is widely known in the cutting arts, as evidenced by Landrok, Koseki (see waste receiving collectors 103 and 113 in Fig. 3 as described paragraph 55), and Beck (see waste receiving collector 50 at the end of conveyor 48 in Fig. 2 as described at col. 8, lines 3-12)
Therefore, it would have been obvious to one of ordinary skill in the art to provide the device of Stork with a collecting device that is a drawer as taught by Landrok. This modification is advantageous to allow the cut sections of Stork to fall into the drawer, where the cut sections can be retained until they are removed. Thus, this modification prevents cuts sections from scattering around working machinery and reduces the need for cleaning up scattered cut sections. Moreover, there is a reasonable expectation of success for this modification because various types of cutting device are provided with collecting devices, such that providing a cutting device with a collecting device is within the level of skill of one of ordinary skill in the art. A person of ordinary skill in the art is a person of ordinary creativity, not an automaton, such that one of ordinary skill in the art is able to fit the teachings of multiple patents together like a puzzle (see KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d at 1397 (2007)).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 4,785,698 Stork in view of US Pub. No. 2012/0210839 A1 to Koseki.
Regarding claim 15, Stork discloses a system (including the device 1) for processing a web 20 comprising:
a web 20 that is conveyed (see Fig. 1, where the web 20 is conveyed by some undisclosed structure in direction A);
the device 1 according to claim 1 (see the discussion above of Stork anticipating claim 1),
wherein the device 1 according to claim 1 is arranged to remove a section 22 from the web 20 (see Fig. 1 showing the device 1 removing the section 22 from the web 20).
Stork fails to explicitly disclose what structure conveys the web, and thus Stork fails to disclose a web conveying device as required by claim 15.
Koseki, though, teaches a web conveying device (see paragraph 52, noting that roller conveyors correspond to the structure of the web conveying device disclosed in the present application).
Therefore, since Stork discloses conveyed work (see conveying direction A in Fig. 1 of Stork) without explicitly disclosing any structure that actually performs the work conveying, it would have been obvious to one of ordinary skill in the art to provide Stork with the web conveying device of Koseki. Koseki teaches that various types of conveying devices are interchangeable, including roller conveyors, so the selection of roller conveyors as the web conveying device is obvious under KSR Rationale A – combining prior art elements according to known methods to yield predictable results. Stork and Koseki teach each claimed element. One of ordinary skill in the art could have combined the device of Stork with the conveying rollers as taught by Koseki, and each element would have performed the same function as it did separately (i.e., the device of Stork continues to cut a conveyed workpiece, and the roller conveyors of Koseki continue to convey a workpiece for cutting). The results of this combination would have been predictable, since Stork already requires that the work is conveyed and since the function of the roller conveyors of Koseki conveying work remains unchanged.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 4,785,698 Stork in view of US Pub. No. 2012/0210839 A1 to Koseki.
Stork fails to explicitly disclose how the motor drives the guiding device along the linear modules 8 (see Fig. 1 and col. 3, lines 36-40). That is, Stork fails to disclose any structure that converts the output of the motor into movement of the guiding device. As such, Stork fails to disclose that the linear module has a toothed belt axis as required by claim 21.
Koseki, though, teaches moving a guiding device 21 with linear modules 20 that each have a toothed belt axis (see Fig. 3 and paragraph 24; the ‘toothed belt axis’, as best understood, is an axis defined by the toothed belt of the toothed belt pulley mechanism). Koseki teaches that a variety of structures are suitable for moving a guiding device, including a ball screw mechanism, a rack and pinion mechanism, a toothed-belt pulley mechanism, and a linear mechanism (see paragraph 24).
Therefore, since Stork is silent regarding the particular structure that converts motion of the motor into driving of the guiding device, it would have been obvious to one of ordinary skill in the art to select any of the options taught by Koseki for this purpose, including a toothed-belt pulley mechanism. This modification is obvious under KSR Rationale A – combining prior art elements according to known methods to yield predictable results. Stork and Koseki, together, teach each claimed element. One of ordinary skill in the art could have combined the elements by using a toothed-belt pulley mechanism as taught by Koseki to transmit motion of the motor of Stork into movement of the guiding device of Stork and each element would have performed as it did separately. One of ordinary skill in the art would have recognized that the results of this combination were predictable because Koseki teaches various structures, any of which is suitable for driving a guiding device.
Response to Arguments
Applicant's arguments filed 17 July 2026 have been fully considered but they are not persuasive. Regarding the objections to the drawings regarding the features of claims 9 and 13 not being shown, the Applicant asserts that a cutting device “14” is sufficient to illustrate a circular cutter. This argument is not persuasive. 37 CFR 1.83(a) unambiguously states, “The drawing in a nonprovisional application must show every feature of the invention specified in the claims.” No circular cutter is shown in the present drawings. The cutting device “14” as illustrated could include any shape of cutter, such as a rectangular cutter. Since no cutter is illustrated, the circular cutter is not illustrated. Applicant’s argues that the drawings and specification are “sufficient to support the claimed specific embodiment of a circular cutting device 14 without the need to specifically illustrate the same” (quote from page 9 of the Remarks). However, this argument is contradicted by 37 CFR 1.83(a), which requires all claimed features to be illustrated. As such, Applicant’s arguments are not persuasive.
Regarding the drawing objection related to the ‘toothed belt axis’ (which was previously recited in claim 13 but is now recited in claim 21), the Applicant points to the illustration of a linear module 24. However, this argument is not persuasive because a linear module is not the same structure as a toothed belt axis. The Applicant is required by 37 CFR 1.83(a) to illustrate every claimed feature, and the present drawings do not meet this requirement. Indeed, in this case, the structure required by a toothed belt axis is unclear. It is unclear whether a linear module necessarily includes a toothed belt axis, or whether a toothed belt axis is some structure in addition, or specific to a particular type of, linear module. Had Applicant illustrated the ‘toothed belt axis’, the examiner could have relied upon the illustration to ascertain the scope of the term. In summary, since 37 CFR 1.83(a) requires the Applicant to illustrate every claimed feature, Applicant’s argument that one of ordinary skill in the art does not require specific illustration of a toothed belt axis is not persuasive.
Regarding interpretations under 35 USC 112(f) set forth herein, the Applicant under section III, Claim Interpretation of the Remarks fails to argue against any of the interpretations under 35 USC 112(f). Therefore, the Applicant appears to agree with the interpretations under 35 USC 112(f).
Regarding the rejection of claim 12 under 35 USC 112(b) resulting from uncertainty whether two additional separating devices are required, or whether two total separating devices (inclusive of the separating device of claim 1) are required, Applicant’s argument is not persuasive because it fails to address the issue at hand. Claim 12 remains unclear because the relationship between ‘at least one separating device’ of claim 1 and the ‘two or more separating devices’ of claim 12 is unclear. The examiner suggests amending claim 12 to clarify the relationship, either by stating that the at least one separating device comprises two or more separating devices, or by amending claim 12 to require two or more additional separating devices.
Regarding the rejection of claim 1 under 35 USC 102, Applicant’s arguments against the Drebes reference are moot. The present rejection no longer relies on Drebes for any feature specifically challenged.
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 EVAN H MACFARLANE whose telephone number is (303)297-4242. The examiner can normally be reached Monday-Friday, 7:30AM to 4:00PM MT.
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, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EVAN H MACFARLANE/Examiner, Art Unit 3724
1 B26D1/565,605.cpc. Y10T83/4734,4763.cpc. B26D1/56,60.cpc. B26F1/3826,382.cpc. B65G35/0086.cpc. B26D7/0006,18,2628.cpc.
Prosecution Insights