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.
1. 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:
“Sensing unit” first introduced in claim 1 line 3 and elsewhere in the claims. “Sensing” is functional language, and “unit” is a generic placeholder, and the claims lack sufficient structure to perform said function. Structure is found in [0051] as various light or temperature sensors and will be interpreted as such and equivalents.
“Suction unit” first introduced in claim 1 line 5 and elsewhere in the claims. “Suction” is functional language, and “unit” is a generic placeholder, and claims 1-5 lack sufficient structure to perform said function. Structure is found in [0091] of Applicant’s Specification as a suction port in a surface and will be interpreted as such and equivalents. Claim 6 adds that the suction unit has a “tape gripper”, however as described in [0092] of Applicant’s Specification and as seen in Figure 8, this structure does not cause suction and is therefore a different structure from the 112(f) interpretation.
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 § 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.
2. Claims 1, 3 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boldrini et al. (US 5,328,114; hereafter Boldrini).
Regarding claim 1, Boldrini teaches of a tape removal apparatus (title) comprising a sensing unit (sensor- 15) that senses a tape (tape- 2) attached to a roll (reel-3) and a suction unit (roller- 4; noted as gripping by suction) that uses suction to remove the tape attached to the roll (col. 2 lines 59-68; see Figure 2).
The tape and electrode roll are materials/articles worked upon by an apparatus. MPEP 2115 teaches- “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). The combined references are capable of sensing tape that is attached to an electrode roll and removing the tape by suction, and thus the tape and electrode roll do not impart patentability to this claim.
Regarding claim 3, Boldrini further teaches of a rotary roll configured to rotate the roll (roller- 5; col. 2 lines 56-57). As noted in the rejection of claim 1, the sensing unit senses tape, and the suctioning unit provides suction. The tape being attached to the end of an electrode roll is a limitation directed to material/article worked upon by an apparatus and does not differentiate over the prior art of Boldrini, as explained in the rejection of claim 1. When the sensing unit and suction unit are activated are limitations that relate to a Manner of Operating a Device. MPEP 2114.II teaches- “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”. These claimed manners of operation do not add structural limitations to the claimed apparatus and therefore does not differentiate over the prior art of Boldrini.
Regarding claim 4, the tape is material/article worked upon, and therefore related limitations do not differentiate from the prior art of Boldrini as explained in the rejection of claim 1. As noted in the rejection of claim 1 the suction unit already separates tape from a roll, and would be capable of separating a non-adhesive portion of tape from an outer surface of an electrode roll.
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.
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.
3. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
4. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Boldrini in view of Sato et al. (US 2001/0035248; hereafter Sato).
Regarding claim 2, while Boldrini’s sensor is noted as an optical sensor (col. 2 lines 47-50), it is not clear if it senses a color. Sato teaches of a sensing unit that senses color (color sensor- 45; also noted as a tape detection sensor) configured to sense tape (tape- 8) attached to a roll (roll fiberboard- 4; [0096]). The advantage of Sato’s sensing unit is that it is a color sensor, and in combination with colored tape allows for easy tape detection ([0097]-[0098]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to use the sensing unit of Sato in the apparatus of Boldrini for the advantage of easy tape detection.
5. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Boldrini.
Regarding claim 5, in applying Boldrini as in claim 1, an additional tape and corresponding suction unit would be a duplicate apparatus and would fall under “duplication of parts”. MPEP 2144.04.VI states- “mere duplication of parts has no patentable significance unless a new and unexpected result is produced”. As a result, claim 5 does not further differentiate itself from the prior art of Boldrini. It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to have an additional tape and corresponding suction unit for the advantage of being able to remove tape from multiple rolls at the same time.
6. Claims 6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Boldrini in view of Lee (KR 20170139831; pdf translation included with Office Action).
Regarding claim 6, Boldrini teaches of a tape removal apparatus (title) comprising a sensing unit (sensor- 15) that senses a tape (tape- 2) attached to a roll (reel-3) and a suction unit (roller- 4; noted as gripping by suction) that uses suction to remove the tape attached to the roll (col. 2 lines 59-68; see Figure 2).
Boldrini does not teach that the suction unit comprises a tape gripper. Lee teaches of a suction unit (arm- 10) capable of both sucking a tape (adhesive sheet- 50) and gripping a tape with a tape gripper (grip portion- 350; pg. 5 lines 13-29; both suction and gripping are show in the peeling process of Figures 2A-E). Lee teaches that the combination of suction and physical gripping is more stable in adsorbing than suction alone (pg. 9 lines 8-10; grip portion is part of the grip unit as per pg. 4 lines 15-16). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to use the suction unit of Lee in the apparatus of Boldrini for the advantage of more stable adsorption.
The tape and electrode roll are materials/articles worked upon by an apparatus and do not impart patentability to this claim as explained in the rejection of claim 1.
Regarding claim 8, Boldrini further teaches of a rotary roll configured to rotate the roll (roller- 5; col. 2 lines 56-57). As noted in the rejection of claim 1, the sensing unit senses tape, and the suctioning unit provides suction. The tape being attached to the end of an electrode roll is a limitation directed to material/article worked upon by an apparatus and does not differentiate over the prior art of Boldrini, as explained in the rejection of claim 1. When the sensing unit and suction unit are activated are limitations that relate to a Manner of Operating a Device, and does not differentiate over the prior art of Boldrini as explained in the rejection of claim 3.
Regarding claim 9, the tape is material/article worked upon, and therefore related limitations do not differentiate from the prior art of Boldrini as explained in the rejection of claim 1. As noted in the rejection of claim 6 the suction unit already separates tape from a roll, and would be capable of separating a non-adhesive portion of tape from an outer surface of an electrode roll.
Regarding claim 10, in applying Boldrini as in claim 6, an additional tape and corresponding suction unit would be a duplicate apparatus and would fall under “duplication of parts”. MPEP 2144.04.VI states- “mere duplication of parts has no patentable significance unless a new and unexpected result is produced”. As a result, claim 5 does not further differentiate itself from the prior art of Boldrini. It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to have an additional tape and corresponding suction unit for the advantage of being able to remove tape from multiple rolls at the same time.
7. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Boldrini and Lee as applied to claim 6 above, and in further view of Sato.
Regarding claim 7, while Boldrini’s sensor is noted as an optical sensor (col. 2 lines 47-50), it is not clear if it senses a color. Sato teaches of a sensing unit that senses color (color sensor- 45; also noted as a tape detection sensor) configured to sense tape (tape- 8) attached to a roll (roll fiberboard- 4; [0096]). The advantage of Sato’s sensing unit is that it is a color sensor, and in combination with colored tape allows for easy tape detection ([0097]-[0098]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to use the sensing unit of Sato in the apparatus of Boldrini for the advantage of easy tape detection.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
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/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745
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