DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
The information disclosure statements (IDS) are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
If claim limitations in this application that use the word "means" (or "step"), they 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, if claim limitations in this application that do not use the word "means" (or "step"), they 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.
Claim Objections
Claim 16 is objected to because of the following informalities:
In line 3, “motor shaft” should be changed to -- the motor shaft -- for clarity.
Appropriate correction is required.
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 1-2 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 9-10, 13-14, and 16-22 of U.S. Patent No. 11,530,059.
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, see claims 1 and 20 of the patent, which discloses a tensioner, a strap connector, a transfer device, a motor, and a control device as claimed.
Regarding claim 2, see claim 18 of the patent, which claimed the motor shaft is operably connected to the strap connector and the transfer device at least in part via the planetary gearing; therefore, it implied that the planetary gearing is between the motor and the transfer device as claimed in claim 2 of the instant invention.
Regarding claim 17, see claim the combination of claims 14-13, 10-9, 5, and 3-1, of the patent, which discloses a rocker lever operably connected to the transfer device so operation of the rocker lever causes the transfer device to move the strap connector from the connecting position upward to the rest position.
Regarding claim 18, see claim 1 of the patent, which discloses a rotation of the motor shaft in the second direction opposite the first direction to cause the tensioner to rotate
Regarding claim 19, see the combination of claims 17, 16, and 1, and the combination of claims 22, 21, 20, which disclose a first freewheel and a second freewheel as claimed.
Regarding claim 20, see claim 19 of the patent, which discloses a base plate supporting the tensioner, the strap connector, the transfer device, and the motor.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No 9,284,080. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, a strapping device comprising (see the preample of the patent):
a tensioner operable to tension a strap (see lines 4-5 of the patent);
a strap connector operable to connect two areas of the strap to one another, the strap connector movable between a rest position and a connecting position (see the paragraph starting with "a friction welder");
a transfer device (see "transitioning device" in lines 12-13 of the patent) operably connected to the strap connector to move the strap connector from the rest position to the connecting position;
a motor (see line 10 of the patent) comprising a motor shaft, the motor operably connectable to the strap connector and the transfer device at least in part via the motor shaft; and
a control device configured to control the motor to rotate the motor shaft in a first direction to cause the transfer device to move the strap connector from the rest position to the connecting position and to cause the strap connector to operate (see lines 18-20 of the patent).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of U.S. Patent No 9,284,080. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, a strapping device comprising (see the preample of the patent):
a tensioner operable to tension a strap (see lines 4-5 of the patent);
a strap connector operable to connect two areas of the strap to one another, the strap connector movable between a rest position and a connecting position (see the paragraph starting with "a friction welder");
a transfer device (see "transitioning device" in line 10 of the patent) operably connected to the strap connector to move the strap connector from the rest position to the connecting position;
a motor (see "common drive" in lines 18-19 of the patent) comprising a motor shaft, the motor operably connectable to the strap connector and the transfer device at least in part via the motor shaft; and
a control device configured to control the motor to rotate the motor shaft in a first direction to cause the transfer device to move the strap connector from the rest position to the connecting position and to cause the strap connector to operate (see lines 25-28 of the patent).
Claim 1 is rejected on the ground of nonstatutory double patenting as being Page 8 unpatentable over claim 1 of U.S. Patent No 9,254,932. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, a strapping device comprising (see the preample of the patent):
a tensioner operable to tension a strap (see lines 4-5 of the patent);
a strap connector operable to connect two areas of the strap to one another, the strap connector movable between a rest position and a connecting position (see the paragraph starting with "a friction welder");
a transfer device (see the paragraph starting with "a planetary gear system" of the patent) operably connected to the strap connector to move the strap connector from the rest position to the connecting position;
a motor (see line 10 of the patent) comprising a motor shaft, the motor operably connectable to the strap connector and the transfer device at least in part via the motor shaft; and
a control device configured to control the motor to rotate the motor shaft in a first direction to cause the transfer device to move the strap connector from the rest position to the connecting position and to cause the strap connector to operate (see lines 29-31 of the patent).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No 9,254,932. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, a strapping device comprising (see the preample of the patent);
a tensioner operable to tension a strap (see lines 4-5 of the patent);
a strap connector operable to connect two areas of the strap to one another, the strap connector movable between a rest position and a connecting position (see the paragraph starting with "a friction welder");
a transfer device (see the paragraph starting with "a planetary gear system" of the patent) operably connected to the strap connector to move the strap connector from the rest position to the connecting position;
a motor (see line 10 of the patent) comprising a motor shaft, the motor operably connectable to the strap connector and the transfer device at least in part via the motor shaft; and
a control device configured to control the motor to rotate the motor shaft in a first direction to cause the transfer device to move the strap connector from the rest position to the connecting position and to cause the strap connector to operate (see lines 35-36 of the patent).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No 9,315,283. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, a strapping device comprising (see the preample of the patent):
a tensioner operable to tension a strap (see lines 2-3 of the patent);
a strap connector operable to connect two areas of the strap to one another, the strap connector movable between a rest position and a connecting position (see "a friction welder" in line 4);
a transfer device (see "a planetary gear system" in line 9 of the patent) operably connected to the strap connector to move the strap connector from the rest position to the connecting position;
a motor (see line 7 of the patent) comprising a motor shaft, the motor operably connectable to the strap connector and the transfer device at least in part via the motor shaft; and
a control device configured to control the motor to rotate the motor shaft in a first direction to cause the transfer device to move the strap connector from the rest position to the connecting position and to cause the strap connector to operate (see lines 9-11 of the patent).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No 9,315,283. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, a strapping device comprising (see the preample of the patent):
a tensioner operable to tension a strap (see lines 3-4 of the patent);
a strap connector operable to connect two areas of the strap to one another, the strap connector movable between a rest position and a connecting position (see "a connector" in line 5 of the patent);
a transfer device (see "a planetary gear system" in line 11 of the patent) operably connected to the strap connector to move the strap connector from the rest position to the connecting position;
a motor (see line 9 of the patent) comprising a motor shaft, the motor operably Page 11 connectable to the strap connector and the transfer device at least in part via the motor shaft; and
a control device configured to control the motor to rotate the motor shaft 1n a first direction to cause the transfer device to move the strap connector from the rest position to the connecting position and to cause the strap connector to operate (see lines 13-14) of the patent).
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1, 17, and 20 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Cyklop CB 130 tool (hereinafter "Cyklop") (see the reference in the IDS file on 9/15/2022 of US application # 16/677,266 and US patent number 11,530,059).
Regarding claim 1, Cyklop discloses a strapping device (see page 1) comprising:
a tensioner (see page 1) operable by a tensioning drive (see "tensioning gear" on page 1) to tension a strap;
a strap connector (see the annotated drawing #1 below) operable to connect two areas of the strap to one another, the strap connector movable from between a rest position (see the top drawing on page 1) downward to (see the downward arrow in the top drawing of the annotated drawing below) and a connecting position (see the bottom drawing in the annotated drawing below) and from the connecting position (see the bottom drawing in the annotated drawing below) upward to the rest position (see the top drawing on page 1);
a transfer device (see the annotated drawing #1 below) operably connected to the strap connector (see the annotated drawing #1 below) to move the strap connector from the rest position downward to the connecting position (see the description on page 3);
a motor (see "welding motor" in the description on page 3, para. 3) comprising a motor shaft (31), the motor operably connectable to the strap connector and the transfer device at least in part via the motor shaft (see page 3, para. 3-4); and
a control device configured to control the motor to rotate the motor shaft in a first direction (see "in the direction of arrow" on page 3. Para. 3) to cause the transfer device to move the strap connector from the rest position downward to the connecting position and to cause the strap connector to operate (see the drawings on page 3 and para. 4 of page 3).
Drawing #1:
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513
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6
8
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Regarding claim 17, the strapping machine of claim 1, Cyklop further discloses a rocker lever (see the drawing #1 above) operably connected to the transfer device so operation of the rocker lever causes the transfer device to move the strap connector from the connection position to the rest position (see page 4, the last two paragraph, which discloses the cross lever (i.e. rocker lever) is pressed to move the strap connector (14) upward; and thus the transfer device also moves upward to the rest position.
Regarding claim 20, the strapping device of claim 1, Cyklop further discloses a base plate (see a rectangular structure at the very bottom of the device in the top drawing of page 1) supporting the tensioner, the strap connector, the transfer device, and the motor.
Claims 1, 18, and 20 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Finzo (EP 1 413 519 A1).
Regarding claim 1, Finzo discloses a strapping device (1) comprising:
a tensioner (6) operable to tension a strap;
a strap connector (12) operable to connect two areas of the strap to one another, the strap connector movable from between a rest position (fig. 1) downward to a connecting position and from the connecting position upward to the rest position;
a transfer device (see a mechanism located between the strap connector (12) and a gear 28 in fig. 3) operably connected to the strap connector (fig. 3) to move the strap connector from the rest position downward to the connecting position operate (see page 4, fourth paragraph of the machine translation document);
a motor (15) comprising a motor shaft (fig. 3), the motor operably connectable to the strap connector (12) and the transfer device at least in part via the motor shaft (fig. 3): and
a control device configured to control the motor to rotate the motor shaft in a first direction to cause the transfer device to move the strap connector from the rest position downward to the connecting position and to cause the strap connector to operate (see page 4, fourth paragraph of the machine translation document).
Regarding claim 18, the strapping device of claim 1, wherein the motor (15) is operably connected to the tensioner (6) (fig. 2) such that rotation of the motor shaft in a second direction opposite the first direction causes the tensioner to rotate (see first paragraph and next to last paragraph of page 4 of the machine translation).
Regarding claim 20, the strapping device of claim 1, Finzo discloses a base plate (4) supporting the tensioner, the strap connector, the transfer device, and the motor (fig. 1).
Claim Rejections - 35 USC § 103
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 2 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Cyklob in view of Finzo et al. (hereinafter “Finzo”) (US 6,328,087).
Cyklob discloses the invention substantially as claimed as set forth above. Cyklob discloses tensioning gearing (see the upper figure of page 1), but does not expressly disclose the tensioning gearing is planetary gearing between the motor shaft and the transfer device.
Finzo discloses a strapping device having a tensioning gear includes planetary gearing mechanism (31) (fig. 5).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the strapping device of Cyklop to including planetary gearing for the tensioner, as taught by Finzo, to achieve a high efficiency (col. 5, lines 35-41) strapping device.
Modified Cyklob with Finzo would make the planetary gearing between the motor (which is at the back of the tensioner) and the transfer device (which is on the right side of the tensioner (see the top figure of page one), but it is in a plane in front of the planetary gearing if looking from the top of the device).
Allowable Subject Matter
Claims 3-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 3, the claim is allowed because the prior art of record, considered alone or combination, neither anticipated nor renders obvious “a cam wheel having a cam thereon, wherein the planetary gearing operably connects the motor shaft to the cam wheel such that rotation of the motor shaft in the first direction causes the planetary gearing to cause the cam wheel to rotate”, in combination with the rest of the claimed limitations.
Claims 4-16 would be allowable in virtue of their dependence upon claim 3.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 5,858,164 discloses a strapping device having a cam wheel (212), but this reference does not disclose a planetary gearing operably connects a motor shaft to the cam wheel such that rotation of the motor shaft in the first direction causes the planetary gearing to cause the cam wheel to rotate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIMMY T NGUYEN whose telephone number is (571)272-4520. The examiner can normally be reached Mon-Fri 8:30am-5pm.
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JIMMY T. NGUYEN
Primary Examiner
Art Unit 3725
/JIMMY T NGUYEN/ Primary Examiner, Art Unit 3725
