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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-13, drawn to a material joining device, classified in B29C 65/565.
II. Claims 14-20, drawn to a method of joining a first material sheet to a second material sheet, classified in B65H 19/18.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process as claimed can be practiced by another and materially different apparatus such as a material joining device that lacks a main body and a gate coupled to it and its plurality of rods are not moveably held with one of the main body and the gate.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Andrew O'Brien, Shook, Hardy & Bacon LLP on June 30, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claims 3 and 4 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.
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 1-13 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 1, line 9 merely recites “at least one actuator.” As a result, the recitation of “the actuators” in claim 1, line 13, claim 2, line 1, claim 6, line 1 and claim 7 line 2 are all indefinite because there is uncertainty as to whether the phrase “at least one” is considered a singular recitation and thus does not provide an antecedent basis for the plurality to be required.
Claims 6 and 7 recite the limitation " the actuators" and “the actuator” in line 1 and 3, respectively. This is indefinite because it is uncertain whether they refer to the “plurality of actuators” or “each actuator” of claim 5 or “the at least one actuator” or “the actuators” of claim 1.
For the purposes of compact prosecution, the examiner will consider that the phrase “at least one actuator” will refer to more than one actuator. As to claims 6 and 7, the examiner will consider that the limitations of “the actuators” and “the actuator” refer to “the actuators” of claim 1.
Claim 7 recites the limitation "the closed position" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the open position" in line 4. There is insufficient antecedent basis for this limitation in the claim.
For the purposes of compact prosecution, the examiner will consider “the open position” and “the closed position” of claim 7 to be “an open position” and “a closed position.”
Claim 7 recites the limitation "the retention bar" in the third line. There is insufficient antecedent basis for this limitation in the claim. For the purposes of compact prosecution, the examiner will consider “the retention bar” to be the retention bar of claim 3.
Claims 2-13 rejected under 35 § U.S.C. 112(b) through dependency on claim 1.
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.
Claim(s) 1-2, 5-6 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katayama (US 2010/0126654 A1) in view of Fisher (US 10,010,140 B2).
Regarding Claim 1, Katayama discloses a material-joining device for joining a first material to a second material (paragraphs [0002] [0017] [0018] where the materials for joining are Anisotropic Conductive Film (ACF)), comprising:
a main body (Figs. 1, 3 paragraphs [0100] [0103] pressure bonding head unit – 20); a gate coupled to the main body and moveable with respect to the main body between at least a first position farther from the main body and a second position closer to the main body than the first position, the gate being spaced from the main body in the second position (Figs. 1-3 paragraphs [0098] [0100] substrate holding stage – 5 for receiving and holding a panel substrate – 4 with substrate transfer device – 13 where there is a movement in the X direction then transferred after a θ-rotational movement in a Y direction so as to face an end portion placement stage – 12 where the panel substrate – 4 has a longer-edge side terminal portion which is a source-side terminal portion – 4a, while its shorter-edge side is described as a gate-side terminal portion – 4b where the gate is a head – 21 internally equipped for pressure bonding the pressure bonding surface – 21a facing the end-portion placement stage – 12 below where the flat surface – 41 where the ACF tape is placed is a part of the gate ); See Fig. 1 below for one embodiment:
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Moreover, in at least one embodiment, Katayama discloses as part of the joining device a splicing unit for joining together the ACF tapes (Figs. 1, 4 paragraph [0105] splicing unit – 40) and with a plurality of rods included in one of the main body and the gate (Fig. 6 paragraph [0108] where there is a plurality of projective portions e.g., four projective portions) at least one actuator coupled to the plurality of rods (Figs 8A, 8C , paragraph [0110] superposition region – R of the first ACT tape – 1 and the second ACF tape – 6 placed onto the stage – 41 is pressured by the nichrome wire heating tool – 43 with a locally deformed portion of the release tapes – 2, 7), the actuator configured to move the rods from a retracted position to an extended position (Fig. 4 paragraph [0106] the first and second ACF tapes – 1, 6 with the release tapes – 6, 7 are superimposed on each other and placed on the stage – 41 where it is heated while being pressured by the projective portions which includes the plurality of projected portions); and
the other of the main body and the gate not holding the plurality of rods comprising a plurality of chambers aligned with the rods (Fig.6 paragraph [0108] a stage - 61 may include recess portions – 61a matching the projective form of the projective tool – 63,
wherein at least portions of the first material and the second material fit within the space between the main body and the gate in the second position, and wherein when the at least one actuator moves the rods to the extended position, the first material and the second material are joined together (Figs. 6, 9 paragraph [0111] part of the superposition region – R of the first ACF tape – 1 and the second ACF tape – 6 is pressured by the projective tool – 63 resulting in a state that part of the release tape – 2 is inserted into the recess portion – 61a where it is possible to achieve a state that the each of the projective portions of the projective tool – 63 have reached deep inside the release tapes – 2, 7 a local fusion-bonded portion M is formed). See Fig. 6 and 9 below:
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However, Katayama does not disclose that the plurality of rods is moveably held within one of the main body and the gate and that the chambers are defining a rod opening and accommodating a portion of the rods when the actuators move the rods to the extended position;
Fisher, in the same field of endeavor, discloses a last for making footwear, which is a type of material joining device (abs, Col. 1 ll. 14-21) where two or more segments of material are joined together on the last assembly (Figs. 5-15, Col. 7 ll. 26-31 last assembly – 100). This is done through the use of a plurality of rods moveably held (Fig. 4 Col. 5 ll. 37 – 49; Col. 6 l. 63 – Col. 7 l. 3 each retractable pin comprises a pin-like projection configured to retract into and extend out of a cavity of last member – 102; plurality of retractable pins – 18 which can be biased in the extended position by springs – 440). Moreover, there are chambers defining a rod opening and accommodating a portion of the rods when the actuators move the rods to the extended position (Figs 6, 7 Col. 5 ll. 46-49; Col. 8 ll. 55-64 holes – 622 pin-like projection configured to retract into and extend out of a cavity; configured for engaging with retractable pins – 182, 184 where the body segments – 602 can comprise different materials such as textiles and leather) and where the body segment can wrap and be depressed into the last member (Fig. 9, Col. 9 ll. 17-29) see Fig. 9 below:
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It would have been obvious to one with ordinary skill in the art to have modified the disclosure of Katayama with the teachings of Fisher whereby a material joining device having a main body and a movable gate and a plurality of rods included in one of the main body and the gate with an actuator configured to move the rods from a retracted position to an extended position and where the other of the main body and the gate not holding the plurality of rods comprising a plurality of chambers aligned with the rods, as disclosed by Katayama, would include that the plurality of rods are moveably held within one of the main body and the gate, with the chamber defining a rod opening and accommodating a portion of the rods when the actuators move the rods to the extended position, as taught by Fisher.
The skilled artisan would be motivated to use the feature of Fisher with a moveable plurality of rods with associated chambers accommodating a portion of the rods because this assembly provides an ease of engaging two materials to be joined while attached to the material joining device (Col. 11 ll. 59-64).
Regarding Claim 2, the combination of Katayama and Fisher disclose all the limitations of claim 1 and Katayama further discloses that the actuators and the rods are held within the main body (paragraph [0017] where the projective portion is placed with the pressure-bonding head unit over the superposition region) and the gate comprises the plurality of chambers aligned with the rods (Fig. 6 paragraph [0108] stage – 61 with recess portions – 61a is part of gate – 41).
Regarding Claim 5, the combination of Katayama and Fisher disclose all the limitations of claim 1 and Katayama further discloses wherein the main body comprises a plurality of actuators, (Figs. 4 16 paragraphs [0106] [0135the first and second ACF tapes – 1, 6 with the release tapes – 6, 7 are superimposed on each other and placed on the stage – 41 where it is heated – where at least in one embodiment heating unit – 122 is enabled to pressure and heat the ACF tape providing a plurality of actuators by the projective portions which includes the plurality of projected portions). However, Katayama nor Fisher disclose that each actuator is coupled to a respective subset of the plurality of rods.
However, it would be obvious to have provided a plurality of actuators coupled to a respective subset of the plurality of rods because it would prima facie obvious to a use a known technique to improve similar device in the same way (MPEP § 2143 I (C)).
Additionally, Fisher teaches more than one set of retractable pins (Col. 7 ll. 11-19) which while individually biased would be actuated on a subset basis using, in at least one embodiment, vacuum means to hold materials to be joined together (Col. 10 ll. 4-23).
Regarding Claim 6, the combination of Katayama and Fisher disclose all the limitations of claim 5 and Fisher discloses that a subset of the actuators is operable in unison (Col. 11, ll. ll. 28-58 where there is simultaneous engagement of pins on either side of body segments).
Regarding Claim 10, the combination of Katayama and Fisher disclose all the limitations of claim 1 and Katayama further discloses a first sensor to detect the trailing end of the first material (Figs. 1, 3 paragraph [0101] terminal-end detection sensor – 33).
Regarding Claim 11, the combination of Katayama and Fisher disclose all the limitations of claim 10 and Katayama further discloses a second sensor to detect when the gate is in the second position (paragraph [0101] sensor may also be designed so as to detect a tape connecting portion where the tape preliminarily has a tape splicing portion which is a tape connecting portion).
Regarding Claim 12, the combination of Katayama and Fisher disclose all the limitations of claim 11 and Katayama further discloses comprising a first roller coupled to the main body adjacent the space between the main body and the gate (Fig. 1, paragraph [0101] a plurality of rollers – 32 for guiding the ACF fed from the reel – 31) , and a second roller coupled to the gate adjacent the space between the main body and the gate with the gate in the second position, the first roller being spaced apart from the second roller with the gate in the second position (Fig. 1 paragraph [0102] roller – 52 for guiding a destination of the release tape fed and discharged by the feed chuck – 51 where this is spaced from the first roller(s) in the second position – see Fig. 1 above).
Regarding Claim 13, the combination of Katayama and Fisher disclose all the limitations of claim 1 and Fisher further teaches that each of the rods includes a rounded outer end (See Fig. 4. Col. 6 ll. 35-44).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Katayama (US 2010/0126654 A1) and Fisher (US 10,010,140 B2) as applied to claim 2 above, and further in view of Mol (US 2006/0073751 A1).
Regarding Claim 8, the combination of Katayama and Fisher disclose all the limitations of claim 2 and while Fisher discloses a plurality of vacuum holes in fluid communication with a source of vacuum (Col. 4, ll. 35-64), there is no disclosure of an air port coupled to each chamber opposite the rod opening to allow air flow into each chamber.
Mol discloses in an analogous art, a method of making belts used on conveyors, treadmills, etc., which in interwoven and comprises a fingerboard with at least one row for storing a plurality of threaded tubulars with a plurality of latches which is movable between a locked and unlocked position. There is an air port coupled to each chamber to allow air flow into each chamber (paragraphs [0008 – [0009]] There is a piston with an elongated rod slidingly engaged with a casing where this casing has a plurality of exhaust ports to the plurality of latches whereby in each successive one of the plurality of extended positions a successive one of the plurality of exhaust ports is uncovered such that air flows therethrough to force a corresponding latch to move the locked position to the unlocked position)), each air port positioned opposite the rod opening (paragraph [0008] in the fully retracted position each of the exhaust ports are covered by the elongated rod such that the air from the air source cannot flow therethrough).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the combination of Katayama and Fisher with the teachings of Mol whereby the material joining device with a plurality of rods comprising a plurality of chambers aligned with the rods, as disclosed by the combination of Katayama/Fisher also includes at least one air port coupled to each chamber to allow air flow into each chamber where positioned opposite the rod opening, as taught by Mol.
The skilled artisan would be motivated to add this feature because this air port is in direct fluid connection with each of the plurality of rods so that the air enables the rod to be moveable between a fully extended position and a fully retracted position where in the retracted position the air from the air source is covered by the elongated rod such that the air cannot flow through but when in extended position the air flows through past the rods to move the latch from an locked position to an unlocked one, thus acting as an actuator (paragraphs [0008] [0009]).
Regarding Claim 9, the combination of Katayama, Fisher and Mol disclose all the limitations of claim 8, and Mol further discloses that a compressed air source coupled to the at least one air port (paragraph [0008] where the air source produces exhaust ports which implies some level of compression) , and wherein the at least one air port allows a free flow of air out of the port in one condition (paragraph [0009] where air flows to move an elongated rod), and the compressed air source supplies a compressed air out of the port in a second condition (paragraph [0009] where the elongated rod is covered by the elongated rod in a second condition)..
Allowable Subject Matter
Claims 3 and 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not disclose, teach or suggest a retention bar pivotably coupled to a portion of the gate which is movable with respect to a main body whereby the retention bar is pivotable between an open position allowing a material sheet to extend under the retention bar and a closed position with the retention bar holding a material sheet in place. See Fig. 4B below:
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Claim 4 allowable subject matter as dependent on claim 3.
Claim 7 further recites a release pin extending above the main body and positioned to engage the retention bar as the actuator moves the respective rods to the extended position.
Prior art references searched and considered included Cash, Jr. (US 3,336,886), Taylor (US 3,771,208) and Abate (EP 2 683 636 B1) with machine translation but while these disclosed retention bars to hold material sheets prior to joining, none of these references disclosed, taught or suggested a retention bar for material which is pivotably coupled to a portion of a gate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE K. SWIER/ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748
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