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 .
Priority
Applicant’s claim for the benefit of a prior-filed U.S. Provisional Application No. 63/170,597 (filed on 04/05/2024) and 63/170,598 (filed on 04/05/2024), under 35 U.S.C. 119(e) is acknowledged.
This application discloses and claims only subject matter disclosed in prior Application No. 17713,235 (filed 04/05/2022), and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application constitutes a continuation or divisional.
Information Disclosure Statement
The information disclosure statement filed on 02/08/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
In this case, the non-patent literature publications listed in page 7 of the IDS filed on 02/08/2025, were not provided by the applicant. Examiner request that the applicant submit a copy of the crossed-out citations indicated in the attached annotated IDS.
Drawings
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 tab of the cover flap (as recited within claim 7), the mechanism for adjusting the rotational speed of the empty web spool (as recited within claim 9), the anti-static coating on the cover flap (as recited within claim 10), the color indicator of the adhesive layer (as recited within claim 14), the mesh material of the cover flap (as recited within claim 17), all must be shown or the features canceled from the claims. No new matter should be entered.
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
Claims 1 and 5 are objected to because of the following informalities that requires appropriate corrections:
In claim 1, line 17-18, the limitation “the rotation” should read -- a rotation --.
In claim 5, line 2, the limitation “into ribbons” should read -- into the ribbons --.
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.
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 is “a mechanism to adjust its rotational speed” in claim 9.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is 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 limitation 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 to avoid it 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 recite sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7-8, 10, 14-17, and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 7 limitation “the cover flap includes a tab for manual opening to facilitate initial setup” (in lines 1-2) lacks writing description support; that is because, both the specification and drawings for the claimed invention fails to disclose/illustrate, the cover flap being provided with a tab, or the specific features/structure that constitute such a tab.
Claim 8 limitation “the adhesive layer is resistant to airborne contaminants” (in lines 1-2) lacks writing description support; that is because, the specification for the claimed invention fails to discuss, the adhesive layer applied to the carrier paper having any airborne contaminants resistant characteristics. In fact, based on examiners understanding of the disclosure in the specification (i.e. paragraph 0063), the transfer tape construct employs a cover flap to protect the adhesive layer on the carrier paper from airborne contaminants.
Claim 10 limitation “the cover flap is treated with an anti-static coating to reduce an attraction of dust and debris” (in lines 1-2) lacks writing description support; that is because, the specification for the claimed invention fails to disclose, the cover flap of the transfer tape construct being provided with any anti-started coating. Although, paragraph 0063 of the specification does discuss the cover flap protecting the adhesive layer on the carrier paper form airborne dust/contaminants, floating paper fibers, and other debris, the specification for the claimed invention makes no mention of said cover flap being treated specifically with an anti-static coating.
Claim 14 limitation “the adhesive layer includes a color indicator” (in line 1) lacks writing description support; that is because, the specification for the claimed invention fails to discuss, a color indicator being provided to the adhesive layer applied on the carrier paper, or any details pertaining to said color indicator.
Claim 15 limitation “the empty web spool is made from a lightweight material” (in line 1) lacks writing description support; that is because, the specification for the claimed invention fails to disclose the precise material forming the empty web spool, or the empty web spool being made from a lightweight material that is specially defined to reduce energy consumption during rotation.
Claim 16 limitation “the transfer tape construct is pre-cut to a specific length to match dimensions of the empty web spool” (in lines 1-2) lacks writing description support. The specification for the claimed invention fails to disclose, the transfer tape construct being pre-cut to a specific length in any way, or the length of pre-cut transfer tape construct sections matching the dimension/length of the empty web spool. In fact, based on the discussion in the specification, the transfer tape construct appears to be cut after it is applied to onto the empty web spool.
Claim 17 limitation “the cover flap is reinforced with a mesh material” (in line 1) lacks writing description support; that is because, both the specification and drawings for the claimed invention fails to disclose/illustrate, the cover flap being provided with a mesh material to increase its durability. In fact, the specification does not appear to discuss the type of material used to form or included in the cover flap of the transfer tape construct.
Claim 19 limitation “the zone coating is designed to degrade over time to facilitate recycling of the transfer tape construct” (in lines 1-2) lacks writing description support. The specification for the claimed invention fails to disclose, the zone coating applied onto the carrier paper specifically being configured to degrade over time.
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 1-20 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 1 recites the limitation “the zone-coated areas” in lines 15-16. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the zone-coated areas are referring to the zone coating applied onto the first face of the carrier paper, the zone coating applied onto the second face of the carrier paper, or if it is referring to the areas of both the first and second faces that are provided with the zone coating. Clarification by the applicant is required.
Claims 2-20 depends from parent claim 1. Subsequently, claims 2-20 are also reject as being indefinite for the reasons set forth above.
Claim 7 limitation “a tab for manual opening to facilitate initial setup” (in lines 1-2) renders the claim vague and indefinite. It is unclear what process constitute the “initial step”, and/or how said “initial step” is being performed. Examiner notes that the patent claim 1 does not allude nor is it directed to a method that involves a performing of any initial steps. Clarification by the applicant is required.
Claim 12 limitation “the zone coating is applied using a precision coating technique to ensure uniformity” (in lines 1-2) renders the claim vague and indefinite. It is unclear what specific process/method/steps constitute the precision coating technique. In other words, is the precision coating technique recited in claim 12 referring to the treating of the carrier paper with a silicone release material (as described within paragraph 0051)? Clarification by the applicant is required.
Claim 16 limitation “the transfer tape construct is pre-cut to a specific length to match dimensions of the empty web spool” (in lines 1-2) renders the claim vague and indefinite. It is unclear is the dimensions of the empty web spool is referring to the axial length of the empty web spool, overall diameter of said empty web spool, or another measurement of said empty web spool. In other words, does the length of the pre-cut transfer tape construct match the axial length of the empty web spool? Clarification by the applicant is required.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, for the following reasons:
In regards to claim 1, the prior art of record, either individually or in combination, fails to teach or render obvious, a paper web processing apparatus having the specific collective structure and operative functionality that is recited by independent claim 1. In particular, a paper web processing apparatus comprising: a transfer tape construct that includes a carrier paper with a first face and a second face, a first zone coating applied to the first face in a series of longitudinal stripes, an adhesive layer laminated to the first face, a cover flap positioned to protect the adhesive layer from environmental contaminants, and a second zone coating applied to the second face in a series of longitudinal stripes that are offset from the series of longitudinal stripes on the first face; and an empty web spool on which the transfer tape construct is mounted; wherein the first zone coating is a silicone-based release material, the cover flap is configured to open in response to centrifugal forces/aerodynamic forces generated by a rotation of empty web spool and the transfer tape construct, the adhesive layer is configured to separate into ribbons along the zone-coated areas when the carrier paper is pulled.
Examples in the prior art, such as Rodriguez (U.S. PGPUB 2005/0194489 A1), Rodriguez (U.S. PGPUB 2010/0104792 A1), Rodriguez et al. (U.S. PGPUB 2018/0339875 A1), and Jetter (EP0728823 A2), all independently propose a paper web processing apparatus comprising a transfer tape construct and an empty web spool on which the transfer tape construct is mounted; where said transfer tape construct includes a carrier paper with a first face and a second face, a first zone coating applied to the first face, an adhesive layer laminated to the first face, a cover flap positioned to protect the adhesive layer from environmental contaminants, and a second zone coating applied to the second face. However, none of the above-mentioned prior art explicitly teaches not suggest, the first zone coating applied to the first face of the carrier paper being arranged in a series of longitudinal stripes, the second zone coating applied to the second face of the carrier paper being arranged in a series of longitudinal stripes that are offset from the series of longitudinal stripes of the first zone coating on said first face, or the adhesive layer being configured to separate into ribbons along the zone-coated areas when the carrier paper is pulled. Furthermore, one of ordinary skill in the art prior to the effective filing date of the claimed invention, would not have the sufficient rational/motivation for applying the first zone coating and the second coating onto the corresponding first and second faces of the carrier paper forming a transfer tape construct, as a series of longitudinal stripes; that is because, such a modification would not result in any structural, functional, and/or performance improvements. In addition, all other applicable/analogues prior art identified by the examiner, also fails to disclose or render obvious, a transfer tape construct used in a paper web processing apparatus having the precise structural armament described by claim 1. Accordingly, claim 1 limitations appears to contain allowable subject matter over the cited prior art references; specially when said limitations are viewed in light of applicant’s specification.
Claims 2-20 would be allowable if rewritten to overcome the corresponding rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Claims 2-20 depends from claim 1. Thus, claims 2-20 also contain the above noted allowable subject matter in parent claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: See the attached PTO-892 for complete list of pertinent prior art references made of record by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAVEEN J DIAS whose telephone number is (571) 272-2195. The examiner can normally be reached on Monday-Thursday 8:00AM - 4:30PM, Alternate Fridays.
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, VICTORIA P AUGUSTINE can be reached at (313) 446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.J.D./Examiner, Art Unit 3654
/Victoria P Augustine/ Supervisory Patent Examiner, Art Unit 3654
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