Detailed Office Action
The communication dated 2/10/2025 has been entered and fully considered. Claims 1-2 are pending.
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 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 2 is 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 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
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 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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over WARD (US-2023/0365371), hereinafter WARD, in view of DONIGER (US-2013/0186570), hereinafter DONIGER. Note that the italicized text below are the instant claim.
Regarding claim 1, WARD discloses An automated machine to apply tape to a surface {[abstract] note workpiece provides the surface, [0002] note the applicator head applies the tape (not by hand), thus automated, also see below for processor thus automation}, the machine comprising:
A housing supporting a tape dispenser including two sidewalls each having an inwardly facing protrusion {[0024], [FIG. 4] 8b and 8a are the two side walls that form the housing that support the tape dispenser TR, note that wall 8b at the location where 10 and TR is, has an inward protrusion (not shown) that holds or supports 10 and TR}.
However, WARD is silent on the other side wall 8a extending to the where 10 and TR is to further support these components with an identical protrusion that wall 8b has.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have duplicated the wall 8b of WARD and have replaced its wall 8a with the duplicated wall 8b to further support the tape reel TR and spacer 10 from the other side, since it has been held that a mere duplication of working parts of a device involves only routine skill in the art {see MPEP 2144.04 (IV)(C)}.
One would have been motivated to have duplicated the wall 8b and have used it instead of wall 8a, so that the tape reel TR and spacer 10 can remain in place and thus, would not have fallen from the other end or the left side {[FIG. 4]}.
Regarding the next limitation of claim 1, modified WARD discloses the sidewalls adjustable relative to each other on at least one guide bar to define a space of varying width {[FIG. 4] note guide bars 12, [0074]-[0075] note guide bars 12 have different sizes so that tape rolls of different widths can be used, thus side walls 8b are adjustable relative to each other, not that 8a is replaced with another 8b},
where a roll of floor tape can be accommodated in the space of varying width and where the roll of floor tape can rotate on the inwardly facing protrusions to dispense the floor tape around a wheel onto the surface {[FIG. 4]/[0074] note TR can be the floor tape that rotates, also note that floor tape is the article worked upon by a structure being claimed and does not impart patentability to the claim (see MPEP 2115), note 14 is wheel that dispenses the tape onto the surface};
and a processor programmed to control movement of the housing to dispense the floor tape along a path {[0049] note control of the movement of the head unit that contains the housing, [0079] note the processor and actuator that control the movement}.
Modified WARD, however, is silent on a take-up reel operatively connected to the wheel, where rotation of the wheel on the surface causes the take-up reel to rotate and collect a liner from the floor tape as it is dispensed.
In the same filed of endeavor that is related to floor product adhesive applicator, DONIGER discloses a take-up reel operatively connected to the wheel, where rotation of the wheel on the surface causes the take-up reel to rotate and collect a liner from the floor tape as it is dispensed {[0013], [0015]-[0016], [FIG. 2] note that take-up reel 18 is operatively connected to the wheel 22 via belt 38}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have included the take-up reel of DONIGER in the machine of modified WARD. As disclosed by DONIGER, the advantage of this take-up reel is to collect and retain waste liner from roll of an adhesive tape {[0013]}. The Examiner notes that WARD discloses that in certain applications, tapes with backing liner are used {[0077]}, therefore, the machine of modified WARD benefits from the addition of a take-up reel as taught by DONIGER.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over MELINO (US 8,196,634), hereinafter MELINO, in view of DONIGER, and BIERNATH (US- 2024/0034590), hereinafter BIERNATH. Note that the italicized text below are the instant claim.
Regarding claim 1, MELINO discloses An automated machine to apply tape to a surface {[abstract] note the device dispenses the tape (not human hand) thus automatic, also see below for processor thus automation modification}, the machine comprising:
A housing supporting a tape dispenser including two sidewalls each having an inwardly facing protrusion {[FIG. 5] 168 is one of side walls with the inward protrusion 186 and 196 is the opposing side wall with the inward protrusion 214},
the sidewalls adjustable relative to each other on at least one guide bar to define a space of varying width {[abstract] note the telescopic indicates adjustability, note adjusting to various width, [FIG. 7] note the guide bars 148/138 and 112/142 are adjustable and thus making the wall 168 and 196 adjustable or varying width, [FIGs. 9/10] note that as the result of adjustability of walls 168 and 196, guide bars 180 and 208 are respectively adjustable too},
where a roll of floor tape can be accommodated in the space of varying width and where the roll of floor tape can rotate on the inwardly facing protrusions to dispense the floor tape around a wheel onto the surface {[FIG. 6] note 100 is the roll of floor tape that is accommodated by the discussed protrusions 186/214, note pressing tube 226 is the wheel that applies the tape to surface}.
MELINO, however, is silent on a take-up reel operatively connected to the wheel, where rotation of the wheel on the surface causes the take-up reel to rotate and collect a liner from the floor tape as it is dispensed.
In the same filed of endeavor that is related to floor product adhesive applicator, DONIGER discloses a take-up reel operatively connected to the wheel, where rotation of the wheel on the surface causes the take-up reel to rotate and collect a liner from the floor tape as it is dispensed {[0013], [0015]-[0016], [FIG. 2] note that take-up reel 18 is operatively connected to the wheel 22 via belt 38}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have included the take-up reel of DONIGER in the machine of modified WARD. As disclosed by DONIGER, the advantage of this take-up reel is to collect and retain waste liner from roll of an adhesive tape {[0013]}. The Examiner notes that adhesive tapes with release liner are known for the purpose of protection of adhesive and, therefore, the machine of modified MELINO benefits from the addition of a take-up reel as taught by DONIGER when a release liner is used in the adhesive tape.
Combination of MELINO and DONIGER, however, is silent on a processor programmed to control movement of the housing to dispense the floor tape along a path.
In the same filed of endeavor that is related to tape applicator, BIERNATH discloses a processor programmed to control movement of the housing to dispense the floor tape along a path {[0013] note the processor and controller to implement a desired speed of manufacturing line with the apparatus that indicates controlling movement of the housing and applicator head}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have included the processor/controller of BIERNATH in the combination machine of MELINO and DONIGER. As discloses by BIERNATH nay desired speed can be imparted to the machine in a convenient manner using this control mechanism {[0013]}.
Alternatively, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have automated the movement of the housing of the combination machine of MELINO and DONIGER using a controller and processor, since it has been held that broadly providing a mechanical or automatic means to replace manual activity which accomplishes the same results involves only routine skill in the art {see MPEP2144.04 (III)}.
One would have been motivated to have automatic the speed or movement of the housing to accurately achieve the desired speed for the application of the tape.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,623,840, hereinafter US840 in view of BIERNATH.
Regarding instant claim 1, claim 1 of US840 claims all the limitation of instant claim 1, however, is silent on a processor programmed to control movement of the housing to dispense the floor tape along a path.
In the same filed of endeavor that is related to tape applicator, BIERNATH discloses a processor programmed to control movement of the housing to dispense the floor tape along a path {[0013] note the processor and controller to implement a desired speed of manufacturing line with the apparatus that indicates controlling movement of the housing and applicator head}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have included the processor/controller of BIERNATH in US840. As discloses by BIERNATH nay desired speed can be imparted to the machine in a convenient manner using this control mechanism {[0013]}.
Alternatively, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have automated the movement of the housing of the combination machine of MELINO and DONIGER, since it has been held that broadly providing a mechanical or automatic means to replace manual activity which accomplishes the same results involves only routine skill in the art {see MPEP2144.04 (III)}.
One would have been motivated to have automatic the speed or movement of the housing to accurately achieve the desired speed for the application of the tape.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748
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