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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8 in the reply filed on 7/7/26 is acknowledged. Claims 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim.
Claim Interpretation
The claims recite an apparatus with structural limitations and material worked upon by the apparatus. While there is nothing wrong with claiming the material worked upon, such limitations are only given weight to the extent that they limit the structure of the claimed apparatus. See MPEP 2115. See In re Rishoi (94 USPQ 71), In re Smith (3 USPQ 315), and In re Young (25 USPQ 69).
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
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(s) is/are: “pressing mechanism” in claim 1.
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 Objections
Claims 2 and 8 are objected to because of the following:
In claim 2, “which disposed” should be amendment to “which are disposed”. Appropriate correction is required.
In claim 8, “winded” should be replaced with “wound”.
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meier (EP1609597, of record, see attached machine translation for text citations).
As to claim 1, Meier discloses A lamination machine (fig 7), comprising: two length adjustment mechanisms, capable of horizontal movement (two vertical guides 14 capable of horizontal adjustment along arrow 14’ – figs 7-10 para 78-80), wherein each of the two length adjustment mechanisms includes a plurality of direction guiding rollers (51, 51 fig 7-10, para 74, 78-91); a lamination support platform (fig 7-10), disposed between the two length adjustment mechanisms, including: a plurality of pressing members 2, stacked in a single axial direction (fig 7, para 1, 48), wherein each of the direction guiding rollers is disposed between two of the pressing members (see fig 7 and assorted text, rollers 51 between 2, para 71, 78-86); a plurality of feed-in rollers (rollers in feed section 53/53’ – figs 7, 11a, para 90-102), disposed in a feed-in end 53/53’ of the pressing members; and a plurality of feed-out rollers (rollers associated with 54/54’ -para 81-90, 103, 105, figs 7, 11a), disposed in a feed-out end 54/54’ of the pressing members; and a pressing mechanism 13 (figs 7-11a, para 51-52, disposed between the two length adjustment mechanisms; wherein the feed-in rollers, the feed-out rollers and the direction guiding rollers drag a laminated film to pass through the pressing members in sequence (fig 7-13, para 43-55, 71-106), and wherein the pressing mechanism provides a pressing force to the pressing members to synchronously press (para 51-52) the laminated film located on the pressing members fig 7-13, para 43-55, 71-106).
As to claim 2, Meier discloses each of the two length adjustment mechanisms further includes a supporter 14 and two movement elements, which disposed on opposite ends of the supporter, and the direction guiding rollers are disposed on the supporter (see annotated figs, para 71-79).
As to claim 3, Meier discloses the lamination machine being capable of laminating the film when a length of the laminated film between two adjacent pressing members is equal to a length of each of the pressing members (figs 7-10). Note that the lamination film is material to be worked upon (MTBWU) as does not further limit the structure of the machine. See Claim Interpretation section above.
As to claim 5, Meier further discloses the machine comprising a storage shelf, disposed on one side of the lamination support platform, and the storage shelf includes a plurality of storage rollers and at least one of the storage rollers is movable (see shelf or shelves a 53/54 and/or 53/54, fig 7).
As to claim 6, Meier further discloses the machine wherein the pressing mechanism is a hydraulic pressure mechanism, which is configured to lift the pressing member (para 25, 46)
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meier.
As to claim 8, Meier discloses the machine comprising an unwinding mechanism (means for rotating 50’) and a winding mechanism (means for rotating 50’’), a laminated film being capable of being unwound from and wound on each mechanism, respectfully (fig 7-8, associated text). While Meier does not expressly disclose the
unwinding mechanism is disposed on one side of the lamination support platform and the winding mechanism is disposed on another side of the lamination support platform, Meier discloses that the locations of the rollers and apparatus parts can be adjusted as required by the design parameters (para 33, 35, 41). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the
unwinding mechanism to be disposed on one side of the lamination support platform and the winding mechanism to be disposed on another side of the lamination support platform as the location of the mechanisms is a design choice obvious to one of ordinary skill in the art. Additionally, rearrangement of part is obvious absent criticality demonstrated by the applicant.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meier as applied to claim 1 above, and further in view of Damm (US 2011/0023733).
Damm discloses a lamination machine comprising two positioning sensors 20, 21, which are disposed corresponding to the pressing members, and each of the two positioning sensors is configured to detect a positioning point of a film (para 18, 19, 46, figs). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Meier by using two positioning sensors which are disposed corresponding to the pressing members, and each of the two positioning sensors is configured to detect a positioning point of a film as such is known and allows location correction and simplifies the device as taught by Damm (para 18-19)
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meier as applied to claim 1 above, and further in view of Knudsen (US 4447201)
Knusanw discloses a lamination machine wherein a pressing mechanism includes a plurality of airbags 19, and each of the airbags is disposed on one of two adjacent pressing members and configured to press another one (figs 1-2, C3, L65 – C4, L60). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Meier such that a pressing mechanism includes a plurality of airbags each disposed on one of two adjacent pressing members and configured to press another one as taught by Knudsen above as such enables uniform pressure application at reduced costs (C1, L19-56).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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