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 .
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 and 3-5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-5 of copending Application No. 19/055,907. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the invention of the presented application are presented and disclosed within copending Application No. 19/055,907. The copending application provides a narrowed connection process and assembly as it further requires the addition of a cutting-grasping unit in addition to the entire process and assembly of the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boggs et al. (US 4,239,187 A).
Regarding claim 1, Boggs et al. discloses a thin metal strip winding method comprising: a thin metal strip manufacturing step of manufacturing a thin metal strip (Fig. 4; Col. 3, Ln. 37-49, filament 4 corresponding to a thin metal strip) by flying the thin metal strip from a flight tube (Fig. 4; Col. 4, Ln. 24-31, deflector plate 18 corresponding to a flight tube); a cutting and grasping step of performing cutting and grasping any portion of the thin metal strip flying from the flight tube (Fig. 4; Col. 4, Ln. 11-23); and a thin metal strip winding step of winding the thin metal strip by winding up the ribbon around the winding roll by causing the winding roll rotation unit to rotate, wherein the thin metal strip manufacturing step and the thin metal strip winding step of winding the thin metal strip are performed simultaneously (Fig. 1-2; Col. 3, Ln. 37-68, wherein the filament 4 is wound as it is produced).
Regarding claim 2, Boggs et al. discloses wherein the winding roll set on the winding roll rotation unit is a winding roll after being used with a small amount of a thin metal strip left thereon (Fig. 1-2; Col. 3, Ln. 37-49; Col. 4, Ln. 24-66, winding wheel 5, 28 corresponding to a winding roll rotation unit with a winding roll).
Regarding claim 3, Boggs et al. discloses a thin metal strip winding system comprising: a flight tube which causes a thin metal strip to fly (Fig. 4; Col. 3, Ln. 37-49; Col. 4, Ln. 24-31, filament 4 deflecting through deflector plate 18); a winding roll rotation unit on which a winding roll with a thin metal strip remaining thereon is set (Fig. 1-2; Col. 3, Ln. 37-49; Col. 4, Ln. 24-66, winding wheel 5, 28 corresponding to a winding roll rotation unit with a winding roll); a connecting unit which connects the any portion of the thin metal strip flying from the flight tube and a leader as a ribbon, the leader being a to-be-connected portion of the thin metal strip remaining on the winding roll (Fig. 1-2; Col. 3, Ln. 37-68, gripping element 7 holding material end for connection to the wheel 5); and a winding unit which winds up the ribbon around the winding roll by causing the winding roll rotation unit to rotate, wherein manufacturing of a thin metal strip by flying the thin metal strip from the flight tube and winding of the thin metal strip by winding up the ribbon around the winding roll at the winding unit are performed simultaneously (Col. 4, Ln. 11-66).
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.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Boggs et al. (US 4,239,187 A) as applied to claims 1-3 above, and further in view of Mishra et al. (US 7,094,048 B2).
Regarding claims 4 and 5, Boggs et al. discloses the claimed invention except for the leader ribbon being connected to a remaining ribbon for winding. However, Mishra et al. teaches wherein the connecting unit is configured to connect the leader and the ribbon in a state where the leader and the ribbon are disposed vertically or horizontally (Col. 10, Ln. 18-54, wherein the cutting and adhering operation between two ribbon ends are described; Col. 14, Ln. 25-40, wherein the holding of the ribbons are described). While a specific disposition of the leader and the ribbon are not necessarily disclosed, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to dispose the ribbon either vertically or horizontally, since it has been held that rearranging parts of an invention involves only routine skill in the art. See In re Japikse, 86 USPQ 70, and MPEP 2144.04 (VI) C. Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filling date to have incorporated the operation and mechanisms of joining an end of the lead ribbon and the end of the remaining ribbon in order to provide a means for continuous winding operation. One skilled in the art merely requires the addition of the adhering assembly between the forming of the ribbon and the winding.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references refer to a winding assembly of a material strip which provides a means for cutting and joining said ribbon.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERMIA E MELIKA whose telephone number is (571)270-5162. The examiner can normally be reached Monday through Thursday 9:00 AM to 6:00 PM EST and a flexed schedule on Fridays from 9:00 AM to 5:00 PM EST.
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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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ERMIA E. MELIKA
Examiner
Art Unit 3654
/ERMIA E. MELIKA/Examiner, Art Unit 3654
/ANNA M MOMPER/Supervisory Patent Examiner, Art Unit 3619
Prosecution Insights