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/Restrictions
Applicant's election with traverse of group I, claims 1-5, in the reply filed on 20 August 2026 is acknowledged. The traversal is on the ground(s) that the shared technical feature is special. This is not found persuasive because the shared technical feature is not special as further discussed in the following rejection. The argument also does not address the independence or distinctness of the inventions or all sources of burden imposed by the inventions. A serious burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search. Arguments of convenience or coextensiveness are insufficient showing to demonstrate that there is no undue burden..
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 20 August 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Abstract
The abstract of the disclosure is objected to because it is too long, 159 words which is over the 150 word limit.
In addition the abstract contains a number a typographical errors:
“The application relates to” is unnecessary.
“a separate device” should be separating.
“having a transport device, through the separating device along a transport direction” is unclear.
“The transport has a depression” is missing device.
“raising the first edge relation to the second edge” should be relative.
“which runs downward from above diagonally” is unclear.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Specification
The disclosure is objected to because of the following informalities:
The instant specification is missing subject headings which are conventional in US practice.
In ¶¶ 27 and 28 “FIG.” should be FIGS. and the capitalization in ¶ 28 is incorrect.
In ¶ 35 “device 100” should be 110.
In ¶ 45 “strip 220” should be 200.
In ¶ 53 “FIGS. 1A and 2B” should be 2A and 2B.
In ¶ 66 “storage space 340” should be 330.
In ¶ 21, 65, 66 “storage space” vs. “storage place” is inconsistent. The claims recite “storage place”.
Appropriate correction is required.
Claim Objections
Claims 1-4 objected to because of the following informalities:
Claims 1-4 recite “the transport device is suitable for…” in claims directed to an apparatus. This could be construed as intended use that does not contribute patentable weight.
Claim 2-4 improperly capitalize “Claim 1”.
Appropriate correction is required.
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 1-5 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 "a cutting blade, which runs downwards from above diagonally in the transport direction through the strip lying on the transport device" in lines 7-9. It is unclear how the cutting blade runs both downward and diagonally or if the cutting surface runs diagonally and downward. The instant spec says the cutting surface runs diagonally (¶¶ 38 and 69).
Claim 1 recites "in the region of the cutting blade" in line 11-12; and “a tip of the part of the strip which is not cut off” in line 20-21. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites "the region before the first edge" in 4-5; and “the region after the second edge” in lines 6-7. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites "rotating the supporting surface of the strip in the region of the depression" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim.
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(s) is/are:
“Transport device for transporting” in claim 1-4. Which is define in the instant specification as a conveyor, roller belt (¶ 14) as well as structure for the raising and lowering (¶¶ 17, 50, 59) and rotating (¶¶ 19, 58).
“cutting device for cutting” in claim 1. Which is defined in the instant specification as a cutting blade, e.g. a rotating cutter, a laser—or an ultrasound blade (¶ 14) as well as additional structure (¶ 36).
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 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.
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Brazier (US 8,245,615 B2) in view of Sugiyama (JP 2012-045632 A).
Brazier discloses a tire tread skiving machine 20, equated with the claimed separating device, for cutting a tire tread extrusion 22, equated with the claimed strip, (title/abstract; 2:40+) having:
a infeed and outfeed conveyors 26/32, equated with the claimed transport device, for transporting the strip, which lies on the transport device through the separating device along a transport direction (2:45+); and
a carriage 60 mounted on a rail assembly 42, the carriage including a skiving blade 76 mounted on a slide 70, equated with the claimed cutting device for cutting, the strip along a cutting surface using the skiving blade, equated with the claimed cutting blade, which runs downwards from above diagonally in the transport direction through the strip lying on the transport device (FIGS. 2A-2B, 5-7, 12; 3:59+) wherein
the transport device has a cutting well 84, equated with the claimed depression, in the region of the cutting device in order to receive the cutting blade when cutting the strip (FIGS. 1-12; 4:6+);
a beginning of the depression defines a first portion 80, equated with the first edge when viewed in the transport direction, and an end of the depression defines a second portion 82, equated with the second edge, when viewed in the transport direction (FIGS. 11-12); and
the first edge can be raised relative to the second edge (4:27+).
Brazier does not appear to expressly disclose that the transport device is suitable for raising after the cutting of the strip until a tip of the part of the strip which is not cut off has been transported over the second edge by the transport device.
However, Sugiyama discloses a similar device for cutting strip material (title/abstract) which includes a support block 20 that lifts the cut material 16 during cutting and afterwards retracts so that the cut end is not caught by the guiding groove of the support block when conveying is resumed (abstract, pp. 5-7; FIGS. 2-3).
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the device of Brazier to include the movable support of Sugiyama, in order to prevent the ends of the cut strip from being caught.
Regarding claim 2, Brazier and Sugiyama suggest the transport device is suitable for raising a first supporting surface of the strip in the region before the first edge and/or for lowering a second supporting surface of the strip in the region after the second edge (Brazier 4:27+; Sugiyama pp. 5-7).
Regarding claim 3, Sugiyama suggests that the raising of the first supporting surface or respectively the lowering of the second supporting surface by linear, vertical movements of the supporting surfaces (FIG. 2-3; pp. 5-7).
Regarding claim 5, Brazier suggests the strip of deformable material is a tyre semi-finished product (abstract).
Allowable Subject Matter
Claim 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art taken either singularly or in combination fails to anticipate or fairly suggest the limitations of the independent claims, in such a manner that a rejection under 35 U.S.C. §102 or §103 would be proper. Specifically, the supporting surface that is rotated in such a way that the first edge is raised relative to the second edge consistent with the claim interpretation under 112(f) with the specific structure disclosed in n the specification at ¶¶ 19, 58 and FIGS. 4A-4B is novel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KRÖGER UWE
DE 102022123405 A1
VAN STEENIS; Jochem Johannes et al.
US 20250256474 A1
PIALOT; Frederic et al.
US 20220001635 A1
Fischer; Karl E
DE 202021101889 U1
KraussMaffei Berstorff GmbH
DE 202013103501 U1
SAITO TSUGIYA et al.
JP 2011156640 A
Brodmann; Joachim et al.
US 6732620 B1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin A Schiffman whose telephone number is (571)270-7626. The examiner can normally be reached M-F 9a-530p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN A SCHIFFMAN/Primary Examiner, Art Unit 1742
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