DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to file provisions. 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.
Application Status
This office action is in response to the claims filed 6/10/2025.
Claims 1-20 are currently pending and being examined.
Information Disclosure Statement
The 2 IDS documents have been considered. See the attached PTO 1449 forms.
Claim Objections
Claims 8, 14, and 17 are objected to because of the following informalities:
Claim 8: “the interior surface configured” should be changed to “the interior surface is configured”;
Claim 14: “the central portion the dunnage” should be changed to “the central portion of the dunnage”; and “a greater loft that” should be changed to “a greater loft than”;
Claim 17: “server the dunnage” should be changed to “sever the dunnage”. Appropriate correction is required.
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:
Claims 1, 19, and 20: “a crumpler [] configured to compress”, interpreted to be rotary elements, or equivalents thereof.
Claims 8 and 19: “a spreader [] configured to maintain interior dimensions of the tube”, interpreted to be objects with curved surfaces, or equivalents thereof.
Claims 14, 15, and 17: “compression elements configured to compress and puncture the overlapping layers”, interpreted to be rotary elements, or equivalents thereof.
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 § 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 1-19 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 pre-AIA the applicant regards as the invention.
In claim 1, the first instance of “the inner former” lacks antecedent basis as presented, rendering the claim indefinite.
In claim 2, “the inner surface” (interpreted as “the interior surface”) lacks antecedent basis, rendering the claim indefinite.
In claim 17, “the compression members” (interpreted as “the compression elements”) lacks antecedent basis, rendering the claim indefinite.
In claim 19, “the separator” (interpreted as “the spreader”) lacks antecedent basis, rendering the claim indefinite.
Claims depending from claim 1 are therefore also rejected as being dependent on a rejected claim.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-8 and 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Cheich et al. US 2022/0184914.
Regarding claim 1:
Cheich teaches a device for producing dunnage from a stock material (abstract), comprising: a former (72), including: an outer former (92) having an interior surface defining a passage (96; [0065]) configured to receive the inner former, the interior surface configured to bend the stock material into overlapping layers as the stock material moves through the passage in a downstream direction with respect to a material path of the stock material (e.g., see FIG. 11), and an inner former (90) having an outer surface, at least a portion of the outer surface opposing and being spaced from the interior surface of the outer former so that the outer surface and the interior surface of the outer former define a channel configured to receive the stock material (e.g., see FIG. 11); and a crumpler (74) positioned downstream of the former with respect to the material path and configured to compress the overlapping layers of the stock material ([0063]), wherein: the passage has a depth corresponding to a maximum dimension of the passage in a first direction (vertical), the first direction coinciding with a radial direction within a radial plane about a centerline of the passage, the radial direction intersecting a transverse centerline of the stock material within the passage (shown in FIG. 6); the passage has a width equal to a maximum dimension of the passage in a second direction (horizontal) perpendicular to the first direction and the centerline of the passage.
Cheich does not explicitly teach the passage has an aspect ratio defined by the width of the passage to the depth of the passage, the aspect ratio being about 1.7:1 or less along the length of the passage.
Examiner notes that since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (see MPEP 2144.04 IV. A.), it would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the aspect ratio to any desired ratio, depending on the desired dimensions and characteristics of the formed dunnage.
Regarding claim 2:
Cheich teaches the device of claim 1, as discussed above, but does not explicitly teach wherein: the inner surface of the outer former defines a cross-sectional perimeter of the passage; and the cross-sectional perimeter of the passage is curved along more than 50 percent of the cross-sectional perimeter.
However, given that it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (see MPEP 2144.04 IV. A.), it would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the device of Cheich such that a cross-sectional perimeter of the passage is curved along more than 50 percent of the cross-sectional perimeter, in order to provide a smooth folding of the stock material.
Regarding claim 3:
Cheich teaches the device of claim 2, as discussed above, wherein a cross-sectional perimeter of the passage is generally circular or oval (see FIG. 6).
Regarding claim 4:
Cheich teaches the device of claim 2, as discussed above, wherein a cross-sectional perimeter of the passage is free of concavities over a distance of more than 1/10 of a transverse dimension of the stock material (see flat top and bottom portions in FIG. 6).
Regarding claim 5:
Cheich teaches the device of claim 1, as discussed above, wherein the inner former has a frusto-conical configuration (see FIG. 8).
Regarding claim 6:
Cheich teaches the device of claim 1, as discussed above, wherein the inner former has a circular transverse cross section (FIG. 6, sides have a circular cross section).
Regarding claim 7:
Cheich teaches the device of claim 1, as discussed above, wherein the passage tapers inward toward the centerline of the passage in the downstream direction over more than 50 percent of a length of the passage (see FIG. 8).
Regarding claim 8:
Cheich teaches the device of claim 1, as discussed above, further including a spreader (114) positioned downstream of the inner former (i.e., downstream of its upstream end) with respect to the material path, wherein: the interior surface configured to bend the stock material into the overlapping layers to form a tube of the stock material, and the spreader is configured to maintain interior dimensions of the tube.
Regarding claim 10:
Cheich teaches the device of claim 1, as discussed above, wherein the inner former is fixed in relation to the outer former (shown throughout the figures).
Regarding claim 11:
Cheich teaches the device of claim 10, as discussed above, wherein a portion of the inner former extends upstream from an upstream end of the passage to an extent that permits the stock material to be inserted into the channel by pushing the stock material along the outer surface of the inner former (see FIGS. 8 and 18).
Regarding claim 12:
Cheich teaches the device of claim 10, as discussed above, wherein a portion of the inner former extends upstream from an upstream end of the passage to an extent that permits the stock material to be wrapped around the inner former (see FIGS. 8 and 18).
Regarding claim 13:
Cheich teaches the device of claim 1, as discussed above, but does not teach wherein the inner former is telescopically disposed in relation to the outer former so that the inner former can at least partially withdraw from the passage.
However, since it has been held that making an old device portable or movable without producing any new and unexpected result involves only routine skill in the art, (In re Lindberg, 93 USPQ 23 (CCPA 1952)), it would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the inner former to be movable, telescopically or otherwise, in order to make any necessary adjustments of the device.
Regarding claim 14:
Cheich teaches the device of claim 1, as discussed above, wherein the crumpler includes compression elements (160/162) configured to compress and puncture the overlapping layers of the stock material along a central portion of the stock material to form the dunnage having a central portion and two lobes adjoining opposite sides of the central portion the dunnage and having a greater loft that the central portion of the dunnage ([0087]).
Regarding claim 15:
Cheich teaches the device of claim 14, as discussed above, wherein the crumpler further includes: a housing; and a cover mounted on the housing and configured to move between an open and closed position in relation to the housing, the compression elements being mounted in the housing and/or the cover, wherein: the housing and/or the cover define an exit opening configured to allow the dunnage to exit the crumpler, and the exit opening includes a central portion aligned with the compression elements with respect to the material path, and two lateral portions offset from the compression elements with respect to the material path (all shown or envisaged in FIGS. 25-27).
Regarding claim 16:
Cheich teaches the device of claim 15, as discussed above, wherein: the central portion of the exit opening is configured to facilitate passage of the central portion of the dunnage through the exit opening; and the lateral portions of the exit opening are configured to facilitate passage of the respective lobes of the dunnage material through the exit opening (all portions facilitate the passage of all portions of the dunnage).
Regarding claim 17:
Cheich teaches the device of claim 16, as discussed above, further comprising a cutting mechanism (76 or 222) located downstream of the compression members and having a cutter element configured to server the dunnage, wherein the central portion of the exit opening is aligned with the cutter element with respect to the material path ([0090]).
Regarding claim 18:
Cheich teaches the device of claim 17, as discussed above, but does not explicitly teach wherein the central portion of the exit opening is sized to prevent fingers from accessing an interior of the crumpler.
However, It would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the size of the exit opening such that an operator fingers would not be in danger when manipulating the device.
Regarding claim 19:
Cheich teaches a device for producing dunnage from a stock material (abstract), comprising: a former (72), including: an outer former (92) having an interior surface defining a passage (96; [0065]) configured to receive the inner former, the interior surface configured to bend the stock material into overlapping layers as the stock material moves through the passage in a downstream direction with respect to a material path of the stock material to form a tube of the stock material (e.g., see FIG. 11), and an inner former (90) having an outer surface, at least a portion of the outer surface opposing and being spaced from the interior surface of the outer former so that the outer surface and the interior surface of the outer former define a channel configured to receive the stock material (e.g., see FIG. 11); a spreader (114) positioned downstream of the inner former with respect to the material path (i.e., downstream of its upstream end); and a crumpler (74) positioned downstream of the separator with respect to the material path and including compression members (160/162) configured to compress a central portion of the overlapping layers of the stock material in a first direction, wherein the spreader is configured to maintain interior dimensions of the tube (envisaged FIG. 11).
Claims 9 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cheich, as applied above, and further in view of Chesterson et al. US 2003/0073558.
Regarding claim 9:
Cheich teaches the device of claim 1, as discussed above, further comprising an inlet (see inlet in FIG. 25) located upstream of the former with respect to the material path.
Cheich does not teach the inlet having a forming surface configured to bend the stock material in a direction of the material path while bending side edge portions of the stock material about a longitudinal centerline of the stock material as the stock material is drawn over the forming surface.
Chesterson teaches an inlet having a forming surface configured to bend the stock material in a direction of the material path while bending side edge portions of the stock material about a longitudinal centerline of the stock material as the stock material is drawn over the forming surface ([0020]).
It would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the inlet of Cheich with a forming surface configured to bend the stock material in a direction of the material path while bending side edge portions of the stock material about a longitudinal centerline of the stock material as the stock material is drawn over the forming surface, as taught by Chesterson, since this would help prepare the stock material for the folding provided by the former.
Regarding claim 20:
Cheich teaches a device for producing dunnage from a stock material, comprising: an inlet (e.g., see FIG. 19 at 180); a former (72) positioned downstream of the inlet with respect to the material path, the former including: an outer former (92) having an interior surface defining a passage (96; [0065]) configured to receive the inner former, the interior surface configured to bend the stock material into overlapping layers as the stock material moves through the passage in a downstream direction with respect to a material path of the stock material (e.g., see FIG. 11), and an inner former (90) having an outer surface, at least a portion of the outer surface opposing and being spaced from the interior surface of the outer former so that the outer surface and the interior surface of the outer former define a channel configured to receive the stock material (e.g., see FIG. 11); and a crumpler (74) positioned downstream of the former with respect to the material path and configured to compress the overlapping layers of the stock material ([0063]).
Cheich does not teach the inlet having a forming surface configured to bend the stock material in a direction of a material path of the stock material through the device while bending side edge portions of the stock material about a longitudinal centerline of the stock material as the stock material is drawn over the forming surface
Chesterson teaches an inlet having a forming surface configured to bend the stock material in a direction of the material path while bending side edge portions of the stock material about a longitudinal centerline of the stock material as the stock material is drawn over the forming surface ([0020]).
It would have been obvious to a person having ordinary skill in the art, at the effective filing date of the invention, to modify the inlet of Cheich with a forming surface configured to bend the stock material in a direction of the material path while bending side edge portions of the stock material about a longitudinal centerline of the stock material as the stock material is drawn over the forming surface, as taught by Chesterson, since this would help prepare the stock material for the folding provided by the former.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARIUSH SEIF whose telephone number is (408)918-7542. The examiner can normally be reached Monday-Friday 9:30 AM-6:00 PM PST.
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/DARIUSH SEIF/Primary Examiner, Art Unit 3731
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