DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16th, 2013 is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Sheet
The information disclosure statement (IDS) submitted on 01/09/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation – 35 USC §112f
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 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.
The following elements are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
Regarding claims 2 and 12, “loading member” (because A – “member” is the placeholder/nonce term, B – “configured to retain and feed a substrate to a cutting assembly” designates the function, and C – no additional structure is provided in the claim body, thus “loading member” is understood as equivalent to “means for retaining and feed a substrate to a cutting assembly”). A review of the specification suggests that the corresponding structure is an unwinder for retaining, supporting, and feeding the web of substrate (described in ¶ [0033] of the US PG Pub document) or equivalent.
Regarding claims 3 and 13, “unwinder member” (because A – “member” is the placeholder/nonce term, B – “for supporting and feeding a web of substrate to the cutting assembly” designates the function, and C – no additional structure is provided in the claim body, thus “unwinder member” is understood as equivalent to “means for supporting and feeding a web of substrate to the cutting assembly”). A review of the specification fails to describe the requisite structure for the unwinder member. Therefore, subsequent rejections under 35 USC 112(a) and 35 USC 112(b) are provided below.
Regarding claims 8 and 18, “folder member” (because A – “member” is the placeholder/nonce term, B – “configured to fold prescored portions of the given piece of substrate” designates the function, and C – no additional structure is provided in the claim body, thus “folder member” is understood as equivalent to “means for folding prescored portions of the given piece of substrate”). While the specification does not provide a specific recitation of the specific structure, the use of mechanical folders in the state of the art would allow one of ordinary skill in the art to understand the mechanical folding guides or plows involved.
Regarding claims 9 and 19, “pre-feeder assembly” (because A – “assembly” is the placeholder/nonce term, B – “for receiving envelopes and feeding said envelopes to an envelope inserter station of the document inserter system” designates the function, and C – no additional structure is provided in the claim body, thus “pre-feeder assembly” is understood as equivalent to “means for receiving envelopes and feeding said envelopes to an envelope inserter station of the document inserter system”). A review of the specification suggests that the corresponding structure is a transport deck including a ramp feed (see ¶ [0030] of the US PG Pub) or equivalent.
If the 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
Claim 6 is objected to because of the following informalities:
Regarding claim 6, the claim recites, “…one or more pieces of cut and scored, substrate with…” However, it appears that the comma should be removed such that the passage should instead recite “…one or more pieces of cut and scored
Appropriate correction is required.
Claim Rejections – 35 USC §112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 2-8 and 12-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 2-3 and 12-13, as identified above, the claims lack sufficient structural support in the specification. Therefore, these claims are rejected under 35 USC 112(a) due to the lack of written description for the limitations of “a loading member” and “an unwinder member.”
Regarding claims 4-8 and 14-18, these claims are also rejected under 35 USC 112(a) due to their dependence upon rejected claims 2-3 and 12-13.
Claim Rejections – 35 USC §112(b)
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.
Claims 2-8, 10, 12-18, and 20 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.
Regarding claims 2-3 and 12-13, claim limitations “a loading member” and “an unwinder member” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specifically, the disclosure is devoid of any structure that performs the structure of the claim limitations of “a loading member” and “an unwinder member.” Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claims 4-8 and 14-18, these claims are also rejected under 35 USC 112(b) due to their dependence upon rejected claims 2-3 and 12-13.
Regarding claims 10 and 20, the claim recite “the feeder module.” However, there is no prior introduction or antecedent basis for a “feeder module” in the claims. It is unclear if this is intended to refer to the “wrapper-like envelope creation module” or the “pre-feeder assembly” as introduced in claims 9 and 19.
Double Patenting Rejection
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,350,956. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims merely represent an obvious broadening of the patenting claims. Specifically, claims 1 and 11 of the ‘956 patent recite an envelope creation module and method constrained to operating in a “first mode” (fabricating envelopes) and a “second mode” (allowing the system to be loaded with premade envelopes). Current claims 1 and 11 remove the dual mode operation limitations entirely, claiming the apparatus and method solely based on the envelope fabrication function. Omitting the dual-mode limitation from the patented claims merely genericizes the invention or claims a sub-combination of the patented system. It would have been obvious to a person of ordinary skill in the art to provide the envelop creation module of the ‘956 patent without the second mode of operation, as this simply omits a feature and its corresponding function. Therefore, the current claims are an obvious variation of the patented claims.
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.
Claims 1 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wooley (US 4,443,211) in view of Ballestrazzi (US 6,155,031).
Regarding claim 1, Wooley teaches a wrapper-like envelope creation module configured to fabricate wrapper-like outer envelopes (Figures 1 and 2 illustrate a device for the fabrication of an outer envelope #40).
Wooley does not specifically teach the module is configured to feed said wrapper-like outer envelopes to a document inserter system operably coupled thereto.
Ballestrazzi teaches a module configured to feed said wrapper-like outer envelopes to a document inserter system operably coupled thereto (Figure 1 illustrates a device configured to receive formed envelopes #18 and feed in a series of documents. This is further described in the abstract and col 3, lines 10-24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wooley to incorporate the teachings of Ballestrazzi to include feeding the outer envelopes to a document inserter system with the motivation of creating an automatic envelope inserting machine, as recognized by Ballestrazzi in the abstract.
Regarding claim 11, Wooley teaches a method for fabricating a mailpiece, the method comprising: fabricating, via a wrapper-like envelope creation module, wrapper-like outer envelopes (Figures 1 and 2 illustrate a device for the fabrication of an outer envelope #40).
Wooley does not specifically teach the module is configured to feed said wrapper-like outer envelopes to a document inserter system operably coupled thereto.
Ballestrazzi teaches feeding, via said wrapper-like envelope creation module, said fabricated wrapper-like outer envelopes to a document inserter system operably coupled thereto (Figure 1 illustrates a device configured to receive formed envelopes #18 and feed in a series of documents. This is further described in the abstract and col 3, lines 10-24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wooley to incorporate the teachings of Ballestrazzi to include feeding the outer envelopes to a document inserter system with the motivation of creating an automatic envelope inserting machine, as recognized by Ballestrazzi in the abstract.
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wooley in view of Ballestrazzi, and in further view of Hipko (US 5,155,973).
Regarding claim 2, Wooley in view of Ballestrazzi does not specifically teach a loading member configured to retain and feed a substrate to a cutting assembly.
Hipko teaches a loading member configured to retain and feed a substrate to a cutting assembly (Figure 5 illustrates a device to retain and feed a substrate to a cutting unit #164).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wooley in view of Ballestrazzi to incorporate the teachings of Hipko to include Hipko with the motivation of providing a device for separating the substrate into individual portions, as recognized by Hipko in col 4, lines 34-39.
Regarding claim 12, Wooley in view of Ballestrazzi does not specifically teach providing a loading member configured to retain and feed a substrate to a cutting assembly.
Hipko teaches providing a loading member configured to retain and feed a substrate to a cutting assembly (Figure 5 illustrates a device to retain and feed a substrate to a cutting unit #164).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wooley in view of Ballestrazzi to incorporate the teachings of Hipko to include Hipko with the motivation of providing a device for separating the substrate into individual portions, as recognized by Hipko in col 4, lines 34-39.
Allowable Subject Matter
If the above prior art rejections and rejections under 35 USC 112(a)/112(b) are overcome, claims 3-10 and 13-20 would be objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB A SMITH whose telephone number is (571) 272-3974 and email address is Jacob.Smith@uspto.gov. The examiner can normally be reached on M-F 7:30AM - 5:30PM.
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/JACOB A SMITH/Examiner, Art Unit 3731