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
Drawings/Specification
The drawings are objected to because:
Figure 2 shows parts 106 and 107, corresponding to thumbscrew 106 with attached spring 107; but in the Figure 106 indicated the spring and 107 the thumbscrew.
Figure 3 shows “screws 104”, that are also mentioned on Paragraph 0037 of the Specification. The numeral 104 is already being used for “tensioning assembly 104”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 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 limitations to be interpreted under 112(f) would be:
first means for securing said rod member end region to said support member (Corresponding to thumbscrew 112 on Figure 3, Paragraph 0016 said first means for securing said rod member end region to said support member is preferably a threaded member releasably fastening the rod member to the support member).
second means for pressing a core end region against said rod member end region and variably applying a frictional resistance to the rotation of said core member (corresponding to tension rod 108 including thumbscrew 106 with attached spring 107).
third means fasting said rod member to said support member (It is not clear what structure they correspond to, but maybe opening 303 on Figure 3, Paragraph 0037, The shape of the bar receiving opening 303 conforms to the peripheral configuration of the horizontal, paper core supporting bar 103).
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 to 14 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.
Regarding Claims 1, 7 and 14:
Claim limitations:
first means for securing said rod member end region to said support member
second means for pressing a core end region against said rod member end region and variably applying a frictional resistance to the rotation of said core member, and
third means fasting said rod member to said support member.
been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it is not clear if the Applicant really wants to interpret the Claims in such way. Also, it is not really clear the structure corresponding to the “third means fasting said rod member to said support member” since “third means” are not mentioned in the specification. The boundaries of those claim limitation are ambiguous; therefore, the claims are indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Regarding Claim 1, 3 and 4:
The Claims recite the limitations "core end region" and “core member”. There is insufficient antecedent basis for these limitation in the claim. An “interior core member end region” and an “interior core member” have been disclosed and the claims will be read as such.
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, 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Page (US 2015/0165717) in view of Lissoni (US 5564645) and Fischer (US 4715519).
Regarding Claim 1:
Page discloses a device for dispensing expandable slit sheet paper (Figure 1 apparatus 10), comprising:
a roll of expandable slit sheet paper, an interior core member, wherein said roll of expandable slit sheet paper is wound on said interior core member (Paragraph 0047, Figures 1 and 3, roll 18 of expandable sheet material 20, roll 18 of expandable sheet material 20 has a hollow, axially-extending core 19 that will be considered the interior core member),
a rod member, wherein said interior core member is mounted on said rod member, said rod member having a rod member end region (Paragraph 0047, Figure 4A, rod 60 will be considered the rod were core 19 is mounted and both core plugs 70, 80 will be considered rod member end regions),
a support member (Figure 3, brackets 50 will be considered the support member),
first means for securing said rod member end region to said support member (Figure 4A, square nut 74 will be considered the first means).
Page discloses means for pressing a core end region and variably applying frictional resistance to the rotation of said core member (Paragraphs 0049 and 0050, a user can control rotational resistance of the roll 18 of expandable sheet material 20 by rotation of the knob 90; the knob 90 advances, it contacts and presses on a bearing 92. The bearing 92 prevents rotation of the roll 18).
But Page does not disclose second means for pressing a core end region against said rod member end region and variably applying a frictional resistance to the rotation of said core member.
Lissoni teaches a braking system for a rotatable roll support hub for providing a smoother progressive braking action which is applicable to any roll support hub on which a controlled braking force is desirable so that the tension of the material dispensed can be controlled and to prevent over-rotation of the roll the tensioning device comprising:
a pressing member, that is part of the support axle 22 which is in turn preferably non-rotationally fixed with a support frame 24 (Support axle 22 will be considered the rod member, roll support hub 20 will be considered the core member and support frame 24 the support member), the pressing member is movable to apply a frictional resistance to inhibit rotation of the core member relative to the rod member (Figure 2, pressure disc 36 including portion 38 and friction surface 40 will be considered the pressing member);
a manually adjusted member that is arranged to apply a pressure against said spring such as to adjust the spring force applied by the spring against said pressing member, the manually adjusted member being a screw that can be considered a knob or a thumbscrew (Figure 2, knob 44 and bolt 46 can be considered a “screw” that being manually operated can be considered a knob or a thumbscrew, the position of pressure disc 36 can be varied by rotating the knob 44 which in turn moves the threaded bolt 46 to extend or within the bolt 46 to the support axle 22);
a spring arranged to apply a spring force against a pressing member, the screw passing through said spring, and being rotatable to manually adjust a spring force spring force applied by the spring against said pressing member (Figure 2, compression spring 48 is compressed or extended by the screw to adjust the spring force), so adjust operating the screw would adjust the distance between said manually adjusted member and said pressing member such as to adjust an amount of compression of the spring, whereby adjusting the spring force from the spring imparted against the pressing member.
said pressing member arranged to press directly upon the surface of the outer periphery of the core is substantially planar at a point of contact with said outer periphery of said core (Figure 2, pressure disc 36 pressed directly against what can be considered a surface of the outer periphery of the core and on Figure 2 can be considered substantially planar);
wherein said manually adjusted member is arranged to apply a pressure upon a first part of said spring and said pressing member is arranged to receive pressure from said spring from a second part of said spring (Figure 2, knob 44 apply a pressure upon a top part of said spring while pressure disc 36 receive pressure from the bottom part of the spring).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Page the teachings of Lissoni and modify the knob 90, making it a screw, modify the pressing member to press directly upon the surface of the outer periphery of the core and adding a spring between the knob and the pressing member as described by Lissoni resulting on a second means for pressing the core end region against said rod member end region and variably applying a frictional resistance to the rotation of said core member for providing a smoother progressive braking action when a controlled braking force is desirable so that the tension of the material dispensed can be more precisely controlled and to prevent over-rotation of the roll.
Page does not disclose the interior core member having an axial length that is greater than the width of the slit sheet paper that is wound on said interior core member and having an interior core member end region that extends beyond said roll of expandable slit sheet paper.
Fisher teaches an assembly of the core member with a roll of sheet material that comprises end regions of said interior core member extending beyond a width of the roll of sheet material, so the roll can be stored, transported or dispensed without the need to be supported on inserts on the wall of a transport container without the need of a rod member.
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to the modified invention of Page the teachings of Fischer and have the assembly of the core member with a roll of sheet material that comprises end regions of said interior core member extending beyond a width of the roll of sheet material to be able to be transport the assembly supported on inserts on the wall of a transport container, to be alternatively dispensed without the need of a rod member or also to protect the ends of the sheet material when placed vertically.
Regarding Claim 2:
Page discloses the rod member having four right angle corners (Figure 4a, square nut 74).
Regarding Claim 12:
Page discloses a method of dispensing and expanding expandable slit sheet paper from a device comprising a roll of expandable slit sheet paper wound on an interior core member, a rod member, said interior core member being mounted on said rod member, said rod member having a rod member end region (Paragraph 0047, Figures 1 and 3, roll 18 of expandable sheet material 20, roll 18 of expandable sheet material 20 has a hollow, axially-extending core 19 that will be considered the interior core member, Figure 4A, rod 60 will be considered the rod were core 19 is mounted and both core plugs 70, 80 will be considered rod member end regions),
a support member (Figure 3, brackets 50 will be considered the support member),
first means for securing said rod member end region to said support member (Figure 4A, square nut 74 will be considered the first means).
Page discloses means for pressing a core end region and variably applying frictional resistance to the rotation of said core member (Paragraphs 0049 and 0050, a user can control rotational resistance of the roll 18 of expandable sheet material 20 by rotation of the knob 90; the knob 90 advances, it contacts and presses on a bearing 92. The bearing 92 prevents rotation of the roll 18).
But Page does not disclose second means for pressing a core end region against said rod member end region and variably applying a frictional resistance to the rotation of said core member.
Lissoni teaches a braking system for a rotatable roll support hub for providing a smoother progressive braking action which is applicable to any roll support hub on which a controlled braking force is desirable so that the tension of the material dispensed can be controlled and to prevent over-rotation of the roll the tensioning device comprising:
a pressing member, that is part of the support axle 22 which is in turn preferably non-rotationally fixed with a support frame 24 (Support axle 22 will be considered the rod member, roll support hub 20 will be considered the core member and support frame 24 the support member), the pressing member is movable to apply a frictional resistance to inhibit rotation of the core member relative to the rod member (Figure 2, pressure disc 36 including portion 38 and friction surface 40 will be considered the pressing member);
a manually adjusted member that is arranged to apply a pressure against said spring such as to adjust the spring force applied by the spring against said pressing member, the manually adjusted member being a screw that can be considered a knob or a thumbscrew (Figure 2, knob 44 and bolt 46 can be considered a “screw” that being manually operated can be considered a knob or a thumbscrew, the position of pressure disc 36 can be varied by rotating the knob 44 which in turn moves the threaded bolt 46 to extend or within the bolt 46 to the support axle 22);
a spring arranged to apply a spring force against a pressing member, the screw passing through said spring, and being rotatable to manually adjust a spring force spring force applied by the spring against said pressing member (Figure 2, compression spring 48 is compressed or extended by the screw to adjust the spring force), so adjust operating the screw would adjust the distance between said manually adjusted member and said pressing member such as to adjust an amount of compression of the spring, whereby adjusting the spring force from the spring imparted against the pressing member.
said pressing member arranged to press directly upon the surface of the outer periphery of the core is substantially planar at a point of contact with said outer periphery of said core (Figure 2, pressure disc 36 pressed directly against what can be considered a surface of the outer periphery of the core and on Figure 2 can be considered substantially planar);
wherein said manually adjusted member is arranged to apply a pressure upon a first part of said spring and said pressing member is arranged to receive pressure from said spring from a second part of said spring (Figure 2, knob 44 apply a pressure upon a top part of said spring while pressure disc 36 receive pressure from the bottom part of the spring).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Page the teachings of Lissoni and modify the knob 90, making it a screw, modify the pressing member to press directly upon the surface of the outer periphery of the core and adding a spring between the knob and the pressing member as described by Lissoni resulting on a second means for pressing the core end region against said rod member end region and variably applying a frictional resistance to the rotation of said core member for providing a smoother progressive braking action when a controlled braking force is desirable so that the tension of the material dispensed can be more precisely controlled and to prevent over-rotation of the roll.
Page does not disclose the interior core member having an axial length that is greater than the width of the slit sheet paper that is wound on said interior core member and having an interior core member end region that extends beyond said roll of expandable slit sheet paper.
Fisher teaches an assembly of the core member with a roll of sheet material that comprises end regions of said interior core member extending beyond a width of the roll of sheet material, so the roll can be stored, transported or dispensed without the need to be supported on inserts on the wall of a transport container without the need of a rod member.
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to the modified invention of Page the teachings of Fischer and have the assembly of the core member with a roll of sheet material that comprises end regions of said interior core member extending beyond a width of the roll of sheet material to be able to be transport the assembly supported on inserts on the wall of a transport container, to be alternatively dispensed without the need of a rod member or also to protect the ends of the sheet material when placed vertically.
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.
Since the independent claims are rejected under 112(b), in particular due to being unclear if they are to interpreted under 112(f) a proper Double patenting rejection can’t be made; but the subject matter of the claims not rejected under art is disclosed at least in the Claims of U.S. Patents No.11479009, 12291392 or 12459225.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In particular Yeager (US 464693), Tamura (4625931), Thundathil (US 5725175), Lessard (US 6199786), Eaton (US 1364259) and Anderson (US 1340710) teach some relevant tensioning devices that could have been used in combination for a proper rejection of the independent claim. Also, Wolfgang (US 2213764) teaches a bobbin reel tensioner comprising relevant to the claimed first, second and third means, in particular thumbscrew 18 on Figure 1 and brake arms 27, that can be considered as pivoting from the support member at pivot 28, that apply pressure from a spring to generate friction to the core of the reel, and Sauber (US 5228656) that teaches a saddle latching device for supporting the cylindrical spool shafts extending from a horizontally disposed reel assembly.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDUARDO R FERRERO whose telephone number is (571)272-9946. The examiner can normally be reached M-F 9:30-7:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SHELLEY SELF can be reached at 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EDUARDO R FERRERO/Examiner, Art Unit 3731
/ROBERT F LONG/Primary Examiner, Art Unit 3731
Prosecution Insights