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 .
Claim Objections
Claim 9 is objected to because of the following informalities: since claim 9 is NOT elected in the reply filed on 05/29/2026. The status of Claim 9 should be as “Withdrawn”. 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 1-4,7-8, 10, 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, the last paragraph “wherein the first ultrasonic module comprises a horn having an ultrasonic booster with a support tab and an ultrasonic energy input portion located at a first nodal location of the ultrasonic booster and an ultrasonic energy output portion located at a second nodal location of the ultrasonic booster, the first nodal location and the second nodal location comprising either a pair of respective nodes or a pair of respective antinodes of the ultrasonic booster” is unclear and confusing. How are the first and second nodal locations of one ultrasonic booster?
Reading applicant’s specification and Figure 14A, the horn 1102 having an first and second ultrasonic boosters (left and right boosters 1108) with respectively first and second support tabs (left and right tabs 1118) and an ultrasonic energy input portion (the left one) located at a first nodal location (1156A) of the left ultrasonic booster and an ultrasonic energy output portion (the right one) located at a second nodal location of the right ultrasonic booster.
However, as claim 1 is written, it is unclear how are the first and second nodal locations of one ultrasonic booster and it is indefinite. Claims 2-3 have the same issue.
Claim 20 “the ultrasonic cut stack assembly” lacks of antecedent basis for the limitation in the claim. This recitation is indefinite because it is unclear whether it refers a new cut stack assembly or inherently refers to previously introduced one in claim 1.
Claim 20 “the horn…” lacks of antecedent basis for the limitation in the claim. This recitation is indefinite because it is unclear whether it refers a new cut stack assembly or inherently refers to previously introduced one in claim 1.
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claim 1 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claim.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4, 7-8, and 10, 20 of this pending application are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims of the US Patent No. 12397462.
Although the claims of the US Patent are not identical, they are not patentably distinct from each other because it is clear that all structures of Claims of this pending application are found in Claims of the US Patent.
For example, Claim 1 of the pending application, an ultrasonic system for performing a cut-and-seal operation (see claims 1 and 5 “cut, weld, seal”), the system comprising:
an ultrasonic stack assembly (see claim 1) including a first ultrasonic module and at least one transducer arranged to impart ultrasonic energy into the first ultrasonic module (see the first paragraph of claim 1); and
one or more controllers operatively coupled to the ultrasonic stack assembly, the one or more controllers operatively being configured to apply the ultrasonic energy via the at least one transducer through the first ultrasonic module to cause a first part-interfacing surface to move back and forth along its length as the ultrasonic energy is applied by the transducer to the first ultrasonic module (see the last paragraph of claim 1), wherein the first ultrasonic module comprises a horn having an ultrasonic booster with a support tab (see claims 6-8) including an ultrasonic energy input portion located at a first nodal location of the horn and an ultrasonic energy output portion located at a second nodal location of the horn, the first nodal location and the second nodal location comprising either a pair of respective nodes or a pair of respective antinodes of the horn (see claim 7).
Other dependent claims can be found in the dependent claims of the US patent, for examples, claim 2 “a cutting horn” can be seen in claims 1 and 7…etc.,.
Claims 1-4, 7-8, and 10, 20 of this pending application are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims of the co-pending Application No. 19/277264 in view of Klinstein et al (US2022/0388701) hereinafter Klinstein.
For example, Claim 1 of the pending application, an ultrasonic system for performing a cut-and-seal operation (see claim 1 “cut, weld”), the system comprising:
an ultrasonic stack assembly (see claim 1) including a first ultrasonic module and at least one transducer arranged to impart ultrasonic energy into the first ultrasonic module (see the first paragraph of claim 1); and
one or more controllers operatively coupled to the ultrasonic stack assembly (see the 2nd paragraph of claim 1), the one or more controllers operatively being configured to apply the ultrasonic energy via the at least one transducer through the first ultrasonic module to cause a first part-interfacing surface to move back and forth along its length as the ultrasonic energy is applied by the transducer to the first ultrasonic module (see the 2nd paragraph of claim 1 and its inherent limitation), wherein the first ultrasonic module comprises a horn having an ultrasonic booster with a support tab (see the art below) including an ultrasonic energy input portion located at a first nodal location of the horn and an ultrasonic energy output portion located at a second nodal location of the horn, the first nodal location and the second nodal location comprising either a pair of respective nodes or a pair of respective antinodes of the horn (see the art below).
Other dependent claims can be found in the dependent claims of the US patent, for examples, claim 2 “a cutting horn” can be seen in claims 1, 2, …etc.,.
Claims 1-4, 7-8, and 10, 20 of this pending application are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims of the co-pending Application No. 18/532729 in view of Klinstein et al (US2022/0388701) hereinafter Klinstein.
For example, Claim 1 of the pending application, an ultrasonic system for performing a cut-and-seal operation (see claims 1, 9), the system comprising:
an ultrasonic stack assembly (see claim 1) including a first ultrasonic module and at least one transducer arranged to impart ultrasonic energy into the first ultrasonic module (see the first paragraph of claim 1); and
one or more controllers operatively coupled to the ultrasonic stack assembly (see the 2nd paragraph of claim 1), the one or more controllers operatively being configured to apply the ultrasonic energy via the at least one transducer through the first ultrasonic module to cause a first part-interfacing surface to move back and forth along its length as the ultrasonic energy is applied by the transducer to the first ultrasonic module (see the 2nd paragraph of claim 1 and its inherent limitation), wherein the first ultrasonic module comprises a horn having an ultrasonic booster with a support tab (see the art below) including an ultrasonic energy input portion located at a first nodal location of the horn and an ultrasonic energy output portion located at a second nodal location of the horn, the first nodal location and the second nodal location comprising either a pair of respective nodes or a pair of respective antinodes of the horn (see the art below).
Other dependent claims can be found in the dependent claims of the US patent, for examples, claim 2 “a cutting horn” can be seen in claims 9-10, …etc.,.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 8, 10, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klinstein et al (US2022/0388701) hereinafter Klinstein.
Regarding claim 1, as best understood, Klinstein shows an ultrasonic system (Figures 14A and 25)for performing a cut-and-seal operation (Para. 58), the system comprising:
an ultrasonic stack assembly (Figure 25) including a first ultrasonic module (a top one) and at least one transducer (2560A, 2560C, Paras. 165, 172) arranged to impart ultrasonic energy into the first ultrasonic module; and
one or more controllers (2570, Figure 25 and Para. 176) operatively coupled to the ultrasonic stack assembly, the one or more controllers operatively being configured to apply the ultrasonic energy via the at least one transducer through the first ultrasonic module to cause a first part-interfacing surface to move back and forth along its length as the ultrasonic energy is applied by the transducer to the first ultrasonic module (Para. 176 “the controller 2570 can, among other things, cause the plurality of transducers 2550A-2550D to impart ultrasonic energy to the first horn 2510 and the second horn 2530 can cause the respective part-interfacing surfaces to vibrate back and forth in the same or different directions”),
wherein the first ultrasonic module comprises a horn (2510, Figure 25) having an ultrasonic booster (see booster 2560A, 2560C in Figure 25) with a support tab (see a left support tab in Figure 26A below) and an ultrasonic energy input portion located at a first nodal location of the ultrasonic booster (see the left one in Figures 25-26 and Para. 167 “the plurality of apertures 2518A-2518D become slightly distorted allowing the mechanical movement of the horn 2510, which creates a rapid back-and-forth action described herein as scrubbing on the first part-interfacing surface 2512 and the second part-interfacing surface 2514 of the first horn 2510”) and an ultrasonic energy output portion located at a second nodal location of the ultrasonic booster (see the right one in Figures 25-26), the first nodal location and the second nodal location comprising either a pair of respective nodes or a pair of respective antinodes of the horn (see anti-node 2920A, 2920B, Figure 29 and Para. 192. Also, see the discussions in Para. 145 “…a horn 2400 like those shown above that produce a back-and-forth scrubbing action.” And Para. 78 “FIG. 24 is an FEA analysis of a paddle-style horn according to the present disclosure showing design principles of placement of the nodes and anti-nodes to produce a scrubbing motion along the horn's width (perpendicular to its height)”).
PNG
media_image1.png
488
695
media_image1.png
Greyscale
Regarding claim 2, Klinstein shows that the horn comprises an ultrasonic cut horn (see Figure 25 and Para. 127 “an ultrasonic-assisted “cut and seal” assembly 1400” and Para. 166 “The first horn 2510 and the second 2530 are the same as, or similar to, other horns (e.g., the horn 1410)”) and the first nodal location and the second nodal location comprise the pair of respective antinodes of the ultrasonic booster (Para. 192).
Regarding claim 3, Klinstein shows that the horn comprises an ultrasonic cut horn and the pair of respective antinodes are adjacent antinodes of the ultrasonic booster (see Claim 2 and Figure 29).
Regarding claim 4, Klinstein shows that the ultrasonic booster is an integral part of the ultrasonic horn (see Figure 25 that shows all parts being integral together as a whole unit) and the support tab (see Figure 26 above) has a generally square or rectangular shape.
Regarding claims 8, 10, Klinstein shows that the horn has at least two part-interfacing surfaces, including a first part-interfacing surface along one side of the horn and a second part-interfacing surface along an opposite side of the horn (upper and lower edges of the horn 2510, Figure 25), and wherein the one or more controllers are configured to cause the horn to rotate while the ultrasonic energy is imparted to one or more of the at least two part-interfacing surfaces (Figure 27 and see claim 1 for the controller).
Regarding claim 20, as best understood, Klinstein shows that the ultrasonic “cut stack assembly” system comprises a second ultrasonic module (2530, Figure 25 and Para. 166) opposite the first ultrasonic module;
wherein the second ultrasonic module including a horn, in which comprises an ultrasonic cut horn arranged to operate under control of the one or more controllers (see the discussion of claims 2-3 above); the ultrasonic cut horn has a cutting feature arranged to move back and forth along its length to perform a cutting operation when ultrasonic energy is applied to the ultrasonic cut horn (see the arrow in Figures 27); and the second ultrasonic module comprises a rotary ultrasonic horn (see Figure 25).
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 1-4, 8, 10, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Klinstein.
Regarding claims 1-4, 8, 10, 20, these are alternative rejections if one argues that the embodiment in Figure 25 does not rotate and have cutting feature, then see Klinstein’s Figures 16A-C and 17A-C that shows a horn being a blade and rotated.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the system of Klinstein to have a cutting feature on the horn, in order to allow the system can be effectively used to cut the workpieces.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Klinstein in view of Kim (KR 20090036290 and translation).
Regarding claim 7, Klinstein shows all of the limitations as stated above including that the horn has a length along a side thereof and a width along an end thereof, the length being longer than the width (see Figures 25, 26A), and the ultrasonic booster (2560A, Figure 25) extending away from the end of the horn (Figure 25), the end being interfaced with the transducer (Figure 25), however, it is unclear whether the horn and the ultrasonic booster have a generally flat profile along coplanar surfaces thereof or not.
Kim shows a welding or sealing system (100, Figure 1) having a horn (20), a horn (20) and the horn and the ultrasonic booster have a generally flat profile along coplanar surfaces thereof (Figures 4a, 4b).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the booster and the horn of Klinstein to have a generally flat profile along coplanar surfaces thereof, as taught by Kim, since this is known alternative way for the same purpose as per MPEP 2143, and the KSR decision, exemplary rationale B.
Further, it would have been an obvious matter of design choice to make the booster and the horn of whatever form or shape was desired or expedient, including a generally flat profile along coplanar surfaces thereof. Furthermore, the shapes of the booster and the horn are merely a recognized equivalent way, since applicant has not disclosed that having any specific construction of the booster and the horn to have a generally flat profile along coplanar surfaces thereof solve any stated problem or is for any particular purpose, and it appears any shape of the booster and the horn would perform equally well while being constructed of a generally flat profile along coplanar surfaces thereof. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey etal., 149 USPQ 47.
Response to Arguments
Applicant's arguments filed 07/03/2026 have been fully considered but they are not persuasive for the reasons below.
Applicant has amended to claim 1, that makes the scope of claim 1 confusing (see 112b issues above).
There is NO addressed the double patenting rejections.
Regards to the disclosed invention of Figure 14A, remarks, it is clearly shows left and right boosters 1108, left and right nodal locations 1156A, 1156B and left and right support tabs 1118, left and right energy input portions, however, as claim 1 is written, it is confusing and unclear how the features above connect together.
With regards to the recitation of “Paras. 143-145”, it appears Applicant miss-read. Paras. 143-144 discusses the prior art and Para. 145 discusses the horn 2400 which is the “present disclosure showing design principles of placement of the nodes and anti-nodes to produce a scrubbing motion along the horn's width” as also discussed in Para. 78), which means all horns of the present disclosure showing design principles of placement of the nodes and anti-nodes.
With regards to "an ultrasonic energy input portion located at a first nodal location of the ultrasonic booster and an ultrasonic energy output portion located at a second nodal location of the ultrasonic booster, the first nodal location and the second nodal location comprising either a pair of respective nodes or a pair of respective antinodes of the ultrasonic booster, as required in amended independent claim 1”, see the further explanation in the rejections above.
Please note that the Examiner is not using the prior-art horn of Figures 22-23 for rejecting claim 1. The Examiner just shows the difference between the prior-art horn and the present disclosure horn to help reader understand the present disclosure horn of Figures 24-29.
With regards to claim 7 “Kim confirms that it too does not teach or suggest…”, applicant's arguments against the references individually (Klinstein shows all of the limitations as discussed above and fails to discuss whether the horn and the ultrasonic booster have a generally plat profile along coplanar surfaces thereof or not; therefore, one skill in the art to modify the horn to have its limitation, as taught by Kim, in order to provide an alternative way for the same purpose), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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, Boyer Ashley can be reached on (571) 272-4502. 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.
/NHAT CHIEU Q DO/Primary Examiner, Art Unit 3724 8/11/2026
Prosecution Insights