`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
` FILING DATE
`
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
` CONFIRMATIONNO.
`
`
`13/533,074
`
`06/26/2012
`
`Kevin L. Corcoran
`
`ELL-125
`
`6054
`
`Morland C. Fischer
`cher
`
`.
`
`Lave
`EXAMINER
`PX
`CHOI, STEPHEN
`Suite 1300
`PAPER NUMBER
`ART UNIT
`2030 MainStreet
`Irvine, CA 92614|arin|
`3724
`
`memes
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`MAIL DATE
`
`06/27/2014
`
`DELIVERY MODE
`
`PAPER
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/533,074 CORCORAN, KEVIN L.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`Stephen Choi Na 3724
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply betimely filed
`
`Status
`1)X] Responsive to communication(s)filed on 6/26/12.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)L] This action is FINAL.
`2b) This action is non-final.
`3)L] Anelection was made bythe applicant in responsetoarestriction requirementset forth during the interview on
`
`
`; the restriction requirement and election have been incorporatedinto this action.
`4)[] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`
`
`
`
`Disposition of Claims*
`5)KX] Claim(s) 1-12 is/are pending in the application.
`5a) Of the above claim(s) 1-5 is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7)X] Claim(s) 6-12 is/are rejected.
`8)L] Claim(s)
`is/are objected to.
`9)L] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`or send an inquiry to PPHieedback@uspto.qoy.
`
`Application Papers
`10)KX] The specification is objected to by the Examiner.
`11)] The drawing(s)filed on 626/12 is/are: a)X] accepted or b)[_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)[] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)L] All
`b)[-] Some** c)L] None ofthe:
`1..] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`““ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) X Notice of References Cited (PTO-892)
`:
`.
`2) CT] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) CT] Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`4) CO Other:
`.
`
`.
`
`Part of Paper No./Mail Date 20140624
`
`

`

`Application/Control Number: 13/533,074
`Art Unit: 3724
`
`Page 2
`
`1.
`
`The present application is being examined underthe pre-AlA first to invent
`
`provisions.
`
`DETAILED ACTION
`
`1.
`
`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`|. Claims 1-5 are, drawnto a die, classified in 83/686.
`
`Il. Claims 6-12 are, drawn to a method ofcutting, classified in 83/13.
`
`The inventions are distinct, each from the other becauseofthe following reasons:
`
`2.
`
`Inventions | and II are related as process and apparatus forits practice. The
`
`inventions are distinctif it can be shown that either: (1) the process as claimed can be
`
`practiced by another and materially different apparatus or by hand, or (2) the apparatus
`
`as Claimed can be used to practice another and materially different process.
`
`(MPEP §
`
`806.05(e)).
`
`In this case, the apparatus as claimed can be used to practice another and
`
`materially different process such as a method not requiring a step of printing set forth in
`
`lI.
`
`3.
`
`Restriction for examination purposes asindicated is proper becauseall these
`
`inventions listed in this action are independentordistinct for the reasons given above
`
`and there would be a serious search and/or examination burden if restriction were not
`
`required because the inventions have acquired a separate status in the art in view of
`
`their different classification.
`
`Applicant is advised that the reply to this requirement to be complete must
`
`include(i) an election of an invention to be examined even though the requirement
`
`

`

`Application/Control Number: 13/533,074
`Art Unit: 3724
`
`Page 3
`
`may be traversed (37 CFR 1.148) and(ii) identification of the claims encompassing
`
`the elected invention.
`
`The election of an invention may be made with or without traverse. To reserve a
`
`right to petition, the election must be madewith traverse. If the reply does notdistinctly
`
`and specifically point out supposederrorsin the restriction requirement, the election
`
`shall be treated as an election without traverse. Traversal must be presentedat the time
`
`of election in order to be considered timely. Failure to timely traverse the requirement
`
`will result in the loss of right to petition under 37 CFR 1.144. If claims are addedafter
`
`the election, applicant must indicate which of these claims are readable upon the
`
`elected invention.
`
`Should applicant traverse on the groundthat the inventions are not patentably
`
`distinct, applicant should submit evidenceoridentify such evidence now of record
`
`showing the inventions to be obvious variants or clearly admit on the recordthatthis is
`
`the case. In either instance,if the examinerfinds one of the inventions unpatentable
`
`overthe prior art, the evidence or admission may be used in a rejection under 35 U.S.C.
`
`103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
`
`4.
`
`During a telephone conversation with Morland Fischer (26,881) on 24 June 2014
`
`a provisional election was made without traverse to prosecute the invention ofIl, claims
`
`6-12. Affirmation of this election must be made by applicant in replying to this Office
`
`action. Claims 1-5 are withdrawnfrom further consideration by the examiner, 37
`
`CFR 1.142(b), as being drawn to a non-elected invention.
`
`

`

`Application/Control Number: 13/533,074
`Art Unit: 3724
`
`Page 4
`
`Specification
`
`2.
`
`The abstract of the disclosure is objected to because the last sentence refers to
`
`purported merits of the invention. Correction is required. See MPEP § 608.01(b).
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis for the rejections underthis section madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one yearprior to the date of application
`for patent in the United States.
`
`4.
`
`Claims 6-8 and 10-11 are rejected underpre-AlA 35 U.S.C. 102b as being
`
`anticipated by WO 83/00112 (hereafter WO ‘112).
`
`WO ‘112 disclosesall the positively recited steps of the invention including a
`
`method for cutting a shape from a sheet material (e.g., 1) comprising the steps of
`
`printing the shape to be cut on the sheet material (e.g., label print), forming at least a
`
`first die having an inside opening (e.g., Figure 3) that correspondsto the shapeto be
`
`cut from the sheet material, an outside border(e.g., at 6) that surroundsthe inside
`
`opening, and a cutting edge (e.g., 7)
`
`that projects from the outside borderto cut the
`
`shape from the sheet material, locating the cutting edge on the outside borderof the die
`
`suchthat the cutting edge surroundsthe inside opening of the die, whereby noneof the
`
`outside border extends past the cutting edge and none ofthe outside borderlies
`
`between the cutting edge and the inside opening (e.g., Figures 2-3), positioning the die
`
`on the sheet material so that the outside border of the die surrounds on the shape
`
`printed on the sheet material, so that the cutting edge of the die is registered with the
`
`

`

`Application/Control Number: 13/533,074
`Art Unit: 3724
`
`Page 5
`
`shape (e.g., Figure 1), and applying a force to the die for pushing the cutting edge
`
`thereof through the sheet material to cut the shape outwardly therefrom (e.g., via 3).
`
`Regarding claims 7-8, e.g., Figures 1-3 and page 1, first paragraph. Regarding claim
`
`10, e.g., via3. Regarding claims 11-12, WO ‘112 teaches the same die as claimed.
`
`It
`
`is noted that the die itself does not depend on the process of making the die and there
`
`appears to be no evidence establishing an unobvious difference between the claimed
`
`die formed by chemically etching a flat piece of metal and the die of WO ‘112 formed by
`
`the disclosed process.
`
`5.
`
`Claims 6-8 and 10-11 are rejected underpre-AlA 35 U.S.C. 102b as being
`
`anticipated by Hagmann (US 4,796,501).
`
`Hagmann disclosesall the positively recited steps of the invention including a
`
`method for cutting a shape from a sheet material comprising the steps of printing the
`
`shape to be cut on the sheet material (e.g., photograph), forming at least a first die
`
`having an inside opening (e.g., at 40) that correspondsto the shapeto be cut from the
`
`sheet material, an outside border (e.g., at 41, 39) that surrounds the inside opening, and
`
`a cutting edge (e.g., at 41) that projects from the outside border to cut the shape from
`
`the sheet material, locating the cutting edge on the outside border of the die such that
`
`the cutting edge surroundsthe inside opening of the die, whereby noneof the outside
`
`border extendspast the cutting edge and noneof the outside borderlies between the
`
`cutting edge and the inside opening (e.g., Figure 3), positioning the die on the sheet
`
`material so that the outside borderof the die surrounds on the shapeprinted on the
`
`sheet material, so that the cutting edge of the die is registered with the shape(e.g.,
`
`

`

`Application/Control Number: 13/533,074
`Art Unit: 3724
`
`Page 6
`
`column 2, lines 56-68), and applying a force to the die for pushing the cutting edge
`
`thereof through the sheet material to cut the shape outwardly therefrom (e.g., via 8).
`
`Regarding claims 7-8, e.g., Figure 3 and column 2, lines 56-68. Regarding claim 10,
`
`€.g., via 8. Regarding claims 11-12, Hagmann teaches the same die as claimed.
`
`It is
`
`noted that the die itself does not depend on the process of making the die and there
`
`appears to be no evidence establishing an unobviousdifference between the claimed
`
`die formed by chemically etching a flat piece of metal and the die of Hagmann formed
`
`by any process.
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of thistitle, if the differences between the subject matter soughtto
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`7.
`
`Claims 9 and 12 are rejected underpre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over WO ‘112 or Hagmann.
`
`Regarding claim 9, WO ‘112 or Hagmann discloses the invention substantially as
`
`claimed except for a width of at least 2.5 mm. However, it would have been an obvious
`
`matter of design choice to a person of ordinary skill in the art to provide the width of at
`
`least 2.5 mm on the device of WO ‘112 or Hagmann becausediscovering an optimum
`
`width would have been a mere design consideration based on characteristics of a
`
`punching tool and the workpiece to be cut. Such a modification would have involved
`
`

`

`Application/Control Number: 13/533,074
`Art Unit: 3724
`
`Page 7
`
`only routine skill in the art to accommodate different reinforcement requirement
`
`depending on the characteristics of a knife and the workpiece.
`
`It has been held that
`
`discovering an optimum value of a result effective variable involves only routine skill in
`
`the art.
`
`In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Regarding claim 12,
`
`WO ‘112 or Hagmann fails to teach a second die that can be nested within and spaced
`
`from the first die. However, it would have been obvious to one having ordinary skill in
`
`the art at the time the invention was made to provide a second die that has smaller size
`
`than the first ide so that the second die can be nested within and spaced form the first
`
`die on the device of WO ‘112 or Hagmann since the examiner takes Official Notice that
`
`the use of different size dies is old and well knownin the art for the purposeof
`
`producing different size products. Eichenberg shows an example.
`
`Conclusion
`
`5.
`
`The prior art madeof record and not relied upon is considered pertinent to
`
`applicant's disclosure. Fauth, Eichenberg, and Workmanarecited to show related
`
`devices.
`
`6.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Stephen Choi whose telephone numberis (571)272-
`
`4504. The examiner can normally be reached on Monday-Friday 7:00-3:30.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Boyer D. Ashley can be reached on 571-272-4502. The fax phone number
`
`for the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 13/533,074
`Art Unit: 3724
`
`Page 8
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automatedinformation
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Stephen Choi/
`Primary Examiner, Art Unit 3724
`25 June 2014
`
`