`
`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.
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`13/533,074
`
`
`
`
` FILING DATE
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`06/26/2012
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`Kevin L. Corcoran
`
`ELL-125
`
`6054
`
`Morland C. Fischer
`Suite 1300
`2030 MainStreet
`IvineCA 92614
`
`CHOI, STEPHEN
`
`3724
`
`11/21/2014
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`

`

` Attachment(s)
`
`Disposition of Claims*
`5)KX] Claim(s) 1-5 and 13-16 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`5a) Of the above claim(s) 1-5 is/are withdrawn from consideration.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) Claim(s) 13-16 is/are rejected.
`8)L] Claim(s)____is/are objectedto.
`
`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
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`parepating intellectual property office for the corresponding application. For more information, please see
`or send an inquiry to PPHieedback@uspto.qoy.
`
`Application Papers
`10)L] The specification is objected to by the Examiner.
`11)] The drawing(s)filed on 6/26/12 is/are: a)L_] accepted or b)X] 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.
`
`
`
`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 9/19/2014.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)X] This action is FINAL.
`2b)L] 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.
`
`3) CT] Interview Summary (PTO-413)
`1) CT] Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`:
`.
`4 Ol Other:
`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
`
`Part of Paper No./Mail Date 20141118
`
`

`

`Application/Control Number: 13/533,074
`Art Unit: 3724
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`Page 2
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`1.
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`The present application is being examined underthe pre-AlA first to invent
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`provisions.
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`2.
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`The text of those sections of Title 35, U.S. Code not includedin this action can
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`be found in a prior Office action.
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`Drawings
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`3.
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`The drawings are objected to under 37 CFR 1.83(a). The drawings must show
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`every feature of the invention specified in the claims. Therefore, the roller press must
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`be shownor the feature(s) canceled from the claim(s). No new matter should be
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`entered.
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`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in
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`reply to the Office action to avoid abandonmentof the application. Any amended
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`replacement drawing sheet should includeall of the figures appearing on the immediate
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`prior version of the sheet, evenif only one figure is being amended. The figure orfigure
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`number of an amended drawing should not be labeled as “amended.”If a drawing figure
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`is to be canceled, the appropriate figure must be removedfrom the replacement sheet,
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`and where necessary, the remaining figures must be renumbered and appropriate
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`changes madeto the brief description of the several views of the drawings for
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`consistency. Additional replacement sheets may be necessary to show the renumbering
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`of the remaining figures. Each drawing sheet submitted after the filing date of an
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`application must be labeled in the top margin as either “Replacement Sheet” or “New
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`Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner,
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`

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`Application/Control Number: 13/533,074
`Art Unit: 3724
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`Page 3
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`the applicant will be notified and informed of any required corrective action in the next
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`Office action. The objection to the drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 112
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`4.
`
`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-AlA), 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.
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`5.
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`Claims 13-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AlA the
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`applicant regards as the invention.
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`In claim 13, it is not clear what step is set forth by “placing the first face ofthe flat
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`outer border ofthe said first die on the sheet material”.
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`It appears that a cutting edge
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`projects from the first face which is placed on the sheet material rather than thefirst
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`face.
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`Claim Rejections - 35 USC § 102
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`6.
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`Claim 13, as best understood, is rejected under pre-AlA 35 U.S.C. 102b as being
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`anticipated by Hagmann (US 4,796,501).
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`Hagmann disclosesall the positively recited steps of the invention including a
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`method for cutting out, by means of a first die (e.g., 41) , a shapethat is printed on a
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`sheet material (e.g., photograph), wherein the die includes an inside opening (e.g., at
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`

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`Application/Control Number: 13/533,074
`Art Unit: 3724
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`Page 4
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`40) that corresponds to the shapeto be cut from the sheet material, a flat outside border
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`having first and opposite faces (e.g., at 41) that surround the inside opening (é.g.,
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`Figure 3), and a cutting edge (e.g., at 41) that projects from the first face of the flat
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`outside border, such that the cutting edge surroundsthe inside openingofthe first die
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`and corresponds exactly with the shape that is printed on the sheet material and none
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`of the flat outside border of the die extendsinto the inside opening of the die past the
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`interface of the cutting edge with the first face of the flat outer border (e.g., Figure 3),
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`the method comprising the steps of locating the shape printed on the sheet material to
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`be cut therefrom (e.g., column 2, line 57), placing the first face of the flat outer border of
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`the first die on the sheet material and looking through the inside openingofthefirst die
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`so that the shapeprinted on the sheet material is located entirely within the inside
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`opening ofthe first die (e.g., column 2, lines 63-68) and the cutting edge which projects
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`from the first face of the flat outside border is automatically registered so astolie
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`against the sheet material and surround the shapeto be cut therefrom (e.g., column 4,
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`lines 2-6), and applying a force to the opposite face of the flat outside borderofthefirst
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`die for pushing the cutting edge through the sheet material to cut the shape outwardly
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`therefrom (e.g., via 3).
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`Claim Rejections - 35 USC § 103
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`7.
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`Claims 14-15, as best understood, are rejected under pre-AlA 35 U.S.C. 103(a)
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`as being unpatentable over Hagmann in view of applicant's admitted prior art (hereafter
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`APA).
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`

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`Application/Control Number: 13/533,074
`Art Unit: 3724
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`Page 5
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`Regarding claim 14, Hagmann discloses the invention substantially as
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`claimed exceptfor a roller press. APA teachesthat a roller press is an old and well
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`known mechanism for pushing cutting edges to make die cuts (€.g., paragraph
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`[0002] of the applicant’s specification).
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`It would have been obvious to one having
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`ordinary skill in the art at the time the invention was made to employaroller press as
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`taught by APA on the method of Hagmann asanalternative mechanism for
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`operating a die press. Regarding claim 15, Hagmann teaches the same die as
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`claimed.
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`It is noted that the die itself does not depend on the process of making the
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`die and there appears to be no evidenceestablishing an unobvious difference
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`between the claimed die formed by chemically etching a flat piece of metal and the
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`die of Hagmann formed by undisclosed process. However, APA also teachesthat a
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`chemical-etched die is old and well known (e.g., paragraph [0004] of the applicant's
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`specification).
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`It would have been obvious to one having ordinary skill in the art at
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`the time the invention was madeto form the first die of Hagmann by chemically
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`etching a flat piece of metal as taught by APA.
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`8.
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`Claim 16, as best understood, is rejected under pre-AlA 35 U.S.C. 103(a) as
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`being unpatentable over Hagmann in view of APA, and further in view of Eichenberg
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`(US 5,255,586).
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`Regarding claim 16, the modified method of Hagmann fails to teach a second
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`die that can be nested within and spaced from thefirst die. However, Eichenberg
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`teachesthatit is well knownin the art to produce diesofdifferent sizes.
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`It would
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`have been obvious to one having ordinary skill in the art at the time the invention
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`

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`Application/Control Number: 13/533,074
`Art Unit: 3724
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`Page 6
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`was madeto provide a second die that has smaller size than the first ide so that the
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`second die can be nested within and spacedfrom thefirst die as taught by
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`Eichenberg on the device of Hagmann in order to produce different size products
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`and easeof storing the different size dies. Furthermore, the modified method of
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`Hagmann teaches the same seconddie as claimed.
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`It is noted that the die itself
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`does not depend on the process of making the die and there appears to be no
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`evidenceestablishing an unobvious difference between the claimed die formed by
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`chemically etching a flat piece of metal and the die of the modified method Hagmann
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`formed by undisclosed process. However, APA also teachesthat a chemical-etched
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`die is old and well known(e.g., paragraph [0004] of the applicant’s specification).
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`It
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`would have been obvious to one having ordinary skill in the art at the time the
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`invention was madeto form the second die of the modified method of Hagmann by
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`chemically etching a flat piece of metal as taught by APA.
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`9.
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`Applicant's argumentsfiled 19 September 2014 have beenfully considered but
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`Response to Arguments
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`they are not persuasive.
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`Applicants contend that Hagmann fails to teach the cutting edge thatwill lie
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`against a sheet material as claimed.
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`The examiner respectfully disagrees. The claim does not require the cutting
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`edge being placed against the sheet material prior to the step of applying the force to
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`the opposite sides.
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`It merely requires the cutting edge to be placed against the sheet
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`

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`Application/Control Number: 13/533,074
`Art Unit: 3724
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`Page 7
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`material so as to surround the shape to be cut. As set forth above, Hagmann does
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`teach the step of the cutting edge automatically registered so asto lie against the sheet
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`material as claimed.
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`Conclusion
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`10.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`
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`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
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`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTHshortenedstatutory period, then the
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`shortenedstatutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuantto 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however,will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date ofthis final action.
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`11.=Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Stephen Choi whose telephone numberis (571)272-
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`4504. The examiner can normally be reached on Monday-Friday 7:00-3:30.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Edward F. Landrum can be reached on 571-272-5567. The fax phone
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`numberfor the organization wherethis application or proceeding is assignedis 571-
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`273-8300.
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`

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`Application/Control Number: 13/533,074
`Art Unit: 3724
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`Page 8
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`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
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`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Stephen Choi/
`Primary Examiner, Art Unit 3724
`18 November 2014
`
`