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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`15/577,426
`
`11/28/2017
`
`Hiroshi Kitagawa
`
`042715-5189-US
`
`2942
`
`MORGAN, LEWIS & BOCKIUSLLP (PH)
`1701 MARKET STREET
`PHILADELPHIA,PA 19103-2921
`
`DURHAM,NATHAN E
`
`ART UNIT
`
`3732
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/10/2022
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`judith.troilo @ morganlewis.com
`phpatentcorrespondence@ morganlewis.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`15/577 ,426
`Kitagawaetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`NATHAN E DURHAM
`3732
`Yes
`
`
`
`-- The MAILING DATEofthis 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). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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}.
`Any reply 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).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 3/10/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1,3-5 and 7-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`(J Claim(s)__ is/are allowed.
`Claim(s) 1,3-4 and 7-8 is/are rejected.
`Claim(s) 5 is/are objectedto.
`1) Claim(s
`are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)2) The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 11/28/2017 is/are: a) 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:
`c)() None ofthe:
`b)( Some**
`a) All
`1.4) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been received in 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) ([] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220505
`
`

`

`Application/Control Number: 15/577,426
`Art Unit: 3732
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`Response to Amendment and Arguments
`
`Applicant's amendment and corresponding arguments, filed 3/10/2022, have
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`been reviewed and considered. Claim 1 has been amendedand claims 2 and 6 have
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`been previously cancelled. Therefore, claims 1, 3-5 and 7-8 are currently pending.
`
`Applicant's amendmentto independent claim 1
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`is considered sufficient in overcoming
`
`the prior art rejection(s) of the previous Office Action. Accordingly, applicant's
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`arguments have been considered but are moot because the new ground of rejection
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`does notrely on any reference applied in the prior rejection of record for any teaching or
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`matter specifically challenged in the argument. This Office Action is considered a Final
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`Rejection.
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`Information Disclosure Statement
`
`Note that the applicant hasfiled an Information Disclosure Statement (IDS) on
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`each of 12/1/2021, 1/19/2022, 2/24/2022 and 2/28/2022 (4 total). Each of these
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`Information Disclosure Statements include the same singular foreign document number,
`
`JP 1996151025. However, the IDSfiled 12/1/2021 fails to comply with 37 CFR
`
`1.98(a)(2), which requires a legible copy of each cited foreign patent document; each
`
`

`

`Application/Control Number: 15/577,426
`Art Unit: 3732
`
`Page 3
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`non-patentliterature publication or that portion which causedit to be listed; and all other
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`information or that portion which causedit to be listed.
`
`It has been placed in the
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`application file, but the information referred to therein has not been considered. Note
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`that a Non-Patent Literature (NPL) document has been provided on 12/01/2021 which
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`appearsto not pertain to the current application. Additionally, note that the Information
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`Disclosure Statementsfiled 1/19/2022, 2/24/2022 and 2/28/2022 each contain the same
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`foreign documents number; however the “Name of Patentee or Applicant of cited
`
`Documents’is different for each.
`
`It is assumed that the “Name of Patentee or Applicant
`
`of cited Documents’for the IDS filed 2/28/2022 is correct. Accordingly, each of the
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`other Information Disclosure Statements have been placed in the application file, but the
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`information referred to therein has not been considered asto the merits. Applicant is
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`advised that the date of any re-submission of any item of information contained in this
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`information disclosure statement or the submission of any missing element(s) will be the
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`date of submission for purposes of determining compliance with the requirements based
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`on the time offiling the statement, including all certification requirements for statements
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`under 37 CFR 1.97(e). See MPEP § 609.05(a).
`
`Claim Interpretation
`
`Note that applicant’s claims 1, 3-5 and 7-8 are full of process steps and the
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`functional use of the processing apparatus and/or components thereof. The applicant
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`has not claimed that these process steps are performed by a control system of any kind.
`
`Note that a recitation of the intended use of the claimed invention must result in a
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`structural difference between the claimed invention and the prior art in order to
`
`

`

`Application/Control Number: 15/577,426
`Art Unit: 3732
`
`Page 4
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`patentably distinguish the claimed invention from the prior art.
`
`If the prior art structure is
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`capable of performing the intended use, then it meets the claim.
`
`Claim Rejections - 35 USC § 102
`
`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 madein this Office action:
`
`A personshall 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 effectivefiling date of the claimed
`invention.
`
`Claim(s) 1, 3, 4 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by HAKKO Shyoukai Co. et al (JP 1996151025). HAKKO wasdisclosed on
`
`applicant’s IDS dated 02/28/2022. Note that HAKKOis rejecting the claims in two
`
`different ways as shown by the 1% and 2"¢ Interpretations below.
`
`Regarding claim 1, HAKKO discloses a processing apparatus for unfurling or
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`folding a processing subject (“towel”), comprising: a first retaining device and a second
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`retaining device (1° Interpretation: 1, 1 of A or A, A; note that a plurality of gripping
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`chucks A could be provided as disclosed at end of para 0007; Figures 1-6) (2"
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`Interpretation: B, G; Figures 1 and 9-12) that are capable of moving within a first area
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`and retaining the processing subject; a carrying device (1*' Interpretation: E, E; Figures
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`1 and 5-6) (2Interpretation: F; Figures 1 and 8-12) disposed within the first area so as
`
`to be capable of carrying the processing subject; and a third retaining device (1*
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`Interpretation: B; figures 1 and 5-7) (2"9 Interpretation: C; figures 1 and 12-13) thatis
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`capable of moving within a second area disposed below the first area so as to overlap
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`

`

`Application/Control Number: 15/577,426
`Art Unit: 3732
`
`Page 5
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`the first area, and retaining the processing subject below the carrying device. HAKKO
`
`discloses wherein the third retaining device (1% Interpretation: B) (2°? Interpretation: C)
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`being functionally capable of moving below the carrying device (1° Interpretation: E, E)
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`(2"¢ Interpretation: F) and retaining the processing subject below the carrying device in
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`a condition where the processing subject is retained bythe first retaining device and/or
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`the second retaining device and hangs down from the carrying device (1°! Interpretation:
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`Fig. 6) (2Interpretation: Figures 12-13). HAKKO further disclosesthe first retaining
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`device and/or the secondretaining device (1% Interpretation: 1, 1 of A or A, A) (2%
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`Interpretation: B, G) retaining the processing subject (“towel”) being functionally capable
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`of releasing the processing subject at a stage wherethe third retaining device (1*
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`Interpretation: B) (2" Interpretation: C) retains the processing subject below the
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`carrying device (1% Interpretation: Figures 6-7) (2"¢ Interpretation: Figures 12-13).
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`The claim language of applicant’s claims 3 and 4 are considered purely
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`functional language containing no further limiting structure. Since HAKKOdisclosesall
`
`the structure as claimed by the applicant, HAKKOis considered fully capable of
`
`providing the function as claimed by the applicant. For support, please note HAKKO
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`discloses the movement requirements for such processes as shownbythe arrows of
`
`the figures, especially noting figure 1.
`
`Regarding claim 8, HAKKOdisclosesthe first or second retaining device and/or
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`the carrying device being functionally capable of performing a relative movement so as
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`to approach eachother in the up-downdirection while the first or second retaining
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`device retains the processing subject (note the up-down movement abilities of the
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`components A, B and C of HAKKO as shownbythe arrowswithin figure 1).
`
`

`

`Application/Control Number: 15/577,426
`Art Unit: 3732
`
`Page 6
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`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections setforth 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.
`
`Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAKKO
`
`Shyoukai Co. et al (JP 1996151025).
`
`HAKKO discloses a processing apparatus as discussed above. However,
`
`HAKKOfails to disclose the carrying device having the ability to rotate. Note that the
`
`carrying device of HAKKOis a roller (1% Interpretation: E) (2™ Interpretation: F) in a
`
`clamped arrangement that is made from stainless steel to allow a processing subject to
`
`be pulled therethrough.
`
`It is not clear from the translation of HAKKOif either roller has
`
`the ability to rotate or not. Regardless, it is considered old and knownin the art fora
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`roller in a clamped arrangement, such as disclosed by HAKKO, to rotate (note the name
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`“roller’) in order to allow a processing subject to be more easily pulled therethrough.
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`Accordingly, it would have been obvious to a person with ordinary skill in the art at the
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`time the invention was made to have providedthe roller (i.e. carrying device) of HAKKO
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`to rotate and thus have the ability to perform the claimed function because suchis
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`considered old and knownin the art in order to allow the processing subject(i.e. towel)
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`to be more easily pulled therethrough when desired.
`
`

`

`Application/Control Number: 15/577,426
`Art Unit: 3732
`
`Page 7
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`Allowable Subject Matter
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`Claim 5 is objected to as being dependent upon a rejected base claim, but would
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`be allowable if rewritten in independent form including all of the limitations of the base
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`claim and any intervening claims. Note that the third retaining device of HAKKO does
`
`not disclose two pairs of gripping portions as claimed.
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`Conclusion
`
`Applicant's submission of an information disclosure statement under 37 CFR
`
`1.97(c) with the fee set forth in 37 CFR 1.17(p) on 2/28/2022 prompted the new
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`ground(s) of rejection presented in this Office action. Accordingly, THIS ACTIONIS
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`MADE FINAL. See MPEP § 609.04(b). 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 shortenedstatutory period for reply to this final action is set to expire THREE
`
`
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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-MONTH shortenedstatutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 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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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to NATHAN E DURHAM whosetelephone number is
`
`

`

`Application/Control Number: 15/577,426
`Art Unit: 3732
`
`Page 8
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`(571)272-8642. The examiner can normally be reached 8:00 am - 4:00 pm, Monday-
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`Friday.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO AutomatedInterview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Alissa J Tompkins can be reached on 571-272-3425. 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:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling 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.
`
`NED
`
`/NATHAN E DURHAM/
`Primary Examiner, Art Unit 3732
`
`