www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`15/765,732
`
`04/04/2018
`
`RYOJI INUTSUKA
`
`PIPMM-59631
`
`1021
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`12/26/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`WITTENSCHLAEGER, THOMAS M
`
`3731
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/26/2019
`
`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
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`following e—mail address(es):
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`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`15/765,732
`
`Applicant(s)
`INUTSUKAetaI.
`
`Ofi'ice Act/'0” Summary
`
`Examiner
`THOMAS M
`WITTENSCHLAEGER
`
`Art Unit
`3731
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 4/4/2018.
`[3 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)l:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4)D 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`flis/are pending in the application.
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`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
`
`
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`D Claim(s)s_is/are allowed.
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`Claim(ss)—1_1—0 is/are rejected.
`
`[3 Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`D Claim(s
`* If any claims have been determined aflowable. 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
`
`httpfiwww.”smogovmatentszinit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
`
`Application Papers
`
`10)C] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 4/4/2018 is/are: a). accepted or b)l:] 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:
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`a). All
`
`b)C] Some**
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`c)D None of the:
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`1.. Certified copies of the priority documents have been received.
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`28 Certified copies of the priority documents have been received in Application No.
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`3.[:] 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) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20191219
`
`

`

`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Claim Status
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`2.
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`This Office action is in response to the filing of 4/4/2018. Claims 1—10 are currently
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`pending.
`
`Claim Rejections - 35 USC § 112
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`3.
`
`The following is a quotation of 35 U.S.C.112(b):
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`(b) CONCLUSION.—The specification shall conclude with one or more claims
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`particularly pointing out and distinctly claiming the subject matter which the
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`inventor or a joint inventor regards as the invention.
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`The following is a quotation of 35 U.S.C.112(pre—A|A), second paragraph:
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`The specification shall conclude with one or more claims particularly pointing out
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`and distinctly claiming the subject matter which the applicant regards as his
`invention.
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`4.
`
`Claims 1—10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
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`invention.
`
`

`

`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 3
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`Regarding claim 1, the limitation ”the main mechanical unit the first disposition
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`supports a bottom of a bag with the loading surface, while the bag with a bag mouth facing
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`downward is put on the support and the guide from above" in lines 11—13 is vague and
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`indefinite because it is not clear how the loading surface (a part ofthe support) is capable of
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`supporting a bag while the bag is put on the support. How the loading surface support a bag
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`before it has been put on the loading surface? Furthermore, according to applicant’s
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`specification, the bag is put on the support when the support is in the second disposition, not
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`the first disposition. How can the bag be put on the support in the first disposition?
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`Furthermore, the limitation ”the bag with a bag mouth" lacks sufficient antecedent basis. In
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`order to further prosecution, the limitation has been interpreted to recite ”the main
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`mechanical unit in the first disposition supports a bottom of a bag that comprises a bag mouth
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`with the loading surface, after the bag is put on the support and the guide from above with the
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`mouth of the bag facing downward." Claims 2—10 are rejected based on their dependency from
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`claim 1.
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`Regarding claim 2, the limitation ”the drive unit is configured to move only the support
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`downward" in lines 1 and 2 is indefinite because it is not clear how the drive unit is capable of
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`being configured to move only the support downward when anything that is placed on top of
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`the support will also move downward. In order to further prosecution, the limitation has been
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`interpreted to mean that the drive unit is configured to move only the support and anything
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`supported by the support downward.
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`

`

`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 4
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`Regarding claim 8, the limitation ”the upper end face of the guide" in line 2 lacks
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`sufficient antecedent basis. In order to further prosecution, the limitation has been interpreted
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`to recite ”an upper end face of the guide."
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`Regarding claim 9, the limitation ”the upper end face ofthe guide" in line 2 lacks
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`sufficient antecedent basis. In order to further prosecution, the limitation has been interpreted
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`to recite ”an upper end face of the guide."
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`Claim Rejections - 35 USC § 102
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`5.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C.102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction
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`of the statutory basis for the rejection will not be considered a new ground of rejection if the
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`prior art relied upon, and the rationale supporting the rejection, would be the same under
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`either status.
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`6.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form
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`the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or
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`in public use, on sale or otherwise available to the public before the effective
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`filing date of the claimed invention.
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`7.
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`Claims 1—4 and 6—8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
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`McDermott (US 2615606).
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`

`

`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 5
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`Regarding claim 1, McDermott discloses a bagging apparatus (Fig. 1) comprising: a main
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`mechanical unit including: a support (the assembly of 9, 10, and 12 — Fig. 1) having a loading
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`surface (9 — Fig. 1) formed for placement of a merchandise (col. 2, lines 1-7); and a guide (4 —
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`Fig. 1) disposed around the support and along an outer circumference of the loading surface
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`(see Fig. 1a); and a drive unit (the assembly of 13, 14, 16, and 17 — Fig. 1) to move the support
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`so as to change a disposition of the main mechanical unit from a first disposition (the
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`disposition depicted in Fig. 1) to a second disposition (the disposition when 9 has been
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`depressed, col. 2, lines 40-48), a level ofthe support relative to the guide in the second
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`disposition being lower than the level of the support relative to the guide in the first disposition
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`(9 is depressed to change the disposition from the first disposition to the second disposition,
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`col. 2, lines 40-48), wherein the main mechanical unit in the first disposition supports a bottom
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`of a bag (8 — Fig. 1) that comprises a mouth (the downturned sides of 8 form a mouth — Fig. 1)
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`with the loading surface (col. 2, lines 1-7), after the bag is put on the support and the guide
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`from above with the mouth of the bag facing downward (col. 2, lines 31-37), and the main
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`mechanical unit puts the merchandise into the bag by allowing a side periphery of the bag
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`contiguous to the bottom of the bag to stand upward from the bottom of the bag via the guide
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`by changing the disposition of the main mechanical unit from the first disposition to the second
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`disposition (col. 2, lines 37-48). Note that element 17 is interpreted as a drive element because
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`it is described in col. 2, lines 17—19 as ”a foot lever to facilitate the manipulation of the device."
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`In this case, the foot lever is capable of being pressed down with a foot to lower the support.
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`

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`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`McDermott further discloses:
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`Page 6
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`Claim 2, that the drive unit (the assembly of 13, 14, 16, and 17 — Fig. 1) is configured to
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`move only the support (the assembly of 9, 10, and 12 — Fig. 1) downward in the main
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`mechanical unit so as to change the disposition ofthe main mechanical unit from the first
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`disposition (the disposition depicted in Fig. 1) to the second disposition (the disposition when
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`9 has been depressed, col. 2, lines 40-48). Note that element 12 of the support is directly
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`connected to element 13 of the drive unit and when element 17 ofthe drive unit is pressed
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`down, only elements 9, 10, and 12 will be lowered.
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`Claim 3, that the main mechanical unit further includes a holding mechanism (6 — Fig. 1)
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`to hold the bottom of the bag in place on the loading surface (9 — Fig. 1). Note that elements 6
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`is interpreted as a holding mechanism because the bag is tucked into it, and this holds the bag
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`in position on the loading surface.
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`Claim 4, that the main mechanical unit in the second disposition (the disposition when
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`9 has been depressed) is configured such that a level difference between the loading surface (9
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`— Fig. 1) and an upper end face (the upper edge of 5 — Fig. 1a) of the guide (4 — Fig. 1) is greater
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`than or equal to a total length of the bag in a vertical direction. Note that the claim has not
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`specified which total vertical length of the bag. Since a bag is not rigid, it can be compressed
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`and the total vertical length of the bag can change. In this case, the total length of the bag is
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`interpreted to be the vertical length of the bag before the 9 has been depressed. Figure 1
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`

`

`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 7
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`shows that the level difference is the approximately the same as the height of element 23 and
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`the total vertical length of the bag is less than the height of element 23.
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`Claim 6, that the guide (4 — Fig. 1) is shaped like a tube in which at least a top face forms
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`an opening (see Fig. 1a), and the support (the assembly of 9, 10, and 12 — Fig. 1) is configured
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`to move relative to the guide in a space enclosed with the guide (col. 1, line 48 — col. 2, lines
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`11).
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`Claim 7, that an inner circumference of an upper end face of the guide (4 — Fig. 1) is
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`similar in shape to the outer circumference of the loading surface (9 — Fig. 1 and see Fig. 1a).
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`Claim 8, that an upper end face of the guide (4 — Fig. 1) forms a bend projecting upward.
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`In this case, the upper end face is interpreted to be the surface of 23. As depicted in Fig. 1, at
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`the top of 23, the surface goes from facing outwardly to facing upwardly to facing inwardly.
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`This change of the surface of 23 from facing outwardly to facing upwardly to facing inwardly is
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`interpreted as a bend projecting upward because the surface must bend to go from facing
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`outwardly to facing inwardly and part of the surface connecting the outwardly facing part to
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`the inwardly facing part faces upward.
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`Claim Rejections - 35 USC § 103
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`8.
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`The following is a quotation of 35 U.S.C.103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`

`

`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 8
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`A patent for a claimed invention may not be obtained, notwithstanding that the
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`claimed invention is not identically disclosed as set forth in section 102, if the
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`differences between the claimed invention and the prior art are such that the
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`claimed invention as a whole would have been obvious before the effective filing
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`date ofthe claimed invention to a person having ordinary skill in the art to which
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`the claimed invention pertains. Patentability shall not be negated by the manner
`in which the invention was made.
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`9.
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`Claims 5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over McDermott
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`(US 2615606).
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`Regarding claim 5, McDermott discloses essentially all of the elements of the claimed
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`invention in claim 1.
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`However, McDermott does not disclose that the loading surface is quadrangle but that
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`the loading surface is circular.
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`In this case, the examiner takes the position that one of ordinary skill in the art would
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`recognize that McDermott teaches a circular loading surface simply because the items to be
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`packaged are circular. Clearly a quadrangular item or an item of any other shape would not be
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`as suitably packaged by the bagging apparatus of McDermott since the bagging apparatus of
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`McDermott is designed for circular items. One of ordinary skill in the art would further
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`recognize that a quadrangular item or any item of any other shape would be more efficiently
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`packaged by designing the bagging apparatus to match the shape of the item being packaged.
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`This can be achieved by matching the shape of the loading surface and the guide to the shape
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`of the item to be packaged and it would have been a routine matter to simply change the shape
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`of the loading surface and the guide. It is further noted that changing the shape ofthe loading
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`surface and the guide to match the particular shape of an item would not change the principle
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`of operation of the bagging apparatus of McDermott.
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`

`

`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 9
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`Therefore, it would have been obvious to one of ordinary skill in the art, before the
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`effective filing date ofthe applicant’s claimed invention, to have modified the loading surface of
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`McDermott to be any shape including quadrangular in order to allow the bagging apparatus to
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`sufficiently package items of any shape including quadrangular.
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`Regarding claim 9, McDermott discloses essentially all of the elements of the claimed
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`invention in claim 1.
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`However, McDermott does not expressly disclose that an upper end face of the guide
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`has a lower coefficient of friction than a coefficient of friction of the loading surface.
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`In this case, the examiner takes Official Notice that it is old and well—known in the art to
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`apply friction enhancing features to a surface where items are placed in order to prevent the
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`items from slipping off of the surface.
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`Therefore, it would have been obvious to one of ordinary skill in the art, before the
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`effective filing date ofthe applicant’s claimed invention, to have modified the loading surface of
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`McDermott to comprise a friction enhancing feature in order to prevent items from slipping off
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`of the loading surface. Note that this would result in the loading surface having a higher
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`coefficient of friction than the upper end face ofthe guide since the coefficient of the loading
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`surface would be high enough to prevent relative sliding motion between the loading surface
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`and items on the loading surface but a similar coefficient of friction on the guide member
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`would inhibit the support from sliding relative to the guide member and decrease the usability
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`of the bagging apparatus.
`
`

`

`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 10
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`10.
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`Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over McDermott (US
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`2615606) in view of Dumont (US 5641039).
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`Regarding claim 10, McDermott discloses essentially all of the elements of the claimed
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`invention in claim 1.
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`However, McDermott does not expressly disclose a bag supply mechanism.
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`Dumont teaches a bagging apparatus (10 — Fig. 1) comprising a bag supply mechanism
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`(50 — Fig. 1) in order to automatically supply bags to a loading area and reduce the effort
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`required to operate the bagging apparatus.
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`Therefore, it would have been obvious to one of ordinary skill in the art, before the
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`effective filing date ofthe applicant’s claimed invention, to have modified the bagging
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`apparatus of McDermott to comprise a bag supply mechanism as suggested by Dumont in order
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`to automatically supply bags to the loading surface and reduce the effort required to operate
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`the bagging apparatus. Note that this would result in a bag supply mechanism that puts a bag
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`with its mouth facing downward on the loading surface in the first disposition since McDermott
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`discloses in col. 2, lines 30—36, that this is how a bag is placed on the bagging apparatus. Further
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`note that the test for obviousness is not whether the features of a secondary reference may be
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`bodily incorporated into the structure of the primary reference; nor is it that the claimed
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`invention must be expressly suggested in any one or all of the references. Rather, the test is
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`what the combined teachings of the references would have suggested to those of ordinary skill
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`in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Dumont is
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`simply relied upon for the teaching of using a bag supply mechanism to supply bags to a loading
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`area. Dumont is not relied upon for the structure ofthe bag supply mechanism.
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`

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`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 11
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`Conclusion
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`11.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is
`
`(571)272—7012. The examiner can normally be reached on MON—FRI: 9:00—5:00.
`
`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, Stephen Gerrity can be reached on 571—272—4460. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
`
`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 https://ppair—my.uspto.gov/pair/PrivatePair. Should you have questions on access
`
`to the Private PAIR system, contact the Electronic Business Center (EBC) at 866—217—9197(toll—
`
`free). Ifyou would like assistance from a USPTO Customer Service Representative or access to
`
`the automated information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`

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`Application/Control Number: 15/765,732
`Art Unit: 3731
`
`Page 12
`
`/THOMAS M WITTENSCHLAEGER/
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`Examiner, Art Unit 3731
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`12/19/2019
`
`