Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21, 28-32, and 35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 21, the limitation “such that the cover piece and the lower cone piece are free of the heat emitting layer” is not supported by the specification.
The specification recites “the cover piece 323 that is a piece located on an outermost side and the lower cone piece 322 located on an innermost side may be parts, in which the second heat emitting layer 321 is not formed” (paragraph 152) and “lower cone piece 322…body pieces 3241-3243…cover piece 323…disposed in a sequence thereof from the center point of the second packaging material body part 320 radially outwards” (paragraph 154). Figure 18 shows cover piece 323, heat emitting layer 321, and lower cone piece 323.
One of ordinary skill reading Applicant’s disclosure would expect the cover piece, heat emitting layer, and lower cone piece of the packaging body part to be attached to each other by overlapping portions thereof, thereby obtaining the “disposed sequentially along a radial direction of the packaging material body part” recited in claim 21. However, the limitation “free of the heat emitting layer” indicates that the pieces do not contact or otherwise interface with the heat emitting layer at all. Thus, the cover piece and the lower cone piece of the claimed packaging body part would not be considered to be “free of the heat emitting layer” since said pieces are necessarily in overlapping contact with said layer.
Claims 28-32 and 35 are rejected by virtue of their dependence on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21, 28-32, and 35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 21, the limitation “the cover piece and the lower cone piece are free of the heat emitting layer” renders the claim indefinite since the limitation appears to contradict the structure of the packaging body part recited earlier in the claim.
As stated in the rejection above, the cover piece and lower cone piece appear to require an overlapping structure with the heat emitting layer to obtain the “disposed sequentially along a radial direction” feature. The limitation “free of” indicates to one of ordinary skill that the pieces do not associate with the heat emitting layer at all. Since the overlapping portions of the respective pieces are in contact with the heat emitting layer, it is unclear how said pieces are also “free of the heat emitting layer”.
MPEP 2173.06 II. recites “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art.”
Since the structure of the packaging material body part cannot be determined based on contradicting limitations as explained above, a prior art rejection cannot be applied.
Claims 28-32 and 35 are rejected by virtue of their dependence on a rejected base claim.
Response to Arguments
The amendments to claim 21 necessitated new grounds of rejection under 35 USC 112(a) new matter and 112(b) indefinite.
Regarding application of the prior art, one of ordinary skill in the art would not be able to determine the proper interpretation of the limitation “the cover piece and the lower cone piece are free of the heat emitting layer” as explained above, and the resulting structure of the packaging body part is unclear. Therefore, the prior art cannot be applied at this time to reject independent claim 21.
MPEP 2173.06 II. recites “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art.”
Applicant’s arguments against Fink, Chung, JP ‘168, Mill, Fitzwater, and Thurk have been fully considered, but are directed to the amended limitations. The prior art cannot be applied at this time due to the issues raised above.
Applicant’s argument against the dependent claims is not persuasive for the same reasons stated above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cole et al. (US 8,063,344 B2) teaches a microwave energy interactive food package (abstract) comprising microwave interactive element 406 attached to insulating material 410 of wrapper 404 (figure 4A; column 14 lines 38-55). Portions of the wrapper are shown to be “free of” interactive element 406.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/B.K/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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