DETAILED ACTION
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
Claims 1, 5 and 17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/281,333 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantially the same invention with the claims of this instant application having a broader scope (i.e. without the limitation of “wherein said gripping means comprise at least one blade element adapted to cut said portion (P) from said stuffed cheese (S)”).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore,
(1) Claims 1 and 17-18 recites “at least one mutual movement unit (20)
However, fig.2 shows the movement unit (20 or 22b pointed at the movement unit) that is align with gripping means (6) and adjacent to (3) with respect to both cross sectional view or top view. Examiner did not see as to how the movement unit (22 pointed at the movement unit) is between 3 and 6 if 6 is align with 22b. As best understood, 3 and 6 forms a gap therebetween, and 20 is above 3 and 6.
(2) Claims 1 and 17-18 recites “at least one mutual movement assembly (21)
However, fig.1 shows 21 is at one side of 6 and 7. As best understood 6 and 7 forms a gap therebetween, and 21 is above both 6 and 7.
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“supporting means” in claims 1 and 17-18.
“gripping means” in claims 1 and 17-18.
“filling means” in claims 1 and 17-18.
“rotational means” in claim 6.
“cleaning means” in claims 16 and 18.
“said mutual movement unit is adapted to move at least one of either supporting means or said gripping means” in claim 23.
“said mutual movement assembly is adapted to move at least one of either said gripping means or said filing means” in claim 25.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
“supporting means” (claims 1 and 17-18) is interpreted as “at least one container element 5 and supporting plane 4, the container element is a cup” ([0035-0039] of instant publication application).
“gripping means” (claims 1 and 17-18) is interpreted as “at least one gripping frame 8 and at least one diaphragm device 9” ([0049] of instant publication application).
“filling means” (claims 1 and 17-18) is interpreted as “at least one filling frame 15 and at least one injector device 16”.
“rotational means” (claim 6) is interpreted as “at least one actuating body 14”
“cleaning means” (claims 16 and 18) is interpreted as “at least one delivering element 29 for each diaphragm device 9, a dispensing element 30 for each container element 5” ([0149-0150 and 0157-0160] of instant publication application).
“said mutual movement unit” (claim 23) is interpreted as “a driving unit 22 operationally connected to the gripping frame 8 and a guidance unit 23 associated with the base frame 2 and extending along the axis of travel A1. The driving unit 22 comprises a rack-and-pinion element 22a, associated with the gripping frame 8, substantially parallel to the guidance unit 23, and an actuating device 22b, of the type of an electric motor, connected to the rack-and-pinion element itself and adapted to move the gripping frame 8 on the guidance unit 23” ([0087 and 0089] of instant publication application).
“said mutual movement assembly” (claim 25) is interpreted as “[0094] The mutual movement assembly 21 comprises a motor assembly 24 operationally connected to the filling frame 15 and a guidance assembly 25 associated with the base frame 2 and extending along the axis of sliding A2. [0095] The filling frame 15 is associated with the guidance assembly 25 in a sliding manner. [0096] The motor assembly 24 comprises at least one rack-and-pinion body 24a, associated with the filling frame 15, which is substantially parallel to the guidance assembly 25, and an actuating element 24b, of the type of an electric motor, connected to the rack-and-pinion body itself and adapted to move the filling frame 15 on the guidance assembly 25” ([0094, 0095 and 0096] of instant publication application).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 1, 5, 7-15 and 17-25 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.
Claims 1 and 17-18 recite “at least one mutual movement unit (20) said supporting means (3) and said gripping means (6). Examiner suggest to either incorporate the structural details with respect to at least mutual movement unit or recites functional language in relation to the at least one mutual movement unit to overcome this 112b.
Claims 1 and 17-18 recite “at least one mutual movement assembly (21) either incorporate the structural details with respect to “at least one mutual movement assembly (21)” in relation to said gripping means (6) and said filling means (7) or recites functional language in relation to at least one mutual movement assembly to overcome this 112b.
Claim 7 recites “The equipment (1) according to claim 6”. However, claim 7 depend on claim cancelled claim 6.
Claim 24 recites “a driving unit”. The driving unit does not meet the 3-prong analysis (hence, i.e., the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function) so that it does not invoke 35 USC 112f. Then, it is unclear what structure constitute “a driving unit”.
Response to Arguments
Applicant's arguments filed on 11/13/2025 have been fully considered but they are not persuasive.
Applicant states “Applicant respectfully acknowledges the provisional nonstatutory double patenting rejection of claims 1-6 over claims 1-5 of copending Application No. 18/281,333. To overcome this rejection, Applicant will file a terminal disclaimer in compliance with 37 CFR 1.321(c) with respect to copending Application No. 18/281,333 upon allowance of the present application. Since this is a provisional rejection based on a pending application that has not yet issued as a patent, Applicant respectfully requests that this rejection be withdrawn upon filing of the terminal disclaimer when appropriate.”
In response, examiner suggest to file a terminal disclaimer in order to overcome the rejection above. The double patenting rejections is maintained.
With respect to claim objections, 35 USC 112b and 35 USC 102 rejections have been withdrawn. However, amendment to claims changed the scope of invention and introduced new 35 USC 112 issues.
Allowable Subject Matter
The allowability cannot be determined with respect to claims 1, 5 and 17 due to double patenting rejections.
Claims 7-15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 18-25 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIMMY CHOU whose telephone number is (571)270-7107. The examiner can normally be reached Mon-Friday.
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, Helena Kosanovic can be reached at (571) 272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIMMY CHOU/Primary Examiner, Art Unit 3761