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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/08/2025 has been entered.
Status of the Claims
This Office Action is in response to the remarks and amendments filed 10/02/2025. The 112(f) rejections set forth in the previous Office Action have been withdrawn in light of the amendments filed. Claims 1-8, and 10-24 remain pending for consideration on their merits in this Office Action.
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:
control part in at least claim 1
A review of the specification show that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
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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.
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 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 1-8, and 10-24 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 1, the term “control part” does not recite sufficient structure in the claim and requires a review of the specification to determine the corresponding structure. However, upon review of the specification, no corresponding structure was found regarding as to what a “control part” precisely is. Rather, the specification merely describes what the control part may control and what it may be configured to do. Furthermore, the disclosed structure in the claims is not sufficient to describe how the control part exacts control. Therefore, claim 1 is 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. Accordingly, all claims depending therefrom are rejected as well.
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 1-8, and 10-24 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 1, Claim limitation “control part” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification merely describes what the control part may control and what it may be configured to do. Furthermore, the disclosed structure in the claims is not sufficient to describe how the control part exacts control. MPEP 2173.05(g) requires the particular structure, materials or steps that accomplish a function be recited to indicate the scope of the subject matter claimed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Allowable Subject Matter
Claims 1-8, and 10-24 allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter:
As per independent Claim 1, the closest relevant prior art, Deandrea et al. (US 20190292329 A1, hereinafter “Deandrea”), Mills (US 20190152180 A1), Lee et al. (KR 101806196 B1, hereinafter “Lee”) Jang et al. (KR 20160026053 A, hereinafter “Jang”), Takamoto et al. (JP 2007246642 A, hereinafter “Takamoto”) and Iida (US 20150044379 A1) does not teach the device as recited, in particular wherein “…the heating module includes a second pipe having a second through hole formed on one side of an outer surface at a position corresponding to the first through hole and configured to surround an outer surface of the first pipe in a jacket structure, and a heating medium supplier configured to cause a heating medium to flow to a space formed between the outer surface of the first pipe and an inner surface of the second pipe,” when added to the other features claimed in independent Claim 1. Specifically, Lee and Jang most closely teach the structure regarding the reactor, the pellet forming part and the control part, however they are silent regarding the heating structure surrounding the pellet forming structure as claimed. Similarly, Deandrea, Mills, Iida and Takamoto all broadly discuss a heating process near the pellet forming part, however none of them teach a similar structure to the heating module as recited in the claims. Also, the prior art of record fails to provide further teachings or motivation to modify any of the aforementioned devices to arrive at the claimed invention.
It would not be obvious to modify the prior art structure to have the apparatus as claimed without improper hindsight. Therefore, claim 1 and all claims depending therefrom are currently allowable.
Claims 1-8, and 10-24 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.
Response to Arguments
On pages 11-12 of the remarks, Applicant argues that the term “control part” is sufficiently described in the specification. Applicant’s arguments have been considered but are not persuasive as the current claim terminology invokes 112(f) interpretation.
Specifically, the specification does not define the control part and what structure it comprises to accomplish its functions in relation to the pellet manufacturing apparatus. Therefore, the claim and all claims depending from are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim 1 recites the limitation “control part” in line 7. The term “part,” being a non-structural term that is a substitute for the term "means," invokes a claim interpretation under the guise of 35 USC § 112(f), which requires a reliance on the corresponding disclosure to provide the limits on the structure, material or act that performs the claimed function. The disclosure must show with reasonable clarity to one skilled in the art that applicant was in possession of the invention as claimed. Possession is shown by describing the claimed invention with all limitations. Here, the control part, including its function, is discussed in at least pages 4-5 and 24-28. However, the corresponding structure that is capable of performing the claimed function (i.e. control an operation) of the reactor and the pellet forming part is not provided in the specification. A mere restatement of the function in the specification without more description of the means that accomplish the function, is a failure to provide adequate written description for a § 112(f) limitation claim interpretation. Because the specification fails to provide an adequate description of a structure for the control part, the boundary of claim is not clearly defined. A claim without clearly defined boundaries is rendered indefinite. Therefore, the claim, and all claims depending therefrom, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
The limitation “control part” in Claim 1 render the claim indefinite. One of ordinary skill in the art at the time of the invention would not understand the scope of the claimed invention when read in light of the specification. The lack of disclosure regarding the limitation "control part” as called for in independent claim 1 creates such an inconsistency between the claims and the description that it prevents a skilled artisan from understanding the scope of the independent claims (MPEP § 2173.03). Therefore the claim, and all claims depending therefrom, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH S MYERS whose telephone number is (571)272-5102. The examiner can normally be reached 8:00-4:00.
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/KEITH STANLEY MYERS/Examiner, Art Unit 3763
/JERRY-DARYL FLETCHER/Supervisory Patent Examiner, Art Unit 3763