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 .
In the amendment filed on 02/26/26, applicants have amended claim 19. The examiner has maintained the 112 and art rejections for the following reasons.
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 1-2,4-15 and 17-19 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. In the amended claim 1, line 17, the requirement that at least one of the first cylinder and the second cylinder including a vacuum port introduces new matter issues. Applicants' specification (see para 0055]) teaches "a vacuum within one or both of the cylinders 104a, 104b". The specification does not positively support "a port" for the vacuum. Different ports and passages are taught in the specification. However, the ports (208a, 208b) and passages 210a, 210b are parts of die 200 (see Fig2A-2C), and the passages defined by the cylinders 104a, 104b and the tube 108 (see para [0056] and Fig 1) are not the port claimed as "a vacuum port" provided on at least one of the first cylinder and the second cylinder. The word "vacuum" is defined in Merriam-Webster dictionary as "emptiness of space" or "a space absolutely devoid of matter" (see the NF action sent on 09/29/25). For the purpose of examination, an empty space created within the cylinders is assumed.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 4-15, 17 and 19 are rejected under 35 U.S.C. 103 as being
unpatentable over Lake (US 6,062,722) in view of JP2004179259A and Kondo (US 3,940,030).
As to claim 1, Lake teaches (see Fig 1-3) a system comprising: a first cylinder
assembly (12, 18, 22) having a first cylinder (reservoir 12) and a first piston (18), the first piston (18) being configured to reciprocally move within the first cylinder; a second cylinder assembly (14, 20, 24) having a second cylinder (reservoir 14) and a second piston (20), the second piston being configured to reciprocally move within the second cylinder; and a passage (17) interconnecting the first cylinder assembly to the second cylinder assembly, the first cylinder, the second cylinder and the passage forming a closed volume (see Fig 1); wherein, in operation, the first cylinder assembly and the second cylinder assembly are configured to alternatingly and repeatedly apply
compression and suction under high pressure to a slurry (mixed components of epoxy
and hardener used in the production of circuit board, see column 1, lines 9-18) within
the first cylinder and the second cylinder to cause the slurry to flow through the passage
in a first flow direction and then back again through the passage in a second flow
direction that is opposite the first flow direction (see Abstract and column 4, lines 3-12),
in response to a reciprocal actuation of the first and second pistons of the first and second cylinders, the slurry is capable of including a solvent, a powder, and a binder (no structure is added to the claimed system by claiming the material content during intended operation), the reciprocal actuation homogenously dispersing the powder and the binder within the solvent. In any event, an epoxy slurry having powder and binder within the solvent is known in the art; for instance, JP'259 teaches (see Machine English Translation para [0019-0022]) a slurry containing a solvent, a powder, and a binder containing epoxy group in manufacturing a circuit board. It would have been obvious before the effective filing date of the claimed invention to include a slurry including a solvent, a powder, and a binder in manufacturing components of the circuit which prevents the occurrence of a shorting in a circuit as taught by JP'447 (see Abstract). As to a device creating a vacuum/ an empty space within the cylinders, a dispenser device provided with a cylinder and a piston creating a vacuum space within the cylinder is known in the art; for instance - Kondo teaches a dispensing device 16 having a cylinder 15 and piston 19 creating a vacuum within the cylinder (see Fig 1 and column 4, lines 44-51). It would have been obvious before the effective filing date of the claimed invention to create a vacuum within the cylinders in Lake to cause suction in
dispensing/withdrawing operation of fluid as taught by Kondo (see column 4, lines 44-56).
As to claims 4-7 and 10-14, the system disclosed by Lake alone or in
combination with TW 932 is capable of using the claimed materials (since no structure
is added to the claimed system and expressions relating the system to contents thereof
during an intended operation are of no significance in determining patentability of the
apparatus claim).
With respect to claim 15, in Lake the diameter of the passage is capable of being
1/16 to ½ inch depending the type of mixing element and the size of the system.
As to claims 8-9, in Lake a cross section in the first flow direction of the passage
(16) is smaller than cross sections of the cylinders in stroke directions of the two pistons
(see Fig 1) and the passage is capable having the claimed diameter. In any event sizing
the diameter of a device/passage is generally recognized as being within the ordinary
level of skill in the art.
Regarding claim 17, in Lake (see Figs 1-2) the first piston (18) and the second
piston (20) are connected to one or more devices (plungers 22, 24) to move the pistons
(18, 20).
As to claim 19, in Lake the diameter of the passage is narrower than the diameter of the first cylinder or the diameter of the second cylinder (see Figs 1-2).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over
Lake (US 6,062,722) in view of JP2004179259A and Kondo (US 3,940,030) as applied
to claim 1 or 17 and further in view of Heaggans et al (US 2019/0084706A1).
As to claim 18, Lake teaches the first piston (18) and the second piston (20) are
connected to one or more devices (plungers 22, 24) to move the pistons (18, 20), but
these one or more devices are not a controlled using a programmable drive in
synchronizing the first and second pistons. However, Heaggans et al teaches (see Figs
2-3) a drive mechanism (208) for the pistons (204) in communication with a controller
230 with a closed-loop system controlling each piston pump based on time, in
mechanical, electrical and other communication with the drive mechanism to operate
the pumping/driving mechanism in synchrony (see para [0043] [0049],0053], [0073]). It
would have been obvious before the effective filing date of the claimed invention to a
programmable drive in synchronizing the first and second pistons in Lake to selectively
engage and disengage the piston pump to provide a desired volume of fluid as taught
by Heaggans et al (see para [0071]). Lake is silent with respect to specific diameter of the passage (of claim 14), and/or comparison of the sizes of the passage and cylinders (regarding claim 19), although Figures 1-2 show a passage having a smaller dimeter than the cylinders. In any event, Heaggans et al teaches sizing of pumping mechanism/cylinder assembly with diameters of the cylinders and length of the manifold (see para [0041], [0055] and [0064]) to attain a turbulent flow. It would have been obvious before the effective filing date of the claimed invention to size the diameter of the passage narrower than the diameter of the first cylinder or the diameter of the second cylinder as desired to control the flow of the fluid in the manifold/passage and into and out of the piston pump/cylinder assembly as taught by Heaggans et al (see para [0050] and [0064]).
Claim 2 is objected to as being dependent upon a rejected base claim, but would
be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject
matter: the subject matter of claims 2 is allowable for the same reasons described in the action sent on 05/27/25.
Response to Arguments
Applicant's arguments filed 02/26/26 have been fully considered but they are not persuasive. Applicants have argued regarding 112 1st rejection the following reasons. Para. [0055] discloses "the slurry 102 can be exposed to a vacuum within one or both of the cylinders 104 a, 104 b (or the third cylinder)." Although the specification does not explicitly disclose "a port," it inherently discloses it. A person of ordinary skill in the art (POSA) would understand that, to have a vacuum within one or both of the cylinders, at least one of the cylinders must have a port for the purpose of generating the vacuum in the cylinder. If there is no port on the cylinder, there is no way to generate a vacuum in the cylinder. Therefore, the specification inherently discloses "at least one of the first cylinder and the second cylinder includes a vacuum port," and the 112(a) rejection should be withdrawn.
Examiner respectfully disagrees with this argument because first, figure 1 in the instant specification is used to describe the creation of vacuum in both cylinders. See para. 55. However, there is no evidence of an opening or outlet that supports the concept of pulling a vacuum by a pump or the like. Second, for example the reference, Kondo, teaches the vacuum is created via the displacement of the piston (19) in similar manner as the instant application wherein the piston is moving within the cylinder.
Applicants further argue “Kondo relates to a dispenser device for use in dispensing liquid contents in a pressurized state from a container, and has no mention of a slurry, let alone the preparation or use of the slurry. Accordingly, the present invention relates to battery, while Kondo relates to a device dispenser. Therefore, the present invention and Kondo are within significantly different fields of endeavor, and thus a POSA would not have been motivated to consider the disclosure of Kondo when seeking to develop a method and devices for preparing a slurry, let alone to combine it with other references”.
In response to applicant's argument that Kondo is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Kondo is cited for the teaching of a device creating a vacuum within the casing via the displacement of the piston. It is noted that JP'259 teaches (see Machine English Translation para [0019-0022]) a slurry containing a solvent, a powder, and a binder containing epoxy group in manufacturing a circuit board.
Applicants further argues “Although Kondo's dispensing device 16 has a cylinder 15 and piston 19 creating a vacuum within the cylinder, there is no teaching or suggestion that the cylinder has a vacuum port”. This argument is not persuasive because as argued above in 112 1st rejection, “a vacuum port” is not supported by the original disclosure of the instant application.
As to claim 19, applicants argue because “it recites "the passage is narrower than the diameter of the first cylinder or the diameter of the second cylinder, "which achieved unexpectedly superior results that were neither taught nor suggested by the cited references. For example, as disclosed in para. [0040] and [0041] of the present application, the mixing is aided further by the narrow diameter of the tube (i.e., the passage) as compared to the diameters of the cylinders. The slurry passing through the passages experiences high shear forces, which resulted in a high mixing efficiency and produces enormous kneading effects. According to the present invention, the mixing efficiency is dependent on the flow speed of the slurry through the passage, the diameter of the passage, and the mixing time. The narrower the diameter of the passage and the higher the flow speed of the slurry through the passage, then the more effective the mixing and kneading”.
As explained in the rejection above Lake meets claim 19’s limitation because in the system disclosed by Lake (see Fig 1) the passage (17) is narrower than the diameter of the first cylinder (12) or the diameter of the second cylinder(10), wherein the system is capable of creating higher flow speed of the components through the passage. In any event, Heaggans et al teaches sizing of pumping mechanism/cylinder assembly with diameters of the cylinders and length of the manifold (see para [0041], [0055] and [0064]) to attain a turbulent flow. It would have been obvious before the effective filing date of the claimed invention to size the diameter of the passage narrower than the diameter of the first cylinder or the diameter of the second cylinder as desired to control the flow of the fluid in the manifold/passage and into and out of the piston pump/cylinder assembly as taught by Heaggans et al (see para [0050] and [0064]).
For at least the reasons described above the examiner maintains the 112 -1st and art rejections of claims 1-2, 4-15 and 17-19 over the references to Lake (US 6,062,722) in view of JP2004179259A and Kondo (US 3,940,030) and/or further in view of Heaggans et al (US 2019/0084706A1).
THIS ACTION IS MADE FINAL. 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 YEWEBDAR T TADESSE whose telephone number is (571)272-1238. The examiner can normally be reached 7.00-3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YEWEBDAR T. TADESSE
Primary Examiner
Art Unit 1717
/YEWEBDAR T TADESSE/
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