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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 15. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 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 1-10 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.
Claim 1 recites the limitation "the precoat”. There is insufficient antecedent basis for this limitation in the claim. This term has not previously been defined. All dependent claims are rejected as well.
Claim 2 recites the limitation "coating unit”. There is insufficient antecedent basis for this limitation in the claim. This term has previously been defined. It is not clear if it refers to the same or different coating unit.
Claim 7 recites the limitation "coating unit”. There is insufficient antecedent basis for this limitation in the claim. This term has previously been defined. It is not clear if it refers to the same or different coating unit.
Claim 7 recites the limitation "the rotation shaft”. There is insufficient antecedent basis for this limitation in the claim. This term has not previously been defined.
Claim 8 recites the limitation "the filtering precoat”. There is insufficient antecedent basis for this limitation in the claim. This term has not previously been defined. The term “precoat” has previously been defined. It is not clear if this is the same precoat.
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 applies to the following limitations: “means of automatic displacement of the rotary filter” (claim 2; claim 7); “means for detection of the thickness of the precoat” (claim 3); “means of agitation” (claim 5); “doctoring means” (claim 8). The limitations are interpreted in light of the instant specification as: “means of automatic displacement of the rotary filter” (first and second pneumatic jack connected to rotation shaft, [0016]); “means for detection of the thickness of the precoat” (sensor, [0025], [0034]); “means of agitation” (agitator, Figure 1, 22, [0029]); and “doctoring means” (doctor blade, [0024], [0033]).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-6, and 8-9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by FR1171842.
It is noted that claims 1-10 are directed to equipment, which does not clearly set forth the statutory category to which the invention belongs to. It has been determined that the claims are directed to an apparatus and the appropriate principles for interpreting claims for that particular category of invention have been applied.
A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Regarding limitations recited in the claims which are directed to a manner of operating disclosed equipment, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). This applies to the following limitations: “for filtration of a suspension” (claim 1); “for coating the rotary filter with the precoat” (claim 1); “for a suspension which will form the precoat” (claim 4); “adapted to allow the circulation of the suspension used for the preparation of the precoat between the vessel of the preparation unit and the vessel of the coating unit and vice versa” (claim 6); “adapted to allow a translatory displacement of the rotary filter respectively along a vertical axis perpendicular to its rotation shaft and a long a horizontal axis perpendicular to its rotation shaft” (claim 7); “for filtering precoat” (claim 8).
In regard to claim 1, ‘842 teaches equipment (Figure 1-2, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85); capable of filtering a suspension. ‘842 teaches a filtration unit (Figure 1-2, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85). ‘842 teaches a rotary filter (Figure 1, drum filter 1, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85). ‘842 teaches a coating unit (Figure 1, box 21, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85); capable of coating the rotary filter with the precoat. ‘842 teaches said coating unit is independent of the filtration unit (Figure 1, drum filter 1, box 21, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85).
In regard to claim 3, ‘842 teaches the coating unit and the filtration unit each comprise a vessel adapted to house said rotary filter longitudinally as well as means for detection of the thickness of the precoat covering the rotary filter (Figure 1, Figure 3, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85; page 3, lines 86-95).
In regard to claim 4, ‘842 teaches a preparation unit for suspension which will form the precoat (Figure 1, mixing bin 16’, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85). ‘842 teaches said preparation unit being independent of said filtration unit (Figure 1, drum filter 1, mixing box 21, mixing bin 16’, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85).
In regard to claim 5, ‘842 teaches the preparation unit comprises a vessel provided with means of agitation and connected to said coating unit by a fluidic circuit (Figure 1, buckets 9, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85).
In regard to claim 6, ‘842 teaches the fluidic circuit comprises a feed line and a drainage line connecting the vessel of the preparation unit for a suspension to the vessel of the coating unit each of the lines being connected to a pump (Figure 1, drum filter 1, mixing box 21, mixing bin 16’, pump 22, conduit 26, conduit 23, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85); capable of allowing the circulation of the suspension used for the preparation of the precoat between the vessel of the preparation and the vessel of the coating unit and vice versa.
In regard to claim 8, ‘842 teaches the filtration unit is provided with a doctoring means for the filtering precoat coating the rotary filter forming a single piece with the vessel to which is belongs (Figure 3, pg 3, lines 86-95).
In regard to claim 9, ‘842 teaches the vessel of the filtration unit is comprised of an entry orifice for the suspension being filtered (Figure 1, inlet tube 2, drum filter 1, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over FR1171842, as noted above.
In regard to claim 10, ‘842 teaches the limitations as noted above. Further, ‘842 teaches the entry orifice is connected to an inlet line for the suspension being filtered (Figure 1, inlet tube 2, drum filter 1, machine translation page 1, line 13-21; page 2, line 45 to page 3, line 85). ‘842 does not teach the entry orifice or inlet line for the suspension being filtered is provided with a pump.
It would be obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize a pump as pumps are well known means of transferring fluids.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over FR1171842, as noted above, in view of U.S. Patent No. 5000850 by Berry.
In regard to claims 2 and 7, ‘842 teaches the limitations as noted above. ‘842 does not teach means of automatic displacement of the rotary filter between said filtration unit and coating unit, wherein the means for automatic displacement are pneumatic jacks.
Berry teaches a rotary filter coating device (abstract). Further, Berry teaches the means for automatic displacement of the rotary filter between said filtration unit and coating unit comprise a pneumatic jack connected to the rotation shaft of the rotary filter (abstract; claim 15, claim 16); capable of allowing a translatory displacement of the rotary filter respectively along a vertical axis perpendicular to its rotation shaft and along a horizontal axis perpendicular to its rotation shaft. Berry teaches the pneumatic jack allows the filter to tune the size of the contact zone (abstract). It would be obvious to one of ordinary skill int eh art at the time the invention was effectively filed to utilize pneumatic jacks, as taught by Berry, in the device of ‘842 as pneumatic jacks are known devices in rotary filters and are utilized to tune the size of the contract zone. Mere duplication of parts or process steps has no patentable significance, unless a new and unexpected result is produced, since it involves only routine skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARA M PEO whose telephone number is (571)272-9958. The examiner can normally be reached 9 to 5:30.
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/KARA M PEO/Primary Examiner, Art Unit 1777
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