NON-FINAL OFFICE ACTION after RCE
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This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
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 .
Priority
Acknowledgment is made of applicant's claim for domestic priority under 35 U.S.C. § 119(e).
Specification
The abstract is acceptable.
The amended title of the invention is approved.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 MAY 2026 has been entered.
Claim Rejections - 35 U.S.C. § 112(a)
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.
The specification is objected to under 35 U.S.C. § 112(a) since the specification, as originally filed, does not provide support for the invention as is now claimed.
The first paragraph of 35 U.S.C. 112 requires that the “specification shall contain a written description of the invention.” This requirement is separate and distinct from the enablement requirement. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991). See also Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir.2004) (discussing history and purpose of the written description requirement); In re Curtis, 354 F.3d 1347, 1357, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004) (“conclusive evidence of a claim’s enablement is not equally conclusive of that claim’s satisfactory written description”). The written description requirement has several policy objectives. “[T]he essential goal’ of the description of the invention requirement is to clearly convey the information that an applicant has invented the subject matter which is claimed.” In re Barker, 559 F.2d 588, 592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977). Another objective is to put the public in possession of what the applicant claims as the invention. See Regents of the University of California v. Eli Lilly, 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089 (1998). "The written description requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor ’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed." Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir. 2005). Further, the written description requirement promotes the progress of the useful arts by ensuring that patentees adequately describe their inventions in their patent specifications in exchange for the right to exclude others from practicing the invention for the duration of the patent’s term.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116. However, a showing of possession alone does not cure the lack of a written description. Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 969-70, 63 USPQ2d 1609, 1617 (Fed. Cir. 2002).
Claims 1-5 and 7-22 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitations added to each of independent claims 1 and 16 relating to the second end of the mixing assembly configured to float freely at the inner bottom surface of the container and the first coupling end of the mixing assembly being free of guide features coupling the mixing assembly to an opening of the container constitutes subject matter that is not supported by the specification as originally filed. The specification is silent regarding the term “float” (zero occurrences as seen below), let alone “freely float”:
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and the lack of guide features is associated with “the shaft length”, not with a coupling end of the elongate section that couples the mixing assembly to an opening of the container. The specification in the context of the guide features is silent with regard to any direct cooperation with the opening of the container, i.e., coupling the mixing assembly to an opening of the container. The only paragraph supporting this subject matter is ¶ [0080] and it is not envisioned how the text in this paragraph supports that which is now claimed.
Moreover, these negative limitations related to the guide features do not have basis in the originally filed specification and thus do not comply with the written description requirement (See MPEP 2173.05(i) reproduced in part below):
2173.05(i) Negative Limitations
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) (“[the] specification, having described the whole, necessarily described the part remaining.”). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff 'd mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. Note that a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993).
Claim Rejections - 35 U.S.C. § 112(b)
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.
35 U.S.C. § 112(b) requires a claim to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Under In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970) and In re Moore, 169 USPQ 236 (CCPA 1971), claims must be analyzed to determine their metes and bounds so that it is clear from the claim language what subject matter the claims encompass. This analysis must be performed in light of the applicable prior art and the disclosure. The definiteness of the claims is important to allow others who wish to enter the market place to ascertain the boundaries of protection that are provided by the claims. Ex parte Kristensen, 10 USPQ 2d 1701, 1703 (BPAI 1989).
One of the purposes of 35 U.S.C. § 112(b) “is to provide those who would endeavor, in future enterprise, to approach the area circumscribed by the claims of a patent, with adequate notice demanded by due process of law, so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance.” In re Hammack, supra. As set forth in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991).
The statute requires that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” A decision as to whether a claim is invalid under this provision requires a determination whether those skilled in the art would understand what is claimed. See Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985) (claims must “reasonably apprise those skilled in the art” as to their scope and be “as precise as the subject matter permits.”).
Claims 1-5 and 7-22 are thus rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.+
NOTE: Per 37 CFR 1.75(c), dependent claims shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. Accordingly, by definition, any claims that depend from a claim that is deemed indefinite under 35 USC 112(b) will also be considered indefinite and identified in the list of rejected claims above, even if such claims are themselves free of indefiniteness under § 112(b).
Applicant curiously and unfortunately persists in claiming, in conjunction with abundant supporting arguments, the combination of elements rather than the actual scope of the pending claims, i.e., the subcombination of the mixing assembly [equals the alignment dish and paddle assembly] and the subcombination of the paddle assembly. Thus, a PHOSITA is not apprised of the actual scope of the pending claims, violating the requirements of 35 USC 112(b). An analysis of the record reveals that the metes and bounds of the pending claims is so unclear to obscure what subject matter these claims encompass as explained below:
In the instant application, it appears that the preamble of claims 1-5 and 7-15 set forth that a subcombination of the mixing assembly [i.e., alignment dish and paddle assembly] is being claimed and the container is only functionally recited. The scope of the claims is clear as long as no further mention of the container appears in the claims, or the bodies of the claims refer to the container in a functional manner. A question arises as to whether the claims recite a combination or subcombination when the container is positively recited within the bodies of the claims wherein an inconsistency develops in the claims. The preamble indicates a subcombination of the mixing assembly, while in the bodies of one or more claims, there is at least one occurrence of a positive recital of structure indicating that the combination of the mixing assembly and container is being claimed. It is not clear if Applicant’s intent is to claim merely the mixing assembly or the mixing assembly in combination with the container.
Claims 1-5 and 7-15 are therefore inconsistent and indefinite because the preambles of the claims recite the subcombination (the mixing assembly) for use with the combination (the mixing assembly in combination with the container) yet the elements of the mixing assembly and container are claimed in structural combination in the bodies of the claims. If the elements of the invention are claimed in combination in the bodies of the claims, the preambles must also claim them in combination or the subject matter of the preambles would not be considered consistent with limitations recited in the bodies of the claim rendering the scope of the claims indefinite. In the instant case, it is not clear as to whether the claims are intended to be combination claims of the mixing assembly and container or intended to be subcombination claims of the mixing assembly only. The question has arisen based on the subject matter added via RCE amendment that positively recites structural cooperation between the alignment dish and the container and the paddle assembly and the container. Since the now claimed positioning of the mixing assembly within the container, the freely floating alignment dish at the bottom surface of the container, the paddle assembly being entirely positioned and containable within the container, and wherein the elongate section comprises a coupling end at the first end of the mixing assembly free of guide features coupling the mixing assembly to an opening of the container, it appears that there are several occurrences of a positive recital of structure indicating that the combination of the mixing assembly and container is being claimed which renders the scope of the claims indefinite.
Moreover, in the instant application, it appears that the preamble of claims 16-22 set forth that a subcombination of the paddle assembly is being claimed and the alignment dish and container are only functionally recited. The scope of the claims is clear as long as no further mention of the alignment dish and container appears in the claims, or the bodies of the claims refer to the alignment dish and container in a functional manner. A question arises as to whether the claims recite a combination or subcombination when the alignment dish and container are positively recited within the bodies of the claims wherein an inconsistency develops in the claims. The preamble indicates a subcombination of the paddle assembly, while in the bodies of one or more claims, there is at least one occurrence of a positive recital of structure indicating that the combination of the paddle assembly and alignment dish and container are being claimed. It is not clear if Applicant’s intent is to claim merely the paddle assembly or the paddle assembly in combination with the alignment dish and container.
Claims 16-22 are therefore inconsistent and indefinite because the preambles of the claims recite the subcombination (the paddle assembly) for use with the combination (the paddle assembly in combination with the alignment dish and container) yet the elements of the paddle assembly and alignment dish and container are claimed in structural combination in the bodies of the claims. If the elements of the invention are claimed in combination in the bodies of the claims, the preambles must also claim them in combination or the subject matter of the preambles would not be considered consistent with limitations recited in the bodies of the claim rendering the scope of the claims indefinite. In the instant case, it is not clear as to whether the claims are intended to be combination claims of the paddle assembly and alignment dish and container or intended to be subcombination claims of the paddle assembly only. The question has arisen based on the subject matter added via RCE amendment that positively recites structural cooperation between the paddle assembly, alignment dish and the container. Since the now claimed positioning of the paddle assembly within the container, the freely floating alignment dish at the bottom surface of the container, and wherein the elongate section comprises a coupling end at the first end of the mixing assembly free of guide features coupling the mixing assembly to an opening of the container, it appears that there are several occurrences of a positive recital of structure indicating that the combination of the paddle assembly and alignment dish and container is being claimed which renders the scope of the claims indefinite.
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 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 terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000). "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). See MPEP 2112.
REMARKS: (i) Claims 1-5 and 7-15 are again considered drawn to the mixing assembly subcombination [i.e., alignment dish and paddle assembly] that does not include the container or external drive apparatus as positively recited elements as noted previously. Accordingly, any language related to the container or external drive apparatus in these claims is not germane to the patentability of said a mixing assembly combination; (ii) Claims 16-22 are again considered drawn to the subcombination of just the paddle assembly that excludes the external drive apparatus, container, alignment shaft, and alignment dish as previously noted. Accordingly, any language related to the container, external drive apparatus, alignment shaft, and alignment dish in these claims is not germane to the patentability of said paddle assembly subcombination.
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.
Claims 1-4, 9-10, 14, and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6,280,077 B1 to Sullivan, Jr. (hereinafter "SULLIVAN").
Regarding claim 1, Sullivan disclose the subcombination of the alignment dish and paddle assembly as seen in the Figure of SULLIVAN below, sans container 10.
SULLIVAN thus teaches a mixing assembly intended for placement within a mixing container with a first end at 32 and a second end at 24; an alignment dish 66 with alignment shaft 72; a paddle assembly coupled to the alignment shaft (the assembly comprising mixing blades 22 and shaft 20 coupled to alignment shaft 72, Fig 11), the paddle assembly including an elongate section for engaging with the alignment shaft (elongated section shaft 20 for engaging with alignment shaft 72, Fig 4-11; “The protrusion 72 and disk 74 forming the retaining member for mixing shaft 20" col. 5, Iines 66-67), the elongate section 20 having a length greater than a length of the alignment shaft (see Fig 11 wherein elongated section 20 has greater length than alignment shaft 72); and a plurality of blades projecting from the elongate section for mixing contents contained within the container (blades 22 extending from elongate section 20, Fig 11; the plurality of blades distributed about an annular direction on the elongate section (see blades 22 spaced about an annular direction on elongated section 20, Fig 11); wherein the paddle assembly is rotatable about the alignment shaft 72 that serves as a mount for rotatably supporting the mixing shaft 20 and attached components." col. 6, lines 21-23); the elongate section/shaft 20 having an upper coupling end at 32 intended for coupling to an external drive such as being engaged by an electrically-powered turning device (not shown) which turns the shaft 20, thereby moving the blades 22 through the fluid and alternatively, the upper end of the shaft can be coupled to a manually-operated turning mechanism (also not shown); the upper coupling end of the mixing assembly being free of guide features coupling the mixing assembly to an opening of the container (Figure 11); wherein the alignment dish is configured to be positioned below the paddle assembly; wherein the alignment dish is a freely movable separate element capable of being concentrically placed within any suitable receptacle, such as at the bottom of said receptacle, such as an outer container 10 seen in Figure 11.
[AltContent: textbox (SULLIVAN shows the subcombination of the alignment dish 66 and paddle assembly 20, 22 as seen in below, sans container 10 that is not part of this subcombination:)]
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Claim 2: The manner in which the paddle assembly is utilized after being used recites no further structure and as held in In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), "the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself." See MPEP 2115. Nevertheless, the patent to Sullivan discloses all of the recited structure irrespective of the manner in which said structure is operated, stored, or subject to disposal.
APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE FROM THE PRIOR ART
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While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[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).
Regarding claim 3, Sullivan teaches wherein the alignment dish 66 includes a geometric shape that substantially similar to a base of a container, such as container 10.
Regarding claim 4, Sullivan teaches wherein the elongate section for engaging the alignment shaft 72 is an elongate hollow section for receiving the alignment shaft therein (see Fig 11 having hollow tubular distal end for engaging shaft 72; “The assembly further includes a mixing shaft 20 to which there are fixed mixing elements, such as blades 22. Mixing shaft 20 is hollow, or else it has a cavity 24 at its bottom end so as to permit the mixing shaft to be rotatably mounted” col. 1 In 23-26).
Regarding claim 9, Sullivan teaches the alignment dish includes one or more projections coupled to the dish surface (ribs 96 projecting from dish surface, Fig 5-8; "reinforcing ribs 96 upstanding from the upper surface 88 of the disk 74" col. 5 In 56-58).
Regarding claim 10, Sullivan teaches wherein the one or more projections includes at least one of a slat, louver, or a triangular prism (see elongated projections 96, Figs. 5-8).
Regarding claim 14, Sullivan teaches wherein the alignment shaft includes a tapered end positioned proximal to an opening of the container (see rounded tapered top end of alignment shaft 72, Figs. 5, 11, 14).
Regarding claim 16, Sullivan teaches the subcombination of a paddle assembly including an elongate section for engaging with the alignment shaft (elongated section shaft 20 for engaging with alignment shaft 72, Fig 4-11; “The protrusion 72 and disk 74 forming the retaining member for mixing shaft 20" col. 5, Iines 66-67), the elongate section 20 having a length greater than a length of the alignment shaft (see Fig 11 wherein elongated section 20 has greater length than alignment shaft 72); and a plurality of blades projecting from the elongate section for mixing contents contained within the container (blades 22 extending from elongate section 20, Fig 11; the plurality of blades distributed about an annular direction on the elongate section (see blades 22 spaced about an annular direction on elongated section 20, Fig 11); wherein the paddle assembly is rotatable about the alignment shaft 72 that serves as a mount for rotatably supporting the mixing shaft 20 and attached components." col. 6, lines 21-23); the elongate section/shaft 20 having an upper coupling end at 32 intended for coupling to an external drive such as being engaged by an electrically-powered turning device (not shown) which turns the shaft 20, thereby moving the blades 22 through the fluid and alternatively, the upper end of the shaft can be coupled to a manually-operated turning mechanism (also not shown); the upper coupling end of the mixing assembly being free of guide features coupling the mixing assembly to an opening of the container (Figure 11); wherein the alignment dish is configured to be positioned below the paddle assembly; wherein the alignment dish is a freely movable separate element capable of being concentrically placed within any suitable receptacle, such as at the bottom of said receptacle, such as an outer container 10 seen in Figure 11.
Regarding claim 17, Sullivan wherein the elongate section for engaging with the alignment shaft is an elongate hollow section for receiving the alignment shaft therein (see Fig 11 having hollow tubular distal end for engaging shaft 72; “The assembly further includes a mixing shaft 20 to which there are fixed mixing elements, such as blades 22. Mixing shaft 20 is hollow, or else it has a cavity 24 at its bottom end so as to permit the mixing shaft to be rotatably mounted" on the alignment shaft 72; col. 1, lines 23-26).
Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
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 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.
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.
The instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter partes review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’ ’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
In view of the 103 guidance above, claims 5 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,280,077 B1 to Sullivan, Jr.
Sullivan does not disclose the elongate hollow section being a rectangular tube. A change in shape of an element is generally an obvious choice of design. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Accordingly, to have formed the elongate hollow section to be rectangular or any other common geometrical shape in Sullivan would have been well within the realm of obviousness to one skilled in the art. It is noted that the particular shape of the elongate hollow section being rectangular is not critical or even significant, as evidenced by ¶ [0098] of the instant specification.
Claims 7-8 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,280,077 B1 to Sullivan, Jr. in view of HOEFKEN (US 2017/0065945).
Sullivan does not disclose the recited PTFE sleeve. HOEFKEN discloses a drive shaft elongate section 4; paddle assembly 5; a sleeve 14 positioned between a portion of the elongate section 4 and an alignment shaft 12. The sleeve can be formed of PTFE.
More specifically, FIGS. 2 to 4 show an exemplary embodiment of a safety bearing 7. It comprises a holding device 8, which is formed from a trapezoidal sheet metal. A raised portion 9 of the holding device 8 is supported against the tank base 2 (not shown here) via two limbs 10 extending from said portion. A recess 11 is provided in the raised portion 9, in which recess there is secured a bearing bush 12. The free end E of the drive shaft 4 (not shown here in greater detail) is rotatably held in the bearing bush 12. Reference sign 13 designates a sensor mounted on the bearing bush 12. A slide bush or slide sleeve 14 is provided at the free end E of the drive shaft 4 and can be produced from a plastic or metal. The material forming the slide sleeve 14 advantageously has a lower hardness than a further material forming the bearing bush 12. The bearing bush/ alignment shaft 12 is usually produced from metal, in particular steel. The slide sleeve 14 is secured by means of a screw 14 or the like mounted on the free end E of the drive shaft 4. A worn slide sleeve 14 can be removed by detaching the screw 15 from the free end E of the drive shaft 4 and can be replaced for a new slide sleeve 14. The slide sleeve 14 is preferably produced from an electrically non-conductive or a non-magnetic material, preferably from a plastic, such as PBT, PTFE, PA 6 G, PA 6, PA 66, PA 12 G, PET, PEEK, POM or the like.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided the elongate section of Sullivan with a PTFE sleeve as taught by HOEFKEN for the purposes of reducing friction between the elongate section and the sleeve and to enable replacement of the sleeve when worn out as noted in [0030].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US 6,280,077 B1 to Sullivan, Jr. in view of BLAKLEY et al. (US 5568975).
Sullivan does not disclose the recited weld. BLAKLEY et al. discloses a mixing assembly (Figure 3) including an element for supporting an elongate shaft 12 having paddles 123 that employs an alignment shaft 68 that is affixed to an alignment dish 78 via a tack weld provided at 88.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have affixed the alignment shaft to the alignment dish via a weld connection in SULLIVAN as disclosed by BLAKLEY et al. for the purpose of prevent loosening of the alignment shaft with respect to the alignment dish via the weld attachment (col. 5, lines 26-35).
Claims 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,280,077 B1 to Sullivan, Jr. in view of LENNON (US 3149888).
Sullivan does not disclose the recited washer. LENNON discloses a mixing assembly (Figure 1) including an element for supporting an elongate shaft 16, 34 having paddles 18 that employs an alignment shaft mechanism (Figures 3 and 4) that includes a washer 38 that is located between the elongate section potion 34 and the alignment dish 32, 36.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided Sullivan with a washer as disclosed by LENNON for the purposes of providing a thrust seat surface between the elongate shaft and the alignment dish to allow removal of the bearing cover and permitting the removal or repair of that bearing and exposing the inner bearing part for removal or replacement wherein the cover may then be bolted on and the parts 24 and 26 of the rotary bearing brought into normal cooperating relationship, and the shaft 16 returned to the elevated position of FIG. 3, opening the shutoff valve (col. 1, line 55 - col. 2, line 26)
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 6,280,077 B1 to Sullivan, Jr.
Sullivan does not disclose the alignment shaft being formed of carbon steel. It would have been obvious to one having ordinary skill in the art, at the time applicant's invention was made, to have formed the alignment shaft or any of the other elements of Sullivan from carbon steel since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416; Sinclair & Carroll Co., Inc. v. Interchemical Corp., 65 USPQ 297 (1945).
Furthermore, in view of the fact that the use of carbon steel vis-`a-vis any other common construction material solves no stated problem insofar as the record is concerned and the conclusion of obviousness can be made from the common knowledge and common sense of one of ordinary skill in the art (In re Bozek, 416 F.2d 1385, 163 USPQ 545 (CCPA 1969)), it would have been obvious to one of ordinary skill in the art to have formed any of the components of the prior art mixing devices from a well-known construction material such as carbon steel. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
It is observed that artisans must be presumed to know something about the art apart from what the references disclose (see In re Jacoby, 309 F.2d 513, 135 USPQ 317 (CCPA 1962)). Moreover, skill is presumed on the part of those practicing in the art. See In re Sovish, 769 F.2d 738, 226 USPQ 771 (Fed. Cir. 1985). Therefore, it is concluded that the selection of a well-known material in the mixing art such as carbon steel would have been obvious to one of ordinary skill in this art, if for no other reason than to achieve the advantage of using a more modern material or a lower cost or more easily fabricated material.
This exemplifies the Supreme Court's analysis in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 [82 USPQ2d 1385] (2007). “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. As further emphasis on the substitution of one material for another, there is the venerable case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), cited approvingly in KSR Int'l Co. v. Teleflex Inc., supra, 550 U.S. at 406, 415, which denied patentability to an invention consisting of the substitution of a clay or porcelain knob for a metallic or wood knob in a doorknob (the doorknob itself, as distinct from the knob on the end of it, being an assemblage of knob, shank, and spindle). Other substitution cases in which patentability was denied on grounds of obviousness include Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535–38 [218 USPQ 871] (Fed. Cir. 1983); Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740, 749-50 [216 USPQ 1] (7th Cir. 1982), and Lyle/Carlstrom Associates, Inc. v. Manhattan Store Interiors, Inc., 635 F.Supp. 1371, 1381-83 [230 USPQ 278] (E.D.N.Y. 1986), aff'd, 824 F.2d 977 (Fed. Cir. 1987).
Among the inventions that the law deems obvious are those modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value (otherwise they would not be undertaken) but do not involve sufficient inventiveness to merit patent protection. This class of inventions is well illustrated by efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable. Ritchie v. Vast Resources Inc., 90 USPQ2d 1668 (Fed. Cir. 2009). Accordingly, it is well settled that a predictable substitution of one material for another is well within the grasp of 35 U.S.C 103(a) and common sense. A rejection to overcome an obviousness rejection will not be withdrawn when the allegedly missing teaching of the rejection would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. Randall Mfg. v. Rea, supra. Choosing an appropriate material for a specific application or structural member can unquestionably be determined by a PHOSITA by innate common sense, the common knowledge generally, or the common knowledge in the relevant art.
Claims 15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,280,077 B1 to Sullivan, Jr. in view of WINKLER (US 2245632).
Sullivan does not show the annular brush. WINKLER discloses a mixing assembly including a container 4; a mixing assembly with an elongate section drive shaft 3; an annular brush 1 mounted at one end 2 of the elongate section shaft 3.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided the elongate section drive shaft of Sullivan with an annular brush at an end of the elongate section drive shaft as taught by WINKLER for the purposes of imparting a simultaneous mixing, cutting and rubbing action via the brush which greatly facilitates not only the mixing but the actual chemical reactions (col. 3, lines 31-47).
Allowable Subject Matter
Method of mixing claims 23-29 stand allowed.
Response to Amendment and Conclusion
The remarks filed with the RCE have been considered but are not persuasive.
The remarks again highlight claim elements that are not positively recited in the respective claims as noted above. For example, the emphasis on a comparison of the length of the elongate section to a height of the container, when the container is not positively recited in the apparatus claims, is thus not germane to the patentability of the mixing assembly combination of claim 1 and the paddle assembly subcombination of claim 16.
The cooperation of the elements positively recited in claims 1 and 16 with the container are tantamount to the intended use of such elements. "[A] statement of intended use.., does not qualify or distinguish the structural apparatus claimed over the reference." In re Sinex, 309 F.2d 488, 492 (CCPA 1962); In re Yanush, 477 F.2d 958, 959 (CCPA 1973) ("Appellant's use limitation does not impart a structural feature different from those of the prior art."); In re Casey, 370 F.2d 576, 580 (CCPA 1967) ("The claims in issue call for an apparatus or machine, viz. a tape dispensing machine. The manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself."); In re Hack, 245 F.2d 246, 248 (CCPA 1957) ("These cases are merely expressive of the principle that the grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition."). In summary, the use of the alignment dish, alignment shaft, and paddle assembly of claim 1 with a container of a certain height (i.e., longer/higher than a length of the elongate section), an external drive apparatus, and the dimensional interface with the base of the container are but intended uses of the elements including the alignment dish, alignment shaft, and paddle assembly. These elements are clearly disclosed in Sullivan, Jr. mandating the 102 rejections above.
Likewise, the use of the paddle assembly with the (i) alignment shaft and (ii) alignment dish of claim 16 [(i) and (ii) being non-positively recited elements], and with (iii) the container have not been afforded any patentable weight because it has been held that a recitation with respect to the manner in which a claimed apparatus [such as the paddle assembly subcombination] is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647; In re Sebald, 122 USPQ 527; In re Lemin et al., 140 USPQ 273; In re Sinex, 135 USPQ 302; In re Pearson, 181 USPQ 641.
Since Sullivan, Jr. discloses all of the positively recited elements following “the mixing assembly comprising” in line 3 of claim 1 and following “the paddle assembly comprising” in line 3 of claim 16, the 102 rejections must again be maintained.
In stark contrast, amended claim 23 recites method steps with positively recited inclusion and manipulation of elements such as the container, external drive apparatus, alignment shaft, alignment disk, and the steps related to the length of the elongate section as compared to the height of the container, the mixing assembly being entirely defined within the container for storage or disposal within the container, etc. are steps not contemplated by the four corners of Sullivan, Jr. Accordingly, the method claims 23-29 stand allowed.
Since the alignment dish 66 is a separate element, it can be placed freely within any given suitable container. The now claimed floating aspect of the alignment dish is new matter.
The upper coupling end 32 of the elongate shaft 20 is free of the awkwardly claimed guide features that couple the mixing assembly to an opening of the container (Figure 11). There exist no such features at upper end 32 of the shaft 20 that structurally cooperate with an opening of a given container or with the opening of the container 10.
The arguments in Section (D) of the response are misplaced, since Hoefken is relied upon for the PTFE sleeve and not relied upon for a floating alignment dish as asserted by Applicant. Likewise, the other references are relied upon for teaching a tack weld, washer, and annular brush, not for any of the features set forth in independent claims 1 and 16. In response to these arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references, as in this instance. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Since a PHOSITA, by way of common sense, common knowledge generally, or common knowledge in the relevant art, would recognize that the recited PTFE sleeve, tack weld, washer, and annular brush indeed represent common knowledge in the mixing art as evidenced by the applied references to Hoefken, Blakley, Lennon, and Winkler, the corresponding rejections under 35 USC 103 above are considered proper.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COOLEY whose telephone number is (571)272-1139. The examiner can normally be reached M-F 9:30 AM - 6:00 PM.
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/CHARLES COOLEY/Examiner, Art Unit 1774
9 JULY 2026
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