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 .
Claims 1-12 are pending.
Claims 1-9 are under examination on the merits.
Claims 1, 2, 5-9 are amended.
No claims are canceled or newly added.
Election/Restrictions
Applicant’s previous election of Group I claims 1-9 and species (2) in claim 3 is repeated herein for reference.
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.
Applicant has amended several terms in the claims such that 112(f) is no longer invoked. Claim 1 line 3, previously “a facility configured to separate” now recites “a wet crushing pump or a colloid mill being configured to perform…”. Claim 1 line 9 (previously claim 1 line 6) now recites “a separator configured to separate…” instead of “a facility configured to dispense”. Claim 2 line 3 now recites “the wet crushing pump or colloid mill is configured to perform” instead of “facility configured to perform”. These phrases no longer invoke 121(f) because they no longer use a nonce term.
However, claim 6 does still invoke 112(f): 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: the recycling system…which is further configured to classify” in claim 6 line 1-2.
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.
Furthermore, the preamble “for recycling a plastic laminate having at least two or more layers into a recycled material” is a future intended use. 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). Any device capable of meeting the “recycling a plastic laminate…” phrase will be considered as meeting the phrase. This interpretation also applies to further descriptions of the laminate, for example in claim 8 “the plastic laminate has an ink layer, and in the wet crushing facility, the ink layer provided on the laminate is peeled off and removed…”. In this instance the prior art must merely be capable of peeling off and removing an ink layer.
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 1-9 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. Claim 1 recites “a separator configured to separate and recover each of the separated single layers by specific gravity, centrifugation or electrostatic separation”. There is insufficient support in the specification for the breadth of this phrase. The specification does not describe “a separator” nor does it describe the alternatives of specific gravity, centrifugation or electrostatic separation for the separator. Applicant cites paragraph 62-64 for support of the claim phrase, but these phrases only mention specific aspects and not the concept as a whole. For example there is no disclosure of a separator which only separates via electrostatic separation, yet such is claimed. Furthermore, centrifugation is a subset of “specific gravity”, not an alternative (e.g. instant submitted specification paragraph 63).
Claims 2-9 depend on claim 1 and do not remedy this deficiency and are rejected on the same premise.
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.
The rejection in the previous action of claims 1-9 under 35 U.S.C. 112(b) as being indefinite for claim 1’s “a facility configured to dispense and recover a crushed mixture in each of the separated single layers” is withdrawn in view of applicant’s amendment to claim 1.
Claim 6 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claim 6, the claim limitation “a recycling system…configured to classify the single layers after the wet crushing pump or the colloid mill separates the two or more layers into the single layers” 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. Instant submitted specification paragraph 63 describes general aspects of classification but not a structure that meets “a recycling system…configured to classify” with enough support for one of ordinary skill. Since it is not clear what constitutes “a recycling system…configured to classify”, the bounds of the recycling system are unclear. 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.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “crush the film to be pieces having 5 mm to 20 mm”. This phrase is missing the relation between “5 mm to 20 mm” and the pieces. The specification indicates that the film is crushed pieces having a size of 5 mm to 20 mm (publication paragraph 90). Appropriate correction is required.
Claim Rejections - 35 USC § 102
The rejection in the previous action of claims 1, 2, 4, 6-9 under 35 U.S.C. 102(a)(1) as being anticipated by JP 2004042461 by Tsutsumi et al is withdrawn in view of applicant’s amendment. Tsutumi fails to disclose a configuration which allows pressure feeding of a mixture containing the film and water or a cleaning agent. Tsutsumi pressure feeds only the liquids (Fig.1 items 1, 2; pump is item 5 and waste resin is item 9), not a mixture including the resin (instant film).
Claim Rejections - 35 USC § 103
The rejection in the previous action of claims 3 and 5 under 35 U.S.C. 103 as being unpatentable over JP 2004042461 by Tsutsumi et al is withdrawn in view of applicant’s amendment of claim 1. Tsutsumi fails to disclose the instant claims as described above in withdrawal of the 102 rejections.
Rejoinder/Related Art
The amendment of claim 1 obviates the previous rejections over JP 2004042461 by Tsutsumi. A search was broadened to encompass all of claim 3, yet no applicable art was found. Related- yet inapplicable- art includes JP H08173838 by Miyazaki et al. Miyazaki describes a wet crusher with a pump to which a layered analyte (eggshell) and water is introduced (Fig.1 items 1-7; translation paragraphs 12-14). However the layered analyte is crushed to pieces with a size of 2-3 mm (paragraph 13), which is different from the instant “configured to…pieces having <a size of> 5 mm to 20 mm”. Miyazaki does describe a subsequent separation of the layered analyte in water by centrifugation (paragraph 15, Fig.1 items 9-12).
Response to Arguments
Applicant’s argument p.6 of Remarks submitted 6/3/26 has been considered and is partially persuasive. Applicant states that the amendment to claim 1 obviates the 112(b) rejections over the previous 112(f) language. This is true, as described above in withdrawal of the 112(b) rejections.
However, the amendment to claim 6 does not overcome the 112(b) rejection as it merely introduces different 112(f) language and does not resolve the lack of classifying structure.
Similarly, the introduction of “a separator” to claim 1 and subsequent language introduces new matter, as set forth above in rejection.
Applicant’s argument p.7 final paragraph has been considered but is not persuasive. Applicant points to specification paragraphs 62-64 as support for the new “a separator” language in claim 1, but no separator is mentioned therein. Separation steps are mentioned, but this is not the same as “a separator”. Furthermore, among the separation steps, centrifugation is described as a subset of “specific gravity” separation, not in the alternative. Also, electrostatic separation is only mentioned after specific other separations, not in the alternative to specific gravity or centrifugation. As such the new “a separator” language is not supported.
Applicant’s argument p.8-9 has been considered and is persuasive. Applicant argues that Tsutsumi fails to disclose the newly amended subject matter. This is found convincing because Tsutsumi is not “configured to perform pressure-feeding a mixture containing the film and water or a cleaning agent” for example. Tsutsumi’s pressure feeding applies to the water/cleaning agent only (Fig.1 item 1, 2 are water/cleaning agent and item 5 is the pump; the film (resin) is only added after see item 9).
Conclusion
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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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