DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-7 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.
Claims 1-7 are rendered indefinite by the new recitations in independent claim 1 of the relative term “smooth”. There is no standard set forth in the application for the degree of smoothness.
Further regarding claim 4, as stated in the previous office action, the meaning of the word "de" is unclear.
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 1-7 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 new recitations in independent claim 1, from which claims 2-7 depend, of “smooth” are new matter. There is no mention in the application as originally filed of anything being smooth.
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.
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.
Claims 1, 2, 4, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Watano (US 8,721,167) in view of Chandler (US 6,583). Regarding claim 1, Watano discloses a refiner comprising an enclosure (20) with a cylindrical wall, defining a treatment chamber having a feed opening (at the top of 20) and an outlet opening (see bottom right in Fig. 2), and a cylindrical drum (36), mounted to be movable in the enclosure and having a diameter smaller than that of the enclosure, the longitudinal axes of the enclosure and drum being parallel to each other (see Fig. 2), the refiner further comprising heating means (see col. 4, line 35) and the drum is mounted in the outer enclosure so that said drum is able to move in rotation about its longitudinal axis and so that its longitudinal axis is able to move along a circular path around the longitudinal axis of said enclosure, the two types of possible movements mentioned above being controlled by separate drive and/or actuation means, allowing them to be effected selectively or in combination (see col. 4, lines 46-50; col. Fig. 3). The word “smooth” is not used by Watano to characterize surfaces. Chanlder explains “cylinders may either be smooth or rough on the surface, as is preferred, but for most purposes a smooth surface would be preferable” (see page 1, lines 64-68). From the teachings of Chandler it is understood that it would have been obvious for one of ordinary skill in the art before the effective filing date to have selected the degree of smoothness. Regarding claim 2, the longitudinal axes of the outer enclosure and the inner drum are oriented substantially vertically (see Figs. 1-3). Regarding claim 4, guide means provide the movement of the longitudinal axis of drum along a circular path in the enclosure around the longitudinal axis de the latter (see Figs. 1-3). Regarding claim 5, said refiner comprises a control means (51) for controlling the two separate actuation means, suitable and intended to implement the two types of movements of the drum, with a view to their separate or combined control, said control means configured to be able to from part of a means for overall control and management of a treatment installation incorporating said refiner. Regarding claim 7, sensors (46a, 46b) for measuring the force(s) applied in order to move the drum about its longitudinal axis and/or in the enclosure are disclosed.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Watano (US 8,721,167) in view of Chandler (US 6,583) as applied to claim 1 above, and further in view of Taniguchi (US 7,090,391). Though Watano discloses openings at the top and bottom, the claimed location of the top opening with respect to the axis is not disclosed, and a pump is not disclosed. Taniguchi teaches inlet (72) and outlet (74) being on opposite sides of an axis, as well as pump (22). It would have been obvious for one of ordinary skill in the art before the effective filing date to have provides these features of Taniguchi so as to allow continuous flow.
Response to Arguments
In the originally filed applicant, there was not mention of anything being “smooth”.
Chandler (US 6,583) is now relied upon as teaching “cylinders may either be smooth or rough on the surface, as is preferred, but for most purposes a smooth surface would be preferable” (see page 1, lines 64-68).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DAVID L SORKIN whose telephone number is (571)272-1148. The examiner can normally be reached 7am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire X Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID L. SORKIN
Examiner
Art Unit 1774
/DAVID L SORKIN/Primary Examiner, Art Unit 1774