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 .
Response to Amendment
The amendment filed on 12/23/2025 has been entered. Claims 7, 9-10 and 12 are currently pending in the application.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 and 121 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of priority applications, IT102020000023137 and PCT/EP2021/075420, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the claimed limitation "control means" in this application. Therefore, "control means" does not meet the priority claims.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
In claims 7, 10 and 12, there is no antecedent basis in the specification for "control means"
Claim Interpretation
The claimed limitation "working position" in claim 1 has been interpreted as a position that the knitted tubular manufacture is required to be at for extraction to occur, according to Applicant remarks filed 10/08/2024.
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.
Specifically, the limitation "control means" in claims 7, 10 and 12 are being interpreted under 35 U.S.C. 112(f), sixth paragraph, in the Office action.
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 7, 9-10 and 12 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 7, 10 and 12 each recite the limitation "control means". However, the original disclosure fails to set forth the feature. Therefore, the limitation constitutes new matter.
Claims 7, 10 and 12 each recite the limitation "control means", which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the original disclosure fails to provide any corresponding structure, material, or acts for performing the claimed function. There is a lack of written description for this limitation.
The remaining claims each depend from a rejected base claim and are likewise rejected.
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 7, 9-10 and 12 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 pre-AIA the applicant regards as the invention.
Claims 7, 10 and 12 each recite the limitation "substantially simultaneously", which renders the claims indefinite. The term "substantially" is a term of approximation, which is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree. It is unclear what is included or excluded by "substantially simultaneously"; e.g., how much deviation from "simultaneously" the commands can be performed to still be considered as "substantially simultaneously". One second? Five seconds? One minute? Five minutes? One of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the metes and bounds of the claims are unclear and cannot be ascertained
Claim limitation “control means” 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. 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.
The remaining claims each depend from a rejected base claim and are likewise rejected.
Status of Claims
Claims 7, 9-10 and 12 are currently free of prior art rejections. None of the found prior art discloses, teaches or fairly suggests wherein the step motor is provided with a closed-loop driver as required by claim 7.
However, the claims should NOT be construed as reciting allowable subject matter. It is noted that all the pending claims are subjected to 35 USC 112(a) and 112(b) rejections as discussed above; and substantive amendments to the claims may result in prior-art-based rejections in future Office Actions.
Declaration
The declaration under 37 CFR 1.132 filed 12/23/2025 is insufficient to overcome the rejection of claims 7, 9-10 and 12 as set forth in the last Office Action mailed 09/24/2025 because: The declaration is drawn to the Mr. Furgoni's opinion with respect to whether "control means" have sufficient support in the original disclosure and whether "substantially simultaneously" is definite in the claims. However, the declaration fails to provide any factual evidence to support Mr. Furgoni's opinion. As such, the declaration amounts to an opinion without support by actual proof.
As to "control means", Mr. Furgoni refers to "closed-loop driver" and "hosiery program" in the specification. First, even if a "closed-loop driver" is a software, the closed-loop driver only functions to drive a specific step-motor to perform specific commands, while the claimed "control means" are recited to fully perform said first step of preparing for extraction of the knitted tubular manufacture, said second step of extracting of the knitted tubular manufacture, and said third step of transferring of the knitted tubular manufacture, which are far beyond merely driving the step-motor. As such, a "closed-loop driver" is not equal to the claimed "control means". Second, the phrase "hosiery program" in the specification is vague and it is unclear what is being actually referred to. Per Oxford Languages, the term "program" has common meaning of "a set of related measures or activities with a particular long-term", which refers to a procedure and is not necessarily correlated to software as asserted in the Declaration.
As to "substantially simultaneously", Mr. Furgoni asserts that the term "substantially" should be given ordinary meaning of "to a great degree" or "mostly", and should be interpreted as "almost simultaneously" in the instant claims. Although Mr. Furgoni admits that the term is used relative to "timing" between steps in the claimed method, Mr. Furgoni does not even provide a time scale which can be considered as "almost simultaneously".
Therefore, the opinion, even if considered to be an expert opinion, is inadequate to overcome the 112(a) and 112(b) rejections.
Response to Arguments
In view of Applicant's amendment, newly modified grounds of rejection have been identified and applied as necessitated by the amendment. Further, Applicant's arguments filed on 12/23/2025 have been fully considered and addressed as follows.
Applicant's remarks: with respect to the objection to the specification, Applicant asserts that the specification provides sufficient support for "control means" because the specification need not have verbatim support for a claim amendment.
Examiner's response: Examiner respectfully disagrees. The original specification does not provide any "control" means for performing said first step of preparing for extraction of the knitted tubular manufacture, said second step of extracting of the knitted tubular manufacture, and said third step of transferring of the knitted tubular manufacture. That cannot be considered as merely lacking of verbatim support. The terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. See 37 CFR 1.75(d)(1).
Applicant's remarks: with respect to the 112(b) rejection to "substantially simultaneously", Applicant asserts that the court has considered the term "substantially" numerous times and found it to be definite, and a person skilled in the art would know what is meant that the specified commands are performed "substantially simultaneously" as explained in the Mr. Frugoni's Declaration.
Examiner's response: Examiner respectfully disagrees. Even if the court has found the term "substantially" is definite in some other cases, the term "substantially" is indefinite in the current case. As the claimed invention is drawn to "a method for closing a knitted tubular manufacture that is capable of reducing the cycle time while maintaining the transfer operations extremely precise", it is crucial to define in what time scale the commands are "substantially simultaneously" performed in the patent application. However, the instant disclosure fails to provide such a time scale; therefore, one of ordinary skill of the art would not be reasonably apprised of the scope of the invention. As discussed above, Mr. Frugoni's Declaration does not address the actual time scale either.
Applicant's remarks: with respect to the 112(a)(b) rejections to "control means", Applicant cites Mr. Frugoni's Declaration, and asserts that the original disclosure provides sufficient written description for "control means".
Examiner's response: Examiner respectfully disagrees. The reason has been detailed above in "Declaration" section and reiterated below. Even if a "closed-loop driver" is a software, the closed-loop driver only functions to drive a specific step-motor to perform specific commands, while the claimed "control means" are recited to fully perform said first step of preparing for extraction of the knitted tubular manufacture, said second step of extracting of the knitted tubular manufacture, and said third step of transferring of the knitted tubular manufacture (see the claims). The above three steps each involve driving a plurality of machine parts, and are far beyond merely driving a step-motor. As such, a "closed-loop driver" cannot be considered as the claimed "control means" for performing the claimed three steps. Second, the phrase "hosiery program" in the specification is vague and it is unclear what is being actually referred to. Per Oxford Languages, the term "program" has common meaning of "a set of related measures or activities with a particular long-term", which refers to a procedure therefore is not necessarily correlated to software as asserted in the Declaration.
For the above reasons, Applicant's arguments are not found persuasive and the rejections are maintained.
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.
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/AIYING ZHAO/
Primary Examiner, Art Unit 3732