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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/27/2026 has been entered.
Claims 7, 9-10 and 12 are pending in this application. Any rejection(s) and/or objection(s) made in the previous Office Action and not repeated below, are hereby withdrawn due to Applicant's amendments and/or arguments in the response filed on 04/27/2026.
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 rejections of claims 7, 9-10 and 12 as set forth in the last Office Action mailed 04/27/2026 because: the declaration is drawn to the Mr. Furgoni's opinion with respect to whether "control means" have sufficient basis in the original disclosure and whether "substantially simultaneously" is definite in the claims; however, the declaration fails to provide sufficient factual evidence to support Mr. Furgoni's opinion. Therefore, the declaration amounts to an opinion without sufficient support by actual proof.
Since Applicant's remarks also include every piece of argument in the declaration except for the Lonati machine documentation, in order to reduce redundancy, the reasons why the declaration fails to provide sufficient factual evidence are collectively discussed in the Response to Arguments section as follows.
As to the Lonati machine documentation mentioned in the declaration, Applicant does not provide a copy of Lonati machine documentation. Therefore, the Lonati machine documentation is not considered.
Response to Arguments
Applicant's arguments filed 04/27/2026 have been fully considered, but they are not persuasive.
Applicant's remarks: with respect to Applicant's priority claims, Applicant asserts that a priority document is not required to use the exact terminology of the pending claims, and both the priority documents include closed-loop drivers for the step motors and the yarn guiding plate lifting device and reference "a hosiery program governing machine commands" as explained in the declaration, which clearly allow a person of ordinary skill in the art to recognize that the inventor possessed the claimed invention as to the later added claim limitation "control means".
Examiner's response: Examiner respectfully disagrees. The issue here is not whether the priority documents have the exact terminology; i.e., "control means". The issue is that the priority documents do not even have any term having the same scope of the "control means" as claimed.
First, the closed-loop driver in the application only functions to drive a specific step-motor and a specific yarn guiding plate lifting device, 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 the scope of driving a step-motor and a yarn guiding plate lifting device.
Second, the priority documents only reference a "hosiery program", and do not reference a "hosiery program governing machine commands" as Applicant asserted. For example, the PCT priority document includes the phrase "hosiery program" only once (p. 10, l. 30; p. 11, ll. 1-3):
The adoption of the closed-loop driver on the yarn guiding plate lifting device has allowed furthermore to remove from the hosiery program some idle turns which were necessary to wait for the yarn guiding plate lifting device to go back to the starting conditions.
One of ordinary skill in the art would recognize that "remove from the hosiery program some idle turns" is referring to "remove some idle turns from the hosiery program", and "idle turns" is referring to idle turns of the needle cylinder in the context of the description. This recognition is also consistent with a common meaning of the term "program" as "a set of related measures or activities with a particular long-term" per Oxford Languages. Taking together, it would be obvious to one of ordinary skill in the art that the "hosiery program" in the PCT priority document is referring to a set of machine activities including idle turns of the needle cylinder when performing knitting functions, and cannot conclude the hosiery program "governing machine commands" as Applicant asserted.
For the above reasons, the priority documents do not have sufficient support for "control means" in the claims.
Applicant's remarks: with respect to the specification objection for lacking antecedent basis for the claimed "control means", Applicant asserts that the specification expressly discloses 1) a "closed-loop driver" associated with the yam guiding plate lifting device and the step motors, which necessarily operates under the direction of an electronic controller, and 2) a "hosiery program", which is a term of art in the circular knitting machine field referring "specifically" to the software or firmware stored in the machine's ECU memory that governs and issues machine's operating commands" as explained in the declaration. Applicant further argues that these disclosures "identify" the same ECU/CPU hardware that constitutes the claimed "control means", and a person of ordinary skill in the art reading these disclosures would "unambiguously" understand that an electronic controller -a "control means"- is present in the disclosed system.
Examiner's response: Examiner respectfully disagrees. As an initial matter, the original specification does not have such terms "software", "firmware" and "ECU memory" or other terms with the same meanings.
As discussed above, the claimed "control means" are required to perform more functions (i.e., first, second and third steps in claims 7, 10 and 12) than an electronic controller controlling a "closed-loop driver" associated with the yam guiding plate lifting device and the step motors.
In addition, there is no sufficient evidence suggesting "hosiery program" must refer specifically to the software or firmware stored in the machine's ECU memory that governs and issues machine's operating commands in the circular knitting machine field. The Examiner has performed a search in the available English and foreign patent databases under CPC D04B (knitting) and CPC D04B9 (circular knitting machines). Only 5 relevant references were discovered, all of which are from the present application family. Similarly, very limited findings have been obtained from Google search in non-patent literature. As such, one cannot consider "hosiery program" must be a well-known term in the circular knitting machine field referring specifically to the software or firmware stored in the machine's ECU memory that governs and issues machine's operating commands as Applicant asserted. Similar to the PCT priority document, the original specification (dated 01/11/2023) of the instant application also includes "hosiery program" only once in the same text (p. 10, ll. 23-26):
The adoption of the closed-loop driver on the yarn guiding plate lifting device has allowed furthermore to remove from the hosiery program some idle turns which were necessary to wait for the yarn guiding plate lifting device to go back to the starting conditions.
Also similarly, from the above text, one of ordinary skill in the art would recognize that "remove from the hosiery program some idle turns" in the context is referring to "remove some idle turns of the needle cylinder from the hosiery program" and the "idle turns" of the needle cylinder are necessary to wait for the yarn guiding plate lifting device to go back to the starting conditions. Taking together, it would be obvious to one of ordinary skill in the art that the "hosiery program" is referring to a set of machine activities instead of the software or firmware stored in the machine's ECU memory that governs and issues machine's operating commands as Applicant asserted.
For the above reasons, the specification does not have sufficient basis for "control means" in the claims.
Applicant's remarks: with respect to the claimed "control means", Applicant argues that "control means" should not be interpreted under 112(f) because it is sufficiently structural - it is a known class of hardware (ECU/CPU), and EP0026425A2 explicitly describes a "control device" for circular knitting machines as an "electronic programming unit".
Examiner's response: Examiner respectfully disagrees. As has set forth in MPEP 2181, section I: "[[a]] claim limitation is presumed to invoke 35 U.S.C. 112(f) when it explicitly uses the term "means" or "step" and includes functional language." Therefore, the claimed "control means" in the present application invokes 112(f). In addition, even if another patent document describes a "control device" for circular knitting machines as an "electronic programming unit", a "control means" does not necessarily be "electronic programming unit" and can be other control devices, such as a processor, a controller, a circuit, sensor(s), actuator(s), and/or valve(s), etc. Applicant's argument is not persuasive.
Applicant's remarks: with respect to the claimed "control means", Applicant argues that even if 112(f) applies, the corresponding structure is disclosed: "the ECU/CPU identified in the specification, and the algorithm is the enumerated command sequences (a)-(s) ("preparing for extraction"), (t)-( dd) ("extracting"), and (ee)-(ww) ("transferring") themselves, which constitute a prose algorithm sufficient to satisfy 112(f)."
Examiner's response: Examiner respectfully disagrees. First, for clarification, the previous Office action did not include state or indicate that the specification lacks an "algorithm" for the "control means" as stated in the Remarks and the Declaration filed 04/27/2026. Actually, the Examiner's position has been consistent throughout the prosecution history that a control means may encompass a wide variety of devices, e.g., a computer, a processor, a programmed controller, a circuit, sensor(s), actuator(s), and/or valve(s), etc, rather than any algorithm.
MPEP 2181 (II)(A) states:
"The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function."
This makes clear that "means" in the present claims must have corresponding structure, not algorithm. When a claim limitation invokes112(f), Applicant must specifically disclose their corresponding structure. The original disclosure does not provide any structure for the claimed "control means" and clearly link the structure to the function of controlling. Therefore, Applicant's argument is not persuasive.
Applicant's remarks: with respect to 112(a) and 112(b) rejections to the claimed "control means", Applicant asserts that "control means" has inherency through the closed-loop driver disclosure as the closed-loop driver requires an electronic controller to be executed, and the "control means" is obvious to one of ordinary skill in the art to be the "ECU/CPU" hardware, and Francesco Viola's Circular Sock Knitting Machine Technology (published by Gesto in 1992) uses the term "hosiery program" in the same technical sense refers specifically to the software or firmware stored in the machine's ECU memory that controls the machine's operations. Applicant also asserts that the Examiner mischaracterizes the arguments in the previous Declaration filed 12/23/2025 with respect to the scope of the "closed-loop driver" and the claimed "control means".
Examiner's response: Examiner respectfully disagrees. Most of the reasons have been provided in above detailed discussions about "closed-loop driver", "hosiery program" and "control means" and the discussions will not be repeated again.
For clarification, the Examiner does not mischaracterize the arguments in the previous Declaration filed 12/23/2025 with respect to the scope of the "closed-loop driver" and the claimed "control means" as Applicant asserted. In the Declarations filed 04/27/2026, Mr. Frugoni states:
"The specification thus recites a closed-loop driver that is separate and distinct from the specified commands. A person skilled in the art readily understands that this driver is a software that enables an operating system to communicate with a hardware. Accordingly, if a driver is present there must necessarily be an operating system and a controller- i.e., a "control means," for performing the specified commands. The specification also recites a "hosiery program," which explicitly correlates to software that includes the specified commands."
The above statement clearly ties an operating system and a controller to the specific "closed-loop driver." However, the operating system and the controller tied to a "closed-loop driver do not necessarily control other drivers (if any), and/or perform other actions as required in the claims. In one word, the controller as asserted for the "closed-loop driver" does not have the same scope as the "control means" for performing all the actions of the three steps in the claims.
In addition, about the book "Francesco Viola's Circular Sock Knitting Machine Technology (published by Gesto in 1992)", the book including the term "hosiery program" does not necessarily mean one of ordinary skill in the art must interpret the term "hosiery program" the same way as in the book, because a term may have two or more common meanings. In this case, it would also be obvious to one of ordinary skill in the art that the term "hosiery program" can be an actual program of making hosiery; i.e., a sequence of machine actions when making hosiery. In addition, as previously discussed, the term "hosiery program" is even not a common term in both the patent documents and non-patent literature according to the Examiner's search results. Further, the original specification does not provide an express definition for "hosiery program"; the fact that Applicant can point to definitions or usages that conform to Applicant's interpretation does not make the PTO's definition unreasonable when the PTO can point to other sources (e.g., the term "program" defined as "a set of related measures or activities with a particular long-term" in Oxford Languages.) that support its interpretation. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Further, when a claim limitation invokes 112(f), Applicant must specifically disclose their corresponding structure and clearly link the structure, material, or acts to the function (MPEP 2181 (II)(A)). It is not sufficient that a POSITA could guess what it might be. In this case, one of ordinary skill in the art would recognize that a control means may encompass a wide variety of devices, e.g., a computer, a processor, a controller, a circuit, sensor(s), actuator(s), and/or valve(s), etc, rather than only a broad "ECU/CPU hardware" as Applicant asserted. However, the original disclosure does not provide any structure for the claimed "control means" and clearly link the structure to the function of controlling.
For the above reasons, Applicant's arguments are not persuasive.
Applicant's remarks: with respect to the 112(b) rejection to the claimed term "substantially simultaneously", Applicant asserts that "substantially simultaneously" refers to "commands executed within a single machine cycle or control processing window-i.e., commands that are dispatched as a synchronized burst from the ECU to multiple actuators and are all executed before the next machine state or functional step begins."
Examiner's response: Examiner respectfully disagrees.
First, Applicant does not provide the above definition for "substantially simultaneously" in the original disclosure.
Second, Applicant still does not provide a time scale even by referring to "a single machine cycle or control processing window."
Third, the original disclosure filed 01/11/2023 has set forth: the commands comprising: said command for stopping the machine, said command for restarting the machine; said command for waiting for the positioning of the cylinder, said command for the actuation of the step motor of the internal knitting lifting tube in the working position, said command for setting that positioning has occurred, and said command of the cylinder locking piston in the working condition being performed substantially simultaneously (p. 6, ll. 15-23; claim 7), which means the above commands have been actually performed by the machine, not just the commands being "transmitted" as "a synchronized burst from the ECU to multiple actuators." In addition, at least the actions "stopping the machine", "restarting the machine" and "waiting for the positioning of the cylinder" obviously cannot be performed in the same time scale of "a single machine cycle or control processing window". Similarly, the original disclosure also requires other commands "being performed substantially simultaneously", not just the commands being "transmitted" as "a synchronized burst from the ECU to multiple actuators", and the commands obviously cannot be performed in the same time scale of "a single machine cycle or control processing window." As such, the scope of "substantially simultaneously" provided in the Declaration does not appear to be in commensurate with the scope of "substantially simultaneously" in the original disclosure. All the above inconsistencies demonstrate a significant shift in the Declaration and Applicant’s arguments filed 04/27/2026, which are different from the original disclosure filed 01/11/2023.
Therefore, the 112(b) rejection is 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
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