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 .
Specification
The title of the invention is not descriptive; the use of “special” has no clear meaning. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: “Electrode Arrangement for the Targeted Ohmic Heating of Different Products or Structures That Are Electrically Conductive or Contain Electrically Conductive Constituents”.
Claim Objections
Claims 1-22 are objected to because of the following informalities: “the product, medium or structure” should be “the products, media or structures” to be consistent with the remaining claim language. The same applies to claim 2, 17, and 19. Additionally, the dependent claims are not consistent when referring to the product, medium or structure worked upon by the electrodes. The claims should be consistent throughout.
Claim 11 should replace “the electric perforation device” with “an electric perforation device” as this is the first recitation of such a device.
Claim 16 should recite replace “the” with “a/an” with respect to electrode tips/ends as this is the first recitation of such tip/end.
Appropriate correction is required.
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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.
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: " a device for electric perforation” in claim 11, “separating device” in claim 18, and “aeration or deaeration system for performing air conditioning in particular buildings” in claim 22.
Additionally, claim 13 recites “means for preservation into the respective product.”
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.
Claim limitations “device for electric perforation” and “aeration or deaeration system for performing air conditioning in particular buildings” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “device” and “system,” respectively” coupled with functional language “…for electric perforation…” and “to perform air conditioning,” respectively, without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. For instance, “aeration or deaeration” refer to acts, rather than any known structure for performing air conditioning in a building.
Additionally, claim limitation “separating device” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “device” coupled with functional language “for adjusting or regulating the amount to be heated” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. For instance, “separating” refers to an act, rather than any known structure for performing air conditioning in a building.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 11, 13, 18, and 22 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
With respect to the “device for electric perforation”, the specification states:
“As already briefly mentioned, the electrode arrangement according to the invention may be in association with a device for electric perforation (PEF), wherein at least one electrode is a component of the electric perforation device or can at least temporarily be interconnected in this respect.” See Para. 0027. Paragraphs 0053-0055, 0060, 0061, and 0066 also mention PEF.
With respect to the “means for preservation into the respective product,” the specification states:
Para. 0074 repeats the same claim language
With respect to the “separating device,” the specification states the following:
Para. 0090-0091 disclose the use of a diaphragm.
With respect to “aeration or deaeration system for performing air conditioning in particular buildings,” the specification states:
“A preferred use of the previously explained embodiment is in the area of aeration or deaeration systems for air-conditioning, here in particular buildings, and in turn in particular in buildings that are operated in an energy self-sufficient way or are provided with energy recovery systems from the building exhaust air.” Para. 0104
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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 11, 13, and 22 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 11 recites “a device for electric perforation” which is understood to invoke interpretation under 35 USC 112 (f). The specification, as detailed above, merely repeats the same claim language without specifying what structure(s) are included/excluded. As such, the specification lacks sufficient disclosure for the corresponding structure(s) of the claimed limitation.
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. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999).
If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b). The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means- (or step-) plus-function claim limitation. See id. at 1380, 53 USPQ2d at 1229; In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997). However, "[a] bare statement that known techniques or methods can be used does not disclose structure" in the context of a means plus function limitation. Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) (Disclosure that an invention "may be controlled by known differential pressure, valving and control equipment" was not a disclosure of any structure corresponding to the claimed "control means for operating [a] valving " and the claim was held indefinite).
Whether a claim reciting an element in means- (or step-) plus-function language fails to comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because the specification does not disclose adequate structure (or material or acts) for performing the recited function is closely related to the question of whether the specification meets the description requirement in 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See In re Noll, 545 F.2d 141, 149, 191 USPQ 721, 727 (CCPA 1976) (unless the means-plus-function language is itself unclear, a claim limitation written in means-plus- function language meets the definiteness requirement in 35 U.S.C. 112, second paragraph, so long as the specification meets the written description requirement in 35 U.S.C. 112, first paragraph).
The invocation of 35 U.S.C. 112(f) does not exempt an applicant from compliance with 35 U.S.C. 112(a) and 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, first and second paragraphs. See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 493 (CCPA 1973) ("[The sixth paragraph of section 112] cannot be read as creating an exception either to the description requirement of the first paragraph … or to the definiteness requirement found in the second paragraph of section 112. Means-plus-function language can be used in the claims, but the claims must still accurately define the invention.").
Claim 13 recites “a means for preservation into the respective product” which is understood to invoke interpretation under 35 USC 112 (f). The specification, as detailed above, merely repeats the same claim language without specifying what structure(s) are included/excluded. As such, the specification lacks sufficient disclosure for the corresponding structure(s) of the claimed limitation.
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. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999).
If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b). The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means- (or step-) plus-function claim limitation. See id. at 1380, 53 USPQ2d at 1229; In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997). However, "[a] bare statement that known techniques or methods can be used does not disclose structure" in the context of a means plus function limitation. Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) (Disclosure that an invention "may be controlled by known differential pressure, valving and control equipment" was not a disclosure of any structure corresponding to the claimed "control means for operating [a] valving " and the claim was held indefinite).
Whether a claim reciting an element in means- (or step-) plus-function language fails to comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because the specification does not disclose adequate structure (or material or acts) for performing the recited function is closely related to the question of whether the specification meets the description requirement in 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See In re Noll, 545 F.2d 141, 149, 191 USPQ 721, 727 (CCPA 1976) (unless the means-plus-function language is itself unclear, a claim limitation written in means-plus- function language meets the definiteness requirement in 35 U.S.C. 112, second paragraph, so long as the specification meets the written description requirement in 35 U.S.C. 112, first paragraph).
The invocation of 35 U.S.C. 112(f) does not exempt an applicant from compliance with 35 U.S.C. 112(a) and 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, first and second paragraphs. See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 493 (CCPA 1973) ("[The sixth paragraph of section 112] cannot be read as creating an exception either to the description requirement of the first paragraph … or to the definiteness requirement found in the second paragraph of section 112. Means-plus-function language can be used in the claims, but the claims must still accurately define the invention.").
Claim 12 recites “an aeration or deaeration system for performing air-conditioning in particular in buildings” which is understood to invoke interpretation under 35 USC 112 (f). The specification, as detailed above, merely repeats the same claim language without specifying what structure(s) are included/excluded. As such, the specification lacks sufficient disclosure for the corresponding structure(s) of the claimed limitation.
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. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999).
If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b). The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means- (or step-) plus-function claim limitation. See id. at 1380, 53 USPQ2d at 1229; In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997). However, "[a] bare statement that known techniques or methods can be used does not disclose structure" in the context of a means plus function limitation. Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) (Disclosure that an invention "may be controlled by known differential pressure, valving and control equipment" was not a disclosure of any structure corresponding to the claimed "control means for operating [a] valving " and the claim was held indefinite).
Whether a claim reciting an element in means- (or step-) plus-function language fails to comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because the specification does not disclose adequate structure (or material or acts) for performing the recited function is closely related to the question of whether the specification meets the description requirement in 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See In re Noll, 545 F.2d 141, 149, 191 USPQ 721, 727 (CCPA 1976) (unless the means-plus-function language is itself unclear, a claim limitation written in means-plus- function language meets the definiteness requirement in 35 U.S.C. 112, second paragraph, so long as the specification meets the written description requirement in 35 U.S.C. 112, first paragraph).
The invocation of 35 U.S.C. 112(f) does not exempt an applicant from compliance with 35 U.S.C. 112(a) and 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, first and second paragraphs. See Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 493 (CCPA 1973) ("[The sixth paragraph of section 112] cannot be read as creating an exception either to the description requirement of the first paragraph … or to the definiteness requirement found in the second paragraph of section 112. Means-plus-function language can be used in the claims, but the claims must still accurately define the invention.").
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 1-22 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.
Claim 1 recites a “special” electrode arrangement which renders the claim indefinite as the term “special” is a subjective term that is not defined by the specification. Rather, the instant specification merely repeats the same claim language without providing any meaning as to what makes the claimed electrode arrangement “special.” For instance, it is unclear if the electrode arrangement is “special” in that it is manufactured a certain way, contains specific materials, is of a specific shape, etc. As best understood, the claim, as a whole, would have the same meaning without the term “special.” Based on the lack of direction given in the specification, it is unclear if “special” is intended to convey some form of limitation to the electrode arrangement of if such term is merely superfluous.
Claim 1 recites that the electrodes are insulated with respect to the product being treated with “the exception of an electrode surface area,” which renders the claim indefinite as the “electrode surface area” is not defined in the claim and it is not clear what surface area of the electrode is intended to be insulated with respect to the product, what surface area is not. Here, surface area can be understood to refer to the entire surface area of the electrode, which then creates further confusion. It is unclear if Applicant is intending for the entire surface area of the electrode to be insulated with respect to the product or a subset; for instance, the surface area in contact with the product.
Claim 3 recites “having a punctual, circular or radially or radiantly” which renders the claim indefinite as it is unclear what the alternatives are supposed to be as a result of a lack of punctuation. For instance, the claim can be properly read to mean “punctual, circular, radially, or radiantly” and “punctual, circular or radially, or radiantly” which have varying scopes making the intended scope unclear.
Claim 3 recites “the electrical insulation is conducted up into the tip area, or the tip is realized so that it can be left free” which renders the claim indefinite as it is unclear what is meant by the electrical insulation being conducted up to the tip area. Electrical insulation is a material property that is not understood to be conducted. Conversely, it is understood what is meant by current being conducted from point A to point B. However, it is unclear what is meant by conducting electrical insulation.
Claim 3 recites “electrically controlled optionally individually” renders the claim indefinite as the lack of punctuation makes the intended scope unclear. For instance, it is unclear if the claim should be understood to mean that the electrodes must be interconnected and electrically controlled where such control can, optionally, be individually or if the aspect of electrically controlling the electrodes is itself an optional limitation.
Claim 4 recites that the electrodes are embedded in a carrier which renders the claim indefinite as it is unclear in what way, if any, the carrier of claim 4 relates to the carrier of claim 1. It is unclear if claim 4 is intending to further define the carrier of claim 1 or if the intention is for there to be two distinct carriers. As such, it is unclear as to the cooperative relationship between the insulating carrier of claim 1 and the carrier of claim 4.
Claim 5 recites “relatively movable, in particular, slidable” which renders the claim indefinite as it is unclear if what follows “in particular” is a required limitation or merely optional.
Claim 6 recites “the product of treatment” which renders the claim indefinite as such phrase lacks proper antecedent basis and it is unclear if reference is being drown to the “product, media or structures” recited in claim 1.
Claim 6 recites that the electrodes are a component of a shaping body or shaping wrapping, which creates confusion as claim 1 requires the electrode arrangement to “consisting of” at least one electrode group, with the group comprising several individual electrodes. The confusion lies in the fact that it is unclear if the body/wrapping is a component of the electrode group, the electrode arrangement, or something else, of in the shaping body/wrapping is the intended use of the claimed electrode arrangement. Based on the ambiguity it is unclear if the electrode group comprising the body/wrapping would be included in the scope given the use of “consisting of” language in claim 1, which is a closed transitional phrase.
Claim 6 recites “the individual electrodes, with respect to the body or the wrapping, can be realized to be movable relative to it” which renders the claim indefinite as it is unclear as to what “it” refers. Do the electrodes move towards the body/wrapping or the product being heated?
Claim 7 recites “the product of treatment” which renders the claim indefinite as such phrase lacks proper antecedent basis and it is unclear if reference is being drown to the “product, media or structures” recited in claim 1.
Claim 8 recites “wherein the so-called skin effect aimed at via the conductive coating or wrapping and during application of alternating current to the product of treatment” which renders the claim indefinite. First, “the so-called skin effect” lacks proper antecedent basis and it is unclear what is being claimed. Further, it is not clear what is being claimed as the aforementioned limitation appears to be a sentence fragment. This limitation requires two parts: 1) the so-called skin effect being “aimed at via the conductive coating or wrapping” and 2) “during application of alternating current.” It is unclear what is meant by “aimed at via.” Further, it is unclear what is actually occurring during the application of alternating current. Does the conductive coating/casing undergo a “skin effect” when alternating current is applied to the electrodes/product being heated?
Claim 8 recites “the product of treatment” which renders the claim indefinite as such phrase lacks proper antecedent basis and it is unclear if reference is being drawn to the “product, media or structures” recited in claim 1.
Claim 9 recites “these are introduced or are introducible as stripe electrodes” which renders to the claim indefinite as it is unclear as to what “these” are referring; the “electrode arrangement,” “the electrode group,” any of the “individual electrodes,” a combination, or to something else.
Claim 9 recites “the product of treatment” which renders the claim indefinite as such phrase lacks proper antecedent basis and it is unclear if reference is being drown to the “product, media or structures” recited in claim 1.
Claim 10 recites “the product of treatment” which renders the claim indefinite as such phrase lacks proper antecedent basis and it is unclear if reference is being drown to the “product, media or structures” recited in claim 1.
Claim limitation “a device for electric perforation” 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. As detailed above, the specification lacks sufficient disclosure as to the corresponding structure(s) for the claimed device. 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 11 recites “wherein at least one individual electrode is a component of the electric perforation device or can be interconnected with such an electrode” which renders the claim indefinite as it is unclear what is meant by the “at least one electrode” being “interconnected with such an electrode.” It seems the claim should recite “or can be interconnected with the electric perforation device.”
Claim 12 recites “tempered, in particular cooled” renders the claim indefinite as it is unclear if what follows “in particular” is required or optional. Furthermore, it is understood, as it is conventional in the art, for tempering to involve heat treating in which the material being treated is heated and then cooled. Based on this understanding, it is unclear what Applicant intends “in particular cooled” to mean.
Claim limitation “means for preservation into the respective product” 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. As detailed above, the specification lacks sufficient disclosure as to the corresponding structure(s) for the claimed device. 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 14 recites “it allows to execute a targeted static charging or discharging” which renders the claim indefinite as it is unclear as to what “it” is referring; the electrode arrangement, the electrode group, a specific electrode, etc.
Claim 15 recites “it is designed as a tube or rod bundle” which renders the claim indefinite as it is unclear as to what “it” is referring; the electrode arrangement, the electrode group, a specific electrode, etc.
Claim 16 recites “an even removable insulation wrapping” which renders the claim indefinite as it is unclear as to the intended meaning of “even.” In other words, the claim could be properly read to mean that the electrode tips “have an insulation wrapping that is evenly removable” and “have an evenly disposed insulation wrapping that is removable.” As the aforementioned interpretations have different scopes, it is unclear what the intended scope of the claim should be.
Claim 16 recites an “insulation wrapping” disposed relative to the tips/ends of the electrodes which renders the claim indefinite as it is unclear in what way, if any, the insulation wrapping relates to the insulating carrier recited in claim 1.
Claim 19 recites that the electrodes are “constituents of a heating surface structure or heating plate structure which receives or contains the product or medium” which renders the claim indefinite as it is unclear if Applicant is intending for the electrode arrangement to include the heating surface/plate structure or if the aforementioned structure is merely the intended use of the electrode arrangement. The scope of the claim is unascertainable as it is unclear if the electrode arrangement includes the heating surface/plate structure, if the electrode arrangement requires specific structure or cooperative relationships to be constituents of the heating surface/plate structure, or if the electrodes merely require the capability of being coupled to the heating surface/plate structure.
Claim 22 recites that the electrodes are “integrated in an aeration or deaeration system” which renders the claim indefinite as it is unclear if Applicant is intending for the electrode arrangement to include the system or if the aforementioned system is merely the intended use of the electrode arrangement. The scope of the claim is unascertainable as it is unclear if the electrode arrangement includes the system, if the electrode arrangement requires specific structure or cooperative relationships to be integrated in the system, or if the electrodes merely require the capability of being coupled to the system.
Claim 22 recites “for performing air conditioning in particular in buildings” which renders the claim indefinite as it is unclear if what follows “in particular” is required or merely optional.
Claim limitation “aeration or deaeration system for performing air-conditioning” 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. As detailed above, the specification lacks sufficient disclosure as to the corresponding structure(s) for the claimed device. 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 Rejections - 35 USC § 102
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.
Claim(s) 1-7, 9, 11, 14, 15, and 17-22 is/are rejected under 35 U.S.C. 102(1) as being anticipated by Kasevich (USP 6413399).
Regarding claim 1, Kasevich teaches a special electrode arrangement for targeted ohmic heating of different inorganically or organically based products, media or structures that are electrically conductive or contain electrically conductive constituents including products of plant or animal origin (heating of soil as a result of applied electric wave. See 5:20-34; “As this current traverses contaminated soil 34 having finite conductivity, a portion of the energy carried by the current is transformed into heat. The heat thus generated raises the temperature of any volatile contaminants present in the contaminated soil 34 and thereby hastens their evaporation.”) (See also 1:27-34; “A known method of heating the soil is to bore pairs of holes into the soil and to insert electrodes into those holes. When a voltage is applied between the electrodes, current flows from one electrode, through the soil, and into the other electrode. As the current passes through the soil, it encounters resistance. This resistance results in the generation of heat.”), consisting of at least one electrode group (Fig. 3-7) comprising several individual electrodes (12, 16, 24) (4:31-42; penetrating soil 34),
characterized in that the individual electrodes (12, 16, 24) are arranged spaced from one another in an insulating carrier and are designed to be insulated with respect to the product, medium or structure to be treated or the structure to be treated with the exception of an electrode surface area (insulating jacket 17 forming insulated sections 12a, 16a, 24a with the tip/surface area 12b, 16b, 24b exposed or not having insulation) (4:25-30 discloses insulating jacket being PVC or PTFE) (4:50-60; “In effect, the uninsulated sections 12b, 16b, 24b, 28b of the electrodes 12, 16, 24, 28 define a remediation zone 38 in which soil-heating currents will be generated. The electrodes 12, 16, 24, 28 are thus buried in such a way as to cause the remediation zone 38 to overlap, to the greatest extent possible, with the contaminated soil 34.”) (5:44-60; “Because current can only flow from the electrically exposed surfaces of the uninsulated sections 12b, 16b, 24b, 28b of the electrodes 12, 16, 24, 28, the geometry of the remediation zone can be readily adjusted by changing the position and the surface area of the electrically exposed surfaces on the uninsulated sections 12b, 16b, 24b, 28b.”).
Regarding claim 2, Kasevich teaches the claimed invention, as detailed in claim 1, and further teaches characterized in that the carrier serves the purpose of directly shaping the product or structure or indirectly of supporting such a shaping (Fig. 3; 17 at least partially aids in shaping as the electrodes penetrate the product).
Regarding claim 3, Kasevich teaches the claimed invention, as detailed in claim 1, and further teaches characterized in that the electrode group has a plurality of mutually insulated individual electrodes (12, 16, 24) having a punctual, circular or radially or radiantly formation extending around an imaginary center point (Figure 1), and the individual electrodes can be interconnected (See circuit diagram of Fig. 2) and electrically controlled optionally individually, in a subset of the individual electrodes, or at the same time.
Regarding claim 4, Kasevich teaches the claimed invention, as detailed in claim 1, and further teaches characterized in that the individual electrodes are embedded in a convex, concave, half shell-like or shell-like carrier (insulating carrier 12a, 16a, 24a define, at least partially, a shell-like material around the electrodes).
Regarding claim 5, Kasevich teaches the claimed invention, as detailed in claim 1, and further teaches characterized in that the individual electrodes are arranged within the carrier to be relatively movable, in particular, slidable (5:44-61; “Because current can only flow from the electrically exposed surfaces of the uninsulated sections 12b, 16b, 24b, 28b of the electrodes 12, 16, 24, 28, the geometry of the remediation zone can be readily adjusted by changing the position and the surface area of the electrically exposed surfaces on the uninsulated sections 12b, 16b, 24b, 28b. For example, if a remediation zone is to be a thin layer, as shown in FIG. 6, one can reposition the insulating jacket surrounding the insulated sections 12a, 16a, 24a, 28a of the electrodes 12, 16, 24, 28 to increase the surface area of the insulated sections 12a, 16a, 24a, 28a at the expense of the exposed surface area of the uninsulated sections 12b, 16b, 24b, 28b, as shown in FIG. 6. Conversely, if the remediation zone is to be a thick layer, one can reposition the insulating jacket to increase the exposed surface areas of the uninsulated sections 12b, 16b, 24b, 28b of the electrodes 12, 16, 24, 28 at the expense of the surface areas of their insulated sections 12a, 16a, 24a, 28a, as shown in FIG. 7.”).
Regarding claim 6, Kasevich teaches the claimed invention, as detailed in claim 2, and further teaches characterized in that, with respect to the product of treatment, the individual electrodes are a component of a shaping body or a shaping wrapping [The claimed invention is directed to the electrode arrangement and not to the shaping body/wrapping component. The claim, under broadest reasonable interpretation, is understood to mean that the electrodes are capable of being a component of the shaping body/wrapping. In this case, the claim does not describe or define any additional structural requirements of the electrode arrangement or the individual electrodes. Accordingly, the electrodes of Kasevich are structurally capable of being a component of a shaping body or shaping wrapping. See MPEP 2112 and 2114. Furthermore, the electrodes of Kasevich, penetrating the product being treated, partially aid in shaping the product and, as such, are considered a component of a shaping body.], wherein the individual electrodes, with respect to the body or the wrapping, can be realized to be movable relative to it, or are formed to be puncturing or penetrating the body or the wrapping and to be retractable (as previously described).
Regarding claim 7, Kasevich teaches the claimed invention, as detailed in claim 1, and further teaches characterized in that the individual electrodes consist of a metallic, electrically conductive material, of conductive plastics or conductive ceramics or contain such materials (the electrodes of Kasevich, by definition, contain an electrically conductive material), and the electrode surface is provided with an anti-stick coating with respect to the product of treatment (4:25-30 discloses insulating jacket being PVC or PTFE).
Regarding claim 9, Kasevich teaches the claimed invention, as detailed in claim 1, and further teaches characterized in that these are introduced or are introducible as stripe electrodes into the insulating carrier that is shaping with respect to the product of treatment (see claim 1 above, and Figure 3) [the electrodes are structurally capable of being introduced as stripe electrodes into the insulating carrier. See MPEP 2112 and 2114].
Regarding claim 11, Kasevich teaches the claimed invention, as detailed in claim 1, and further teaches characterized in that it is in association with a device for electric perforation, wherein at least one individual electrode is a component of the electric perforation device or can be electrically interconnected with such an electrode.
Regarding claim 11, Kasevich teaches the claimed invention, as detailed in claim 1, and further teaches characterized in that it is in association with a device for electric perforation, wherein at least one individual electrode is a component of the electric perforation device or can be electrically interconnected with such an electrode. (As detailed in claim 1, the electrodes are for piercing into or perforating soil. Claim 13 does not positively recite any additional structure).
Regarding claim 14, Kas