DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. §§ 102 and 103 (or as subject to pre-AIA 35 U.S.C. §§ 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Remarks
The remarks filed 6 October 2025 have been fully considered.
The applicant argues, in regard to the rejection of claims 1 and 12 under 35 U.S.C. § 103 that:
“To reach the conclusion of obviousness, the examiner further relies upon Yun, suggesting that the person having ordinary skill in the art would expect valuable indications regarding improvements of Vierhouten. Yun is said to teach the use of support structures for the machinery used for manufacturing wooden chips.”
For clarity of the record, the examiner never said Yun teaches machinery used for manufacturing wooden chips. What the examiner said is that Yun teaches a mobile comminuting plant (Office Action at pg. 8). However, semimobile would be a better description since the containers of Yun are not mobile in and of themselves.
The applicant further argues that:
“… Yun is not a relevant prior art teaching. Yun refers to the manufacture of pellets from agricultural waste, namely rice husks. Rice husks differ very much from wooden raw material. It is much smaller to start with and much lighter. Accordingly, much lighter and smaller equipment is used. Thus, the different raw material properties indicate use of different equipment to the expert, namely the use of smaller units. Further, the product, pellets, is very much different from wooden chips. The rice husks are milled into fine fibers from which SiO2 is removed but no magnetic or non-magnetic waste is mentioned. The fibers are then pressed into pellets and the pellets are filled into containers and sold as fuel for private households.”
Yun is in the same field of endeavor as the applicant, namely, processing of organic material that includes comminution, and is also pertinent to the problem the applicant is faced with, namely, providing a semimobile processing plant. Therefore, Yun is indeed relevant prior art. Further, although rice husks are different than wood, it has been held that the material or article worked upon by a device being claimed does not impart patentability to the claims (MPEP § 2115). And it should be noted that the examiner only relies on Yun to teach putting the equipment in shipping containers, thereby making the processing plant semimobile. Regarding the assertion that the equipment of Yun is much lighter and smaller than that of the applicant’s invention, the examiner notes that the applicant has not claimed any particular size or weight for the claimed structures. The applicant’s specification (e.g., ¶ 12) states that the claimed carrying structures are 20 ft and/or 40 ft containers, which is the same as those of Yun.
Then the applicant argues that:
“Yun is also non-analogous art as being outside the field of invention of the present application, and also not reasonably pertinent to the problems faced by the present inventors. Reasonably pertinent to this issue is that the basic differences in Yun are reflected in the very different IPC citations. Yun is not listed in any class which applies to machinery for manufacturing wooden chips.”
Yun is in fact analogous prior art, for at least the reasons the examiner pointed out above. Also, IPC citations listed for foreign patent documents are not indicative of the complete field of search, and does not include every possible IPC group or subgroup that may be relevant. For example, the Vierhouten reference does not include any B02C subgroups even though the reference is directed largely to comminution of wood, and the Yun reference does not include Y02W30/52 even though the reference is directed largely to recycling rice husks. Each of said references should be classified in both of these IPC areas. As shown, classification of patent documents is not always complete and/or correct.
The arguments are unpersuasive for at least the reasons set forth above. Consequently, the prior art rejections have not been withdrawn.
Abstract Objections
The amendment to the abstract is sufficient to overcome the objection set forth in the previous Office Action.
Specification Objections
The amendment to the specification is sufficient to overcome the objection set forth in the previous Office Action.
Claim Objections
Claims 1, 5-6, 9 and 11 are objected to because of the following informalities.
In re claim 1: “comprising” in line 2 should be –comprising:– to be consistent with claim 12.
In re claim 5: “sorting (6, 10)” should be –sorting unit (6, 10)–
In re claim 6: “sorting (6, 10)” should be –sorting units (6, 10)–; and “comminuted material” should be –wood chips–
In re claim 9: “raw” should be deleted to be consistent.
In re claim 11: “and to control” in line 7 should –and configured to control–
Appropriate correction for the above list of issues is required.
Claim Interpretation
The amendment to claim 6 is sufficient to overcome the 35 U.S.C. § 112(f) interpretation set forth in the previous Office Action.
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 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) 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):
(A) the claim limitation uses the term “means” 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 entirely performing the claimed function;
(B) the term “means” 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 the generic placeholder is not modified by sufficient structure for entirely performing the claimed function.
Use of the word “means” 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). The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites sufficient structure to entirely perform the recited function.
Absence of the word “means” 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). The presumption that the claim limitation is not to be interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites a function without reciting sufficient structure to entirely perform the recited function.
Claim limitations in this application that use the word “means” are being interpreted under 35 U.S.C. § 112(f) except as otherwise indicated in an Office Action. Conversely, claim limitations in this application that do not use the word “means” are not being interpreted under 35 U.S.C. § 112(f) 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) because the claim limitation(s) use(s) a generic placeholder that is coupled with functional language without reciting sufficient structure to entirely perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such a claim limitation is:
“first mechanical sorting unit (6), for sorting material to be comminuted a first time” (clm. 1); the term “unit” is a nonce term, is coupled to the functional language “for sorting …”, and is not preceded by a structural modifier; the specification (¶ 23) lists the corresponding structure as “grates, screens, vibrating screens, shakers, or conveyor belts, in each case by means of air classification, e.g. via a suction air or compressed air line and/or by means of vibration”.
Because this claim limitation is being interpreted under 35 U.S.C. § 112(f), it is being interpreted to cover the corresponding structure described in the specification as entirely performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. § 112(f), applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. § 112(f) (e.g., by reciting sufficient structure to entirely perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to entirely perform the claimed function so as to avoid it being interpreted under 35 U.S.C. § 112(f).
Claim Rejections - 35 U.S.C. § 112(b)
The amendment to the claims is sufficient to overcome the rejections under 35 U.S.C. § 112(b) set forth in the previous Office Action.
Claim Rejections - 35 U.S.C. § 103
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office Action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8, 12, 14, 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Vierhouten Recycling (NL 8,400,874 A), hereafter ‘Vierhouten’, in view of Yun et al. (KR 2013-0017759 A).
In re claim 1, which is being examined as best understood: Vierhouten discloses a method for producing wood chips for the production of chipboards (abstract and pg. 4, last paragraph), using a system comprising:
a material supply unit (worm conveyor 15, fig. 1),
a first mechanical sorting unit (first sifting/screening unit 19), for sorting material to be comminuted a first time,
a material comminution unit (breaking unit 24, fig. 1),
a second mechanical sorting unit (cyclone 26, second sifting/screening unit 27), for sorting the comminuted material,
wherein the material is conveyed from the material supply unit through a first material-carrying line (sand screen 16) to the first mechanical sorting unit and is sorted, and is supplied from the first mechanical sorting unit through a second material-carrying line (elevator 23) to the material comminution unit and is comminuted therein so as to form wood chips, and is supplied from there through a third material-carrying line (the pipe having gas flow 25) to the second mechanical sorting unit, in which the wood chips are sorted by a machine (see fig. 1), whereupon the wood chips (3) are provided (via conveyor belt (29) for the production of chipboards (see fig. 1).
Vierhouten is silent regarding first, second, third, and fourth carrying structures each arranged so as to be semimobile on a foundation and/or on a supporting structure. However, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to provide Vierhouten with first, second, third, and fourth carrying structures each arranged to be semimobile on a foundation and/or on a supporting structure, one for each of the material supply unit, first mechanical sorting unit, material comminution unit, and second mechanical sorting unit, thereby making the system of Vierhouten semimobile, since it has been held that the “fact that a claimed device is portable or movable is not sufficient by itself to patentably distinguish over an otherwise old device unless there are new or unexpected results” (MPEP § 2144.04, subsection V.A).
Nevertheless, Yun teaches a mobile comminuting plant comprising a 40 ft container (A, fig. 3) and a 20 ft container (B) which house different units of the plant, wherein the containers and units are connected by a material carrying lines (900) (§ [0029]). Because Yun teaches the concept of providing carrying structures/containers for mobilizing the units of a comminuting plant, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to provide Vierhouten with first, second, third, and fourth carrying structures each arranged to be semimobile on a foundation and/or on a supporting structure, for the material supply unit, first mechanical sorting unit, material comminution unit, and second mechanical sorting unit, respectively, thereby making the system of Vierhouten semimobile, as taught by Yun. Further, note that it has been held that selecting a size and number of features (in this case containers and material carrying lines) taught in the prior art has no patentable significance unless an unexpected result is produced (MPEP § 2144.04, subsection IV.A & VI.B).
In re claim 2, which depends on claim 1: modified Vierhouten teaches containers are used for each carrying structure, wherein each carrying structure is covered at least in sections by a wall which forms a floor, wall, or ceiling of each container (see fig. 4 of Yun which shows a floor and side wall).
In re claim 3, which depends on claim 1: the “foundation” has not been positively recited as it was initially introduced in claim 1 in the “arranged to” language associated with the carrying structures. The claims do not require that the foundation is part of the carrying structures. Thus, the foundation is not germane to the patentability of the method, or to the system used for carrying out the method. As currently recited, the foundation could be interpreted as a trailer upon which the carrying structures are to be transported. Consequently, the claim is not being given patentable weight.
In re claim 4, which depends on claim 1: modified Vierhouten teaches the material supply unit (15, fig. 1 of Vierhouten) is arranged in the first carrying structure which comprises a container (as taught by Yun) to which the material is fed, the container comprises an outlet having a discharge screw (see fig. 1 of Vierhouten).
In re claim 5, which depends on claim 1: Vierhouten discloses the first mechanical sorting unit (19) and/or the second mechanical sorting unit (26, 27) each comprise at least one stage (see fig. 1).
In re claim 6, which depends on claim 1: Vierhouten discloses the first mechanical sorting unit (19) comprises a shaking chute (36) that separates off foreign matter from the material (fig. 1 and pg. 3, last paragraph).
In re claim 7, which depends on claim 1: Vierhouten discloses the material comminution unit (24, fig. 1) comprises a hammer mill having hammers (72).
In re claims 8 and 19, which depend on claims 1 and 8: modified Vierhouten is silent regarding a capacity of the material comminution unit being at least 6 to at most 10 tons/hour or 8 to 10 tons/hour, and a capacity of the first mechanical sorting unit and the second mechanical sorting unit being at least 8 to at most 20 tons/hour. However, the limitations are merely directed to the size of said units and the proportion of said units relative to each other, and would be met by the mere scaling up or down of the corresponding units of Vierhouten. Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Vierhouten to meet the claim limitations, since it has been held that where the only difference between the prior art and the claims is a difference in size and/or proportion and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP 2144.04, subsection IV.A).
In re claim 12: Vierhouten discloses a system, for producing wood chips for the production of chipboards (abstract and pg. 4, last paragraph), comprising:
a material supply unit (worm conveyor 15, fig. 1),
a first mechanical sorting unit (first sifting/screening unit 19), for sorting material to be comminuted a first time,
a material comminution unit (breaking unit 24, fig. 1),
a second mechanical sorting unit (cyclone 26, second sifting/screening unit 27),
wherein the material is conveyed from the material supply unit through a first material-carrying line (sand screen 16) to the first mechanical sorting unit and is sorted, and is supplied from the first mechanical sorting unit through a second material-carrying line (elevator 23) to the material comminution unit and is comminuted therein so as to form wood chips, and is supplied from there through a third material-carrying line (the pipe having gas flow 25) to the second mechanical sorting unit, in which the wood chips are sorted by a machine (see fig. 1), whereupon the wood chips (3) are provided (via conveyor belt (29) for the production of chipboards (see fig. 1).
Vierhouten is silent regarding first, second, third, and fourth carrying structures each arranged so as to be semimobile on a foundation and/or on a supporting structure. However, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to provide Vierhouten with first, second, third, and fourth carrying structures each arranged to be semimobile on a foundation and/or on a supporting structure, one for each of the material supply unit, first mechanical sorting unit, material comminution unit, and second mechanical sorting unit, thereby making the system of Vierhouten semimobile, since it has been held that the “fact that a claimed device is portable or movable is not sufficient by itself to patentably distinguish over an otherwise old device unless there are new or unexpected results” (MPEP § 2144.04, subsection V.A).
Nevertheless, Yun teaches a mobile comminuting plant comprising a 40 ft container (A, fig. 3) and a 20 ft container (B) which house different units of the plant, wherein the containers and units are connected by a material carrying lines (900) (§ [0029]). Because Yun teaches the concept of providing carrying structures/containers for mobilizing the units of a comminuting plant, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to provide Vierhouten with first, second, third, and fourth carrying structures each arranged to be semimobile on a foundation and/or on a supporting structure, for the material supply unit, first mechanical sorting unit, material comminution unit, and second mechanical sorting unit, respectively, thereby making the system of Vierhouten semimobile, as taught by Yun. Further, note that it has been held that selecting a size and number of features (in this case containers and material carrying lines) taught in the prior art has no patentable significance unless an unexpected result is produced (MPEP § 2144.04, subsection IV.A & VI.B). Modified Vierhouten teaches containers are used for each carrying structure, wherein each carrying structure is covered at least in sections by a wall which forms a floor, wall, or ceiling of each container (see fig. 4 of Yun which shows a floor and side wall).
In re claim 14, which depends on claim 12: the “foundation” has not been positively recited as it was initially introduced in claim 1 in the “arranged to” language associated with the carrying structures. The claims do not require that the foundation is part of the carrying structures. Thus, the foundation is not germane to the patentability of the method, or to the system used for carrying out the method. As currently recited, the foundation could be interpreted as a trailer upon which the carrying structures are to be transported. Consequently, the claim is not being given patentable weight.
Claims 9, 13 and 16-18 are rejected under 35 U.S.C. § 103 as being unpatentable over Vierhouten, in view of Yun, and further in view of Johnson (US 3,032,820 A).
In re claim 9, which depends on claim 1: modified Vierhouten is silent regarding at least one buffer unit for raw material and/or wood chips provided in at least one fifth carrying structure. However, Johnson teaches a method and apparatus for the manufacture of particle board wherein wood chips are held in a storage bins (6, 18; fig. 1). Because modified Vierhouten has all the different units of the system in carrying structures/containers to make the system semimobile, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Vierhouten to include at least one buffer unit for the wood chips, as taught by Johnson, in at least one fifth carrying structure, thereby providing modified Vierhouten with means for storing the wood chips, as taught by Johnson.
In re claim 13, which depends on claim 12: modified Vierhouten is silent regarding at least one buffer unit for raw material and/or wood chips provided in at least one fifth carrying structure. However, Johnson teaches a method and apparatus for the manufacture of particle board wherein wood chips are held in a storage bins (6, 18; fig. 1). Because modified Vierhouten has all the different units of the system in carrying structures/containers to make the system semimobile, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Vierhouten to include at least one buffer unit for the wood chips, as taught by Johnson, in at least one fifth carrying structure, thereby providing modified Vierhouten with means for storing the wood chips, as taught by Johnson.
In re claim 16, which depends on claim 12: modified Vierhouten teaches the carrying structures comprise an inlet for a material-carrying line which supplies material and comprises an outlet for a material-carrying line that discharges material (see fig. 3 of Yun which illustrates containers A and B connected at a respective inlet/outlet by a material-carrying line 900), wherein a material supply unit, a sorting unit, a material comminution unit, a material separator unit, or a buffer unit is arranged in the carrying structure (as taught in claim 12 above).
In re claim 17, which depends on claim 1: note that the production of the chipboards is not germane to the patentability of the method of producing wood chips of claim 1. Accordingly, the claim is not being given patentable weight. Nevertheless, Vierhouten discloses the chipboards are made from recycling wood (pg. 1, ¶ 1 of the Description; and pg. 4, last two paragraphs, “chipboard manufactured from [wood chips] 3”).
In re claim 18, which depends on claim 6: Vierhouten discloses the foreign matter is metal and/or plastics material (pg. 1, ¶ 2 of the Description).
Claims 10, 15 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Vierhouten, in view of Yun, and further in view of Bertolini (US 3,413,016 A).
In re claims 10 and 20, which depend on claims 1 and 10: modified Vierhouten does not explicitly teach fastening and carrier devices comprising screw or plug-in or form-fitting connections fitted on each carrying structure. However, Bertolini teaches a method of transporting containers wherein the method uses screw (35, 37), plug-in (62-63), and form-fitting (44-46) connections fitted on a carrying structure for connecting the containers in a compact transportable manner (see fig. 4 and 8-9). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Vierhouten to include screw, plug-in, and form-fitting connections fitted on each carrying structure for connecting the containers in a compact transportable manner, as taught by Bertolini.
In re claim 15, which depends on claim 12: modified Vierhouten does not explicitly teach fastening and carrier devices comprising screw or plug-in or form-fitting connections fitted on each carrying structure. However, Bertolini teaches a method of transporting containers wherein the method uses screw (35, 37), plug-in (62-63), and form-fitting (44-46) connections fitted on a carrying structure for connecting the containers in a compact transportable manner (see fig. 4 and 8-9). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Vierhouten to include screw, plug-in, and form-fitting connections fitted on each carrying structure for connecting the containers in a compact transportable manner, as taught by Bertolini.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Vierhouten, in view of Yun, and further in view of Coughlin (US 2016/0114364 A1).
In re claim 11, which depends on claim 1: modified Vierhouten is silent regarding a control unit arranged in a container and connected by control lines to the material supply unit, first mechanical sorting unit, material comminution unit, material-carrying lines, and second mechanical sorting unit to control each of said units and lines in an open-loop and/or closed-loop manner. However, Yun teaches the concept of electrically connecting each unit of a processing system to each other such that the entire system is integrated and collectively controlled by a control unit (§ [0101]). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Vierhouten to include a control unit arranged in a container and connected by control lines to the material supply unit, first mechanical sorting unit, material comminution unit, material-carrying lines, and second mechanical sorting unit to control each of said units and lines, thereby automating the process of Vierhouten as taught by Yun.
Modified Vierhouten does not explicitly teach the control unit is arranged in a container because Yun is silent regarding the location of the control unit. However, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to arrange the control unit within one of the containers/carrying structures of modified Vierhouten since it has been held that the particular placement of a feature taught in the prior art is an obvious matter of design choice as long as the placement does not modify the operation of the system (MPEP 2144.04, subsection VI.C). Arranging the control unit within a container would keep the control unit safe from environmental elements, thereby prolonging its service life.
The proposed modification does not explicitly teach the control unit operates in an open-loop and/or closed-loop manner. However, Coughlin teaches a portable waste processing system (abstract) controlled by a closed-loop control system (¶ 53). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Vierhouten such that the control unit operates in a closed-loop manner, as taught by Coughlin, because applying known techniques to yield predictable results requires only routine skill in the art (KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
Conclusion
Applicant’s amendment necessitated any new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jared O. Brown whose telephone number is (303)297-4445. The examiner can normally be reached on Monday - Friday: 7:00 - 4:00 (Mountain Time).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher (“Chris”) L. Templeton can be reached at 571-270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JARED O BROWN/Primary Examiner, Art Unit 3725