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 .
Response to Remarks
The remarks filed 1 April 2026 have been fully considered.
The applicant argues, in regard to the rejection of claims 1 and 12 under 35 U.S.C. § 103 that:
“Each of claims 1 and 12 have been amended to recite that the supply unit (4) is communicated with a source of wood material with a moisture content of up to 30 wt% and having a size of up to 500 mm. This subject matter is not disclosed or suggested by the art of record. Specifically, Vierhouten does not disclose this subject matter ...”
The argument is not persuasive. The limitation that the wood material has said moisture content and size is set forth in the preamble and, accordingly, is not being given patentable weight. Even if it were to be given patentable weight, it would not be necessary for the prior art to teach it since 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). If the applicant would like the material to be given patentable weight, they may positively recite the material as a feature of the claimed system in the body of the claim, for example, after the term “comprising” and before the “material supply unit”.
Then the applicant argues that:
“Initially in the office action, the general holding cited by the examiner that the fact that something is movable or portable does not, by itself, patentably distinguish over an old device unless there are new or unexpected results. In the present case, first off, the focus of the application is the use of the containers (4) for each unit of the system, such that the claims 1 and 12 recite far more than something simply being movable or portable, and thus it is submitted that this general statement of legal principal does not apply to the present situation. To supplement this holding, Yun is utilized for an obviousness rejection with Vierhouten.”
The argument is not persuasive. The examiner notes that the features (i.e., containers) upon which applicant relies are not recited in claim 1, only the broad term “carrying structures”. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, the applicant is their own lexicographer and, as such, can name features as they wish. “Carrying” can reasonably be interpreted as merely the name of the “structures” and, thus, “carrying structures” can be interpreted as just about any structure. Therefore, the legal principal does apply. Although carrying structures can be interpreted as structures for carrying, there is nothing in the claim that requires this interpretation. And for clarity of the record, the examiner is not relying on Yun to “supplement this holding” but, rather, they are two separate holdings that stand on their own merits, hence the use of “Nevertheless” at the beginning of the paragraph of the rejection that discusses Yun, and hence the two separate “it would have been obvious …” statements within said rejection, one for each of the holdings.
The remainder of the applicant’s arguments are on the grounds that the Yun reference is non-analogous art. The examiner would like to point out that the issue of analogousness of Yun has already been sufficiently addressed in the previous Office Action and, thus, no further response is necessary or required here. Nevertheless, for completeness, the examiner notes that the applicant has stated in their current remarks that:
“… the focus of the application is the use of the containers (4) for each unit of the system, such that the claims 1 and 12 recite far more than something simply being movable or portable …”
Therefore, the problem the applicant is faced with or is attempting to solve is how to make a comminution system portable using containers. Yun is pertinent to said focus of the application since Yun teaches the use of containers for units of a comminution system. If the applicant still strongly believes that Yun is non-analogous art, then the examiner encourages the applicant to exercise their right to appeal. Otherwise, any further arguments directed to the analogousness of Yun will not solicit response from the examiner on this matter. As an aside, it should be noted that even if the applicant were to be successful in an appeal such that the rejection is reversed, the claim would still be unpatentable over Vierhouten in view of Zhu (CN 110 813 484 A; on the IDS filed 27 June 2025).
The claims stand rejected in view of Vierhouten and Yun. Please see the current rejections below.
Claim Objections
Claims 1, 6 and 12 are objected to because of the following informalities.
In re claims 1 and 12: the claims would be in better form if “is communicated with” read as –is in communication with–.
In re claim 6: “method” should be –system–.
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 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.
Claims 1-20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Any claims not directly addressed are only rejected under 35 U.S.C. § 112(b) for being dependent on a rejected base claim.
In re claims 1 and 12: the claims recite “a material supply unit (4) arranged in at least one first carrying structure (3, 4a) and communicated with a source of the wood material” (emphasis added). It is unclear if the “source” is intended to be a positively-recited/required feature of the claimed systems as it is not shown in the drawings or described in the specification as being part of the system. For those reasons, it is not currently being interpreted as a required feature of the systems and, thus, the material supply unit must only be capable of being in communication with a source of the wood material.
Appropriate correction is required.
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 and 16-19 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 system for producing wood chips for the production of chipboards (abstract and pg. 4, last paragraph) by comminuting wood material with a moisture content of up to 30 wt% and having a size of up to 500 mm (the material is not a positively-recited/required feature of the claimed system and, thus, is not being given patentable weight), comprising:
a material supply unit (fig. 1, worm conveyor 15) in communication with a source of the wood material (the source of wood material in communication with the worm conveyor 15 is the bunker 12 and the unlabeled conveyor belt 11; also see pg. 3, ¶ 4; note that claims do not recite any particular structure for the source and do not require that it is the initial source of material to the system),
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 for processing organic material 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 for processing organic material, 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).
The examiner notes that Zhu (CN 110 813 484 A) also teaches these limitations.
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) by comminuting wood material with a moisture content of up to 30 wt% and having a size of up to 500 mm (the material is not a positively-recited/required feature of the claimed system and, thus, is not being given patentable weight), comprising:
a material supply unit (fig. 1, worm conveyor 15) in communication with a source of the wood material (the source of wood material in communication with the worm conveyor 15 is the bunker 12 and the unlabeled conveyor belt 11; also see pg. 3, ¶ 4; note that claims do not recite any particular structure for the source and do not require that it is the initial source of material to the system),
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.
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 9 and 13 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.
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
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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/JARED O BROWN/Primary Examiner, Art Unit 3725
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