CTFR 18/040,668 CTFR 87946 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Response to Arguments Applicant argues that “placement unit,” “slit unit,” and “delivery unit” should not be interpreted under 35 USC 112(f) because the “units” are not nonce terms and because, when read in light of the disclosure, have definite shapes and structures. This is not persuasive. The word “unit” is clearly a placeholder, since one of ordinary skill in the art would have no idea what structure it referred to. Further, the recitations describing these units in the specification makes the limitations at issue definite, but does not preclude interpretation under 35 USC 112(f). Finally, the supposed structure describing the slit unit is not structure at all. Rather, it is a description of holes. Holes are the absence of structure. The slit unit is a nonce term used to functionally describe the structure in which said holes reside. The indefiniteness rejection of claim 1 is withdrawn in light of applicant’s amendment. Applicant asserts that the word “eatable” is definite because the instant disclosure describes sterilizing a covering of an eatable part of food. This is unpersuasive. Applicant relies on circular logic to defined a subjective term. Such circular logic does nothing to clarify the scope or meaning of the term “eatable.” Further, the subjective nature of the term “eatable” is not remedied by applicant’s arguments or the above noted circular argument. Whether a given item is “eatable” is entirely dependent upon context, edibility, and even personal preferences. As such, one of ordinary skill in the art could not reasonably determine the scope of the claims in light of the term “eatable.” Applicant argues that the amended claims are patentable over Meissner in view of Avnery. In particular, applicant notes that the openings of Avnery are aligned with the axial direction of the rotary transfer system therein, and, as such, when combined with Meissner this would yield a hole arrangement that is 90 degrees off of the hole arrangement claimed. This is not persuasive. If, as applicant asserts, the proposed combination yields a hole arrangement that is 90 degrees off of that shown in instant claim 1a, then the combination still teaches the claim. This is because an egg, such as is irradiated in Meissner, is three dimensional, and the high point thereof is a high point in both the X and Y directions. To wit, even turned 90 degrees, the hole arrangement of Avnery still teaches the entire slit unit limitation. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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 placement unit for the process-target object” in claim 1, which is understood from the specification to indicate a stage. “a slit unit arranged between the process-target object and the electron-beam irradiator unit, wherein the process-target object includes a high portion and a low portion lower than the high portion, the slit unit includes a plurality of openings a…” in claim 1, which is understood from the specification to correspond to a metal member having slits therein. “delivery unit configured to deliver the process-target object while rotating” in claim 6, which is understood from the disclosure to refer to a conveyor or rollers. 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 Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 9-10 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. Claims 9 and 10 use the term “eatable.” It is unclear what is meant by this limitation in the claims, since the word “eatable” is usually used to describe the subjective quality of a food, The above indefinite claims will be examined as best understood in light of the specification. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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 (i.e., changing from AIA to pre-AIA) 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. 07-20-aia AIA 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim s 1, 4, 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0200579 A1 [ Meissner ] in view of US 2003/0218414 A1 [ Avnery ] . Regarding Claim 1: Meissner teaches a sterilizing device configured to sterilize a process-target object by irradiating the process-target object with electron beam (abstract), comprising: an electron-beam irradiator unit configured to irradiate the process-target object with the electron beam (Fig. 1 (2)); a placement unit for the process-target object (this is interpreted under 35 USC 112(f) to correspond to a be a stage. A stage is shown in Fig. 1 (5)); and a metallic electron baffle arranged between the process-target object and the electron-beam irradiator unit (Fig. 1 (4), para 84), wherein the process-target object includes a high portion and a low portion lower than the high portion (see eggs in Fig. 1). However, Meissner fails to teach a slit unit arranged between the process-target object and the electron-beam irradiator unit wherein the slit unit includes a plurality of openings and is arranged to be above the high portion of the process-target object, and an opening rate in a second region of the slit unit corresponding to the high portion is smaller than an opening rate in a first region of the slit unit corresponding to the low portion. Avnery teaches an electron source (Fig. 3 (44)) having housing (42) comprising a series of openings (Fig. 6 (52)), wherein the slots are arranged to be above a target (see e.g. Fig. 7a), and an opening rate in a middle region of the slit unit, which would correspond to a high portion, is smaller than an opening rate in an outer region, which would correspond to a low portion (Fig. 6, para 43). It would have been obvious to one of ordinary skill in the art before the effective time of filing to use Avnery’s housing structure (42) with its hole arrangement (See Fig. 6) as the electron baffle of Meissner . One would have been motivated to do so since this would allow one to provide a desired electron irradiation intensity profile, as is explained in Avnery para 43. Regarding Claim 4: The modified invention of claim 1 teaches the sterilizing device according to claim 1, teach that the slit unit includes a plurality of openings, and a width of the opening of the slit unit on the high portion is smaller than a width of the opening of the slit unit on the low portion. See Avnery Fig. 6. However, the prior art of record fails to teach that the openings are rectangular. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective time of filing to change the shape of the openings (52) from circular to square with the same respective areas as said circles. This is because a change in shape of an aperture is an obvious engineering choice with predictable results. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Regarding Claim 6: The modified invention of claim 1 teaches the sterilizing device according to claim 1, wherein the placement unit is a delivery unit configured to deliver the process-target object while rotating it so that the process-target object passes in a region irradiated with the electron beam from the electron-beam irradiator unit. Meissner Fig. 11 (47), para 128. Regarding Claim 7: The modified invention of claim 6 teaches the sterilizing device according to claim 6, wherein the delivery unit includes a plurality of rollers supported about an axis ( Meissner Fig. 11 (47), para 128, claims 9-10), and the process-target object is delivered while rotating in an opposite direction to a rotation direction of the roller. Meissner Figs. 12-13. Regarding Claim 8: The modified invention of claim 1 teaches the sterilizing device according to claim 1, but fails to specify that a surface dose on the process-target object is equal to or higher than 0.1 kGy and equal to or lower than 10 kGy. That said, this limitation is to an object treated by the apparatus of claim 1, not to the apparatus itself. As such, it has no patentable weight. In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). To the extent that this limitations speaks to the claimed apparatus at all, it is only in that the sterilizing device must be able to provide a surface dose. As is evident from Meissner Fig. 8 and para 122, it has such an ability. Furthermore, it is noted that the base unit of a Gray is m 2 /s 2 . This demonstrates that dose is dependent upon the time of exposure. Thus, Meissner’s demonstration of doses higher than those claimed demonstrates that the claimed doses can be achieved by simply reducing the time of exposure, i.e. with no change in the device. Regarding Claim 9: The modified invention of claim 1 teaches the sterilizing device according to claim 1, but fails to specify an X-ray dose on an eatable part inside of the process-target object is equal to or lower than 0.1 Gy. Again, this limitation describes an object treated by the apparatus of claim 1, not the apparatus itself. As such, it has no patentable weight. In re Otto . To the extent that this limitations speaks to the claimed apparatus at all, it is only in that the sterilizing device must be able to provide a surface dose. As is evident from Meissner Fig. 8 and para 122, it has such an ability. Furthermore, it is noted that the base unit of a Gray is m 2 /s 2 . This demonstrates that dose is dependent upon the time of exposure. Thus, Meissner’s demonstration of doses higher than those claimed demonstrates that the claimed doses can be achieved by simply reducing the time of exposure, i.e. with no change in the apparatus. Regarding Claim 10: The modified invention of claim 1 teaches the sterilizing device according to claim 1, wherein the process-target object is a food having an eatable part and a surface part covering the eatable part. This limitation describes an object treated by the apparatus of claim 1, not the apparatus itself. As such, it has no patentable weight. In re Otto . Regardless, Meissner teaches irradiating eggs, which would meet the above limitations. Conclusion 07-39 AIA THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. WYATT STOFFA Primary Examiner Art Unit 2881 /WYATT A STOFFA/Primary Examiner, Art Unit 2881 Application/Control Number: 18/040,668 Page 2 Art Unit: 2881 Application/Control Number: 18/040,668 Page 3 Art Unit: 2881 Application/Control Number: 18/040,668 Page 4 Art Unit: 2881 Application/Control Number: 18/040,668 Page 5 Art Unit: 2881 Application/Control Number: 18/040,668 Page 6 Art Unit: 2881 Application/Control Number: 18/040,668 Page 7 Art Unit: 2881 Application/Control Number: 18/040,668 Page 9 Art Unit: 2881 Application/Control Number: 18/040,668 Page 10 Art Unit: 2881 Application/Control Number: 18/040,668 Page 11 Art Unit: 2881 Application/Control Number: 18/040,668 Page 12 Art Unit: 2881 Application/Control Number: 18/040,668 Page 13 Art Unit: 2881
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