DETAILED ACTION
This office action addresses claims 1-7, 11, 14, 16-19, 22, 23, 27, and 30-33 as set forth in the Applicant’s response filed on April 8, 2023.
As indicated by the Electronic Acknowledgement Receipt filed on October 13, 2022, the selected Application Type is Utility – Nonprovisional Application under 35 USC 111(a).
On April 8, 2023, the Applicant submitted fees for a Utility – Nonprovisional Application including the Utility Patent Application Search Fee and the Basic Filing Fee (as opposed to Reissue Filing Fees).
It is noted that since the Applicant indicated that the instant application was filed as a regular utility application (as opposed to Utility – Reissue), then the instant application is treated as a regular non-provisional application (i.e. non-Reissue).
Applicant may file a petition under 37 CFR 1.182 to have this application treated as a reissue application under 35 USC 251. Applicant should point out in the petition what, as of the filing date in the record, supports the filing as a reissue application under 35 USC 251. Further, applicant should ensure the application fulfills all of the requirements for a reissue application. See 35 USC 251 and 37 CFR 1.172, 1.173 and 1.175. With respect to the required fees, see 37 CFR 1.16(e), (n) and (r).
Priority
This application is claiming the benefit of prior-filed application No. 11/332,854 under 35 U.S.C. 120, 121, 365(c), or 386(c). It is noted that the prior-filed application was published on October 13, 2020 which is two years prior to the filing of the instant regular utility application. Copendency between the current application and the prior application is required. Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.
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.
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 (see claim 33) 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.
Claim Rejections - 35 USC § 102
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.
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, 11, 14, 16-19, 22, 23, 27, and 30-33 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US Patent No. 10,803,126.
It is noted that the instant application and the Patent No. 10,803,126 share the same disclosure. As explained above, since pendency has not been established, US Patent No. 10,803,126 qualifies as prior art under AIA 35 USC 102(a)(1) with respect to the instant non-provisional application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ovidio Escalante whose telephone number is (571)272-7537. The examiner can normally be reached on Monday to Friday - 6:00 AM to 2:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling, can be reached at telephone number 571-270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ovidio Escalante/
Ovidio Escalante
Primary Examiner
Central Reexamination Unit - Art Unit 3992
(571) 272-7537
Conferees:
/MINH DIEU NGUYEN/Primary Examiner, Art Unit 3992 /MICHAEL FUELLING/Supervisory Patent Examiner, Art Unit 3992
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