FINAL OFFICE ACTION
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
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 .
Priority
Acknowledgment is made of applicant's claim for priority based on an application filed in GERMANY on 2 FEB 2022. The certified copy of the application was filed 29 Oct 2025.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The Abstract of the Disclosure is objected to because:
The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
Line 1: “the disclosure provides” is an improper implied phrase.
Correction is required.
The revised title of the invention is approved.
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 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 terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000). "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). See MPEP 2112.
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.
Claims 1-3, 5-8, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by NEIER et al. (US 2011/0121114 A1) that discloses the recited feed mixer [0001] -[0003] with a variable pitch auger in Figures 1-11 and at ¶ [0034] and [0042]; including an open tub mixing container 102; a mixing auger 200 rotatable about a vertical axis and mounted in the mixing container 102; the recited taper of the auger is disclosed at [0002], [0015], [0034], [0042]; the auger having blades/flights 204 or 206 mounted on and attached to an auger tower 202 [0034]; the pitch of the auger increases in the recited percentages and in a stepwise manner upwardly per [[0034], [0042] and claims 9 and 20, namely from [0034] the pitch of the lower portion 216 of the first flight 204 is generally constant across its entire extent wherein the pitch of the upper portion 218 of the first flight 204 is also generally constant across its entire extent; however, the pitch of the upper portion 218 is a little steeper than the pitch of the lower portion 216, in order to quickly move the materials vertically; claim 7 - see the Figures showing the auger blades; claim 8 is met by [0028] - [0030]; claims 11-12 are met by [0047]; and claim 13 is met by [0001] -[0003].
Claims 1-3, 5-8, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2007/037693 A2 that discloses the recited feed mixer (page 1, lines 1-6) and with reference to the underlined language below with a variable pitch auger 75 in the Figures 20-22 and at page 14, last paragraph; including an open tub mixing container 1; a mixing auger 75 rotatable about a vertical axis and mounted in the mixing container 1; the recited taper of the auger is seen in Figures 20-22; the blade 76 is mounted on and attached to an auger tower 78; the blade 76 has a lower portion 83 and an upper portion 84 wherein the pitch of the blade 76 near the bottom end 83 is smaller than the pitch of the higher portion of the blade 76 that is indicated at 84, thus the pitch of the auger increases upwardly in the recited percentages and in a continuous or stepwise manner per the last paragraph on page 14 and in Figures 20-22; for claim 7 - see the Figures 20-22 showing the auger blade 76; claim 8 is met by page 6, first paragraph; claims 11-12 are met by the auger having a single helix 76 configuration, thus not being a double-helix configuration as seen in Figures 20-22; and claim 13 is met by page 1, lines 1-6.
More specifically, WO 2007/037693 A2 discloses in Figs. 20-22 a side view of a mixing element 75 that can be used in an alternative embodiment of the apparatus according to the invention. Like the mixing elements described in the foregoing Figures, said mixing element 75 comprises a helical or spiral blade 76, whose diameter gradually decreases [tapers] in upward direction. At the end located near the bottom, the blade 76 joins a blade portion 77, which is movable between an inoperative position as shown in Fig. 21 and an operative position as shown in Fig. 22. According to another possibility, however, an interruption is present between the blade 76 and the blade 77, and two blade portions may be present under the blade 76. As the top plan view of Fig. 21 shows, the blade portion 77 is retracted in the direction of a column 78 in the inoperative position, to which column 78 the blade 76 is attached. In this inoperative position, the blade portion 77 largely extends within the circumference of the higher remaining portion of the blade 76, so that the mixing element 75 has a significantly reduced diameter. This means that the lower part of the mixing element 75 is rendered substantially inoperative in the retracted position of the blade portion 77. As a result, said blade portion 77 is hardly loaded by lifting the entire weight of the feed mass, so that a low power level will suffice for driving the mixing element 75.
In the operative position that is shown in Fig. 22, the blade portion 77 has been pivoted completely outwards, so that the diameter of the mixing element 75 is much larger than in the inoperative position that is shown in Fig. 21. As a result, this blade portion 77, too, will be operative when the mixing element 75 is driven. The blade portion 77 is moved to this operative position once the feed mass has been sufficiently reduced.
As shown in a broken line in Figs. 21 and 22, the blade portion 77 is supported on a support arm 79, which is shown in side view in Fig. 20. The support arm 79 is attached to a sleeve 80, which is rotatable about a shaft 80a. Said shaft 80a is connected by arms 81a to a cylindrical portion 81, which is coaxial with the column 78, being integral therewith via the blade 76.
Said cylindrical portion 81 furthermore carries a cylinder-piston assembly 82, whose cylinder housing is rotatably connected to the portion 81 and whose piston rod is rotatably connected to the support arm 79. The blade portion 77 can be moved between the inoperative position and the operative position by means of said cylinder-piston assembly 82.
With the mixing element 75, the pitch of the blade 76 near the bottom end 83 is smaller than the pitch of the higher portion of the blade 76 that is indicated at 84. In this way an improved mixing action of the mixing element 75 is obtained. Such a variable pitch is also possible with the other mixing elements described herein, of course. Figs. 23A and 23B show a part of a mixing element 85 which comprises a lower blade 86 (only partially shown) , and an upper blade 87. The lower blade 86 carries a rotatably suspended knife 88 at the end thereof, which knife is held in the operative position as shown by means of a spring 89. When the pressure on the knife 88 becomes too large, the knifes 88 can pivot in the direction of the shaft of the mixing element 85 against the action of the spring 89. Rotary knives 88 may also be provided at other positions along the circumference of the blade 86, of course.
The pitch of the lower blade 86 is such that said blade 86 transports the feed in upward direction during operation, whilst the pitch of the upper blade 87 is such that said blade transports the feed in downward direction. This leads to an improved mixing action of the mixing element 85. Furthermore, the cutting action of the knife 88 is improved. Such an upper blade portion transporting in downward direction may also be used with the other mixing elements described herein. It is noted that the leading (in use) end edge 90 of the upper blade 87 may be configured as a cutting edge with a view to improving the action of the mixing element. In the illustrated embodiment, said end edge 90 is rounded. As a result, feed is prevented from folding around the end edge 90 and the feed is guided under the blade in a more efficient manner.
* * *
With regard to the above rejections, “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Moreover, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have “relatively acceptable dimensional stability” and “some degree of flexibility,” but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since “Gurley asserted no discovery beyond what was known in the art.” 27 F.3d at 554, 31 USPQ2d at 1132.).
Thus, for example, the disclosure of multi-flighted augers (preferred) vs. single flighted augers (nonpreferred) in NEIER et al. can be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, i.e., single and multi-flighted feed mixing augers.
Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
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.
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.
The instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter partes review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’ ’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
Claims 2, 3, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over NEIER et al. (US 2011/0121114 A1) or WO 2007/037693 A2.
The subject matter of these claims is believed reasonably met by the four corners of each of NEIER et al. (US 2011/0121114 A1) or WO 2007/037693 A2. Assuming, arguendo, that these references are lacking such parameters related to the pitch that are present in claims 2, 3, 5, and 6, the examiner has found that the specification contained no disclosure of any unexpected results arising therefrom, and that as such these parameters are rather arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, since where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and MPEP 2144.05(III).
With respect to the limitations related to the pitch of the auger, it would have been obvious to one of ordinary skill in the art to have provided the apparatus defined by the disclosures of NEIER et al. (US 2011/0121114 A1) or WO 2007/037693 A2 with the configurations and/or dimensions related to the pitch that is recited in the claims which are considered at most optimum choices, lacking any disclosed criticality.
Applicant has the burden of proving such criticality. In re Swenson et al., 56 USPQ 372; In re Scherl, 70 USPQ 204. However, even though applicant's modification may result in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 25 USPQ 433; In re Normannet et al., 66 USPQ 308; In re Irmscher, 66 USPQ 314. More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Swain et al., 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 38 USPQ 213; Allen et al. v. Coe, 57 USPQ 136; MPEP 2144.05(II)(A).
No probative evidence is of record to demonstrate that the dimensions and/or other variables of the invention related to the mixing auger pitch are significant or are anything more than one of numerous pitch arrangements that a person of ordinary skill in the art would find obvious for purposes of merely changing the configurations and/or dimensions to obtain different results. Graham v. John Deere Co., 148 USPQ 459.
Accordingly, the examiner argues that these pitch parameters of the auger are rather arbitrary and thus obvious over the prior art per MPEP 2144.05(II)(III).
Furthermore, the Federal Circuit has explained that a reason to optimize prior art parameters may be found in a PHOSITA’s desire to improve on the prior art. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (‘‘The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.’’).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the prior art applied above to NEIER et al. (US 2011/0121114 A1) or WO 2007/037693 A2 in view of KLINE et al. (US 4026529) wherein said prior art does not necessarily disclose an upwardly tapered auger tower. KLINE et al. discloses a feed mixer 10 having a container 31; a mixing auger within 62 having blades/flights 64, 66 with the blades 66 tapering upwardly; the blades 64, 66 mounted on an auger tower formed of portions 63, 65 with the auger tower being upwardly tapered at portion 65 having the blade/flight 66.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided NEIER et al. or WO 2007/037693 A2 with an auger tower that is upwardly tapered as taught by KLINE et al. for the purposes of forming ring-shaped trough area between the tapered auger tower and the wall(s) of the container to thereby effectively and rapidly initiate the motion of the feed material within the container (col. 6, lines 25-53 and col. 9, lines 35-59).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
New claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The subject matter of new claim 13 is found within the preamble of claim 1 as filed and thus fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
All pending claims stand rejected.
Applicant’s arguments with respect to the prior art are primarily addressed in the rejections above. With regard to the remarks related to the substances being processed or mixed (such as “feed”), these remarks are immaterial to the patentability of the apparatus because “[e]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). Accordingly, the recitation of what particular substances are processed by the claimed apparatus is not germane to the patentability of the apparatus itself.
NEIER et al. discloses the broadly and non-specifically recited taper and pitch aspects of the auger as expressed in the rejection above.
With respect to WO 2007/037693 A2 (LIET), Applicant curiously relies on the presence of the auger blade portion 77, however, the rejection is based upon the single flighted blade 76, not the blade 77. Even if the blade 77 were relied upon, both the blade 76 and the blade 77 can be considered to be attached to the auger tower, if the auger tower is deemed to include elements 78, 80 or 78, 80, 81 since the blades 76 and 77 are disposed upon and supported by such elements forming the auger tower as depicted in Figures 20-22. Likewise, the pitch of the blade 77 is not being relied upon, contrary to the remarks appearing on page 9 of the response. The variable pitch of the blade portion 76 is the variable pitch being relied upon as explained in the rejection above. In other words, contrary to Applicant’s remarks, the pitch of the blade portion 77 compared to the pitch of the higher portion of the blade is not the pitch comparison being made. The comparison made in the rejection above is actually between the blade 76 only (excluding the separate blade 77 as permitted by the transitional phrase “comprising a" in the preamble of claim 1) which has a lower portion 83 and an upper portion 84 wherein the pitch of the blade 76 near the bottom end 83 is smaller than the pitch of the higher portion of the blade 76 that is indicated at 84, thus the pitch of the auger increases upwardly in the recited percentages and in a continuous or stepwise manner per the last paragraph on page 14 and in Figures 20-22 as referenced in the last office action.
With regard to new claim 13 and the preamble of claim 1, the phrase “for mixing feed” ” is an intended use that has not been afforded any patentable weight because it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647; In re Sebald, 122 USPQ 527; In re Lemin et al., 140 USPQ 273; In re Pearson, 181 USPQ 641. "[A] statement of intended use.., does not qualify or distinguish the structural apparatus claimed over the reference." In re Sinex, 309 F.2d 488, 492 (CCPA 1962); In re Tuominen, 671 F.2d 1359, 1361 (CCPA 1982) ("The only distinction to which Tuominen can aver is a difference in use, which cannot render the claimed composition novel."); In re Yanush, 477 F.2d 958, 959 (CCPA 1973) ("Appellant's use limitation does not impart a structural feature different from those of the prior art."); In re Casey, 370 F.2d 576, 580 (CCPA 1967) ("The claims in issue call for an apparatus or machine, viz. a tape dispensing machine. The manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself."); In re Hack, 245 F.2d 246, 248 (CCPA 1957) ("These cases are merely expressive of the principle that the grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition.").
For these reasons, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
Per Rule 1.116(b)(3): “An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.” Thus, an amendment after final lacking such showing will be denied entry.
A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST RESPONSE 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 C.F.R. § 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR RESPONSE EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION. ANY RESPONSE FILED AFTER THE MAILING DATE OF THIS FINAL REJECTION WILL BE SUBJECT TO THE PROVISIONS OF MPEP 714.12 AND 714.13.
NOTE: The examiner of record follows the interview after-final policy set forth in MPEP 713.09:
Normally, one interview after final rejection is permitted. However, prior to the interview, the intended purpose and content of the interview [agenda] should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. (emphasis added)
The agenda will be made of record per PTO policy.
New USPTO policy limits time for interviews to one per new application or RCE (utility), when during prosecution, the examiner conducts an interview. More than one interview and additional time will only be granted if it is ensured “that the interviews are being used to advance prosecution”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COOLEY whose telephone number is (571)272-1139. The examiner can normally be reached M-F 9:30 AM - 6:00 PM.
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, CLAIRE X. WANG can be reached at 571-272-1700. 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.
/CHARLES COOLEY/Examiner, Art Unit 1774
17 MARCH 2026