NON-FINAL OFFICE ACTION after RCE
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 18 JUNE 2026 has been entered.
Specification
The substitute Abstract of the Disclosure is objected to because:
Line 1: “Provided is” is an improper implied phrase. The abstract should avoid using phrases which can be implied, such as, "This disclosure concerns," "The disclosure defined by this invention," "This disclosure describes," etc. per MPEP 608.01(b).
Correction is required.
The revised title of the invention is approved.
Claim Rejections - 35 USC § 112
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.
Claims 1, 3, 5-9, and 11-12 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.
Claim 1 now recites an auger thread and auger blades. The structural distinction between these parts is undistinguishable since the thread and blades appear to be the same helical element 17. Claim 1 is therefore confusing and of unclear scope.
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 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2007/037693 A2 to LIET that discloses the recited feed mixer (page 1, lines 1-6) and with reference to the underlined language below 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 increases in a continuous or stepwise manner per the last paragraph on page 14 and in Figures 20-22;
the at least one mixing auger 75 comprising auger thread 76 and the auger tower 78; the auger thread comprising auger blades 73, 84 being attached to the auger tower 78; wherein an outer radius or an outer diameter of the at least one mixing auger 75 decreases steadily or gradually upwards (Figure 20); wherein a pitch of the auger thread increases upwardly, wherein the increase of the pitch of the auger thread 76 is continuous and/or stepwise per the last paragraph on page 14 and as seen 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 configuration at 76, thus not being a double-helix configuration - see Figures 20-22.
More specifically, WO 2007/037693 A2 to LIET discloses in Figs. 20-22 and on pages 13-14 of the disclosure a side view of a mixing element 75 that can be used in an alternative embodiment of the apparatus according to the invention of LIET. The mixing element 75 comprises a helical or spiral auger thread or 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.
* * *
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) as in NEIER et al. (no longer applied as prior art but again discussed for the record and appeal) 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 3, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2007/037693 A2 to LIET.
The subject matter of these claims is believed reasonably met by the four corners of WO 2007/037693 A2 to LIET. Assuming, arguendo, that these references are lacking such parameters related to the pitch that are present in claims 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 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 WO 2007/037693 A2 in view of KLINE et al. (US 4026529) wherein WO ‘693 to LIET 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 WO 2007/037693 A2 to LIET 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).
Conclusion
All pending claims stand rejected.
The previous prior art rejection over NEIER is withdrawn.
Applicant’s arguments with respect to the prior art are primarily addressed in the rejections above. With regard to the any 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.
With respect to WO 2007/037693 A2 (LIET), Applicant yet again 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 in 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. Moreover, as underlined above, LIET teaches that the blades 76 and auxiliary blade 77 may have an “interruption” present therebetween thus demonstrating that the discrete blade 76 itself, separate/interrupted from blade 77, may be relied upon for showing the recited auger thread or blades of amended claim 1:
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.
Applicant’s argument that “blade portion 77 is an integral part of blade 76” in LIET is therefore erroneous when considering the full disclosure of LIET since an embodiment of an auger including two interrupted blades 76 and 77 does not form an integral blade with a common pitch as argued. The pitch of blade 76 itself meets the requirements of amended claim 1 as disclosed by the last paragraph of page 14 in LIET:
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.
Applicant argues under the 103 remarks section that Lier [sic, Liet ] “discloses an auger arrangement in which the pitch of the auger thread does not increase upwardly because of blade portion 77.” Again, the blade portion 77 is not being relied upon whatsoever. Moreover, the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open - ended and does not exclude additional, unrecited elements or method steps. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948)("comprising" leaves "the claim open for the inclusion of unspecified ingredients even in major amounts"). Thus, the scope of the pending claims that rely upon the ubiquitous “comprising” phrase used in patent claims does not preclude the presence of the blade portion 77 or any other elements, especially when this blade portion 77 is interrupted from the other blade portion 76, contemplated in the disclosure of LIET as a distinct embodiment of the auger 75.
Furthermore, it is well established that Omission of an Element and Its Function Is Obvious if the Function of the Element Is Not Desired per MPEP 2144.04(II)(A): Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a method for inhibiting corrosion on metal surfaces using a composition consisting of epoxy resin, petroleum sulfonate, and hydrocarbon diluent. The claims were rejected over a primary reference which disclosed an anticorrosion composition of epoxy resin, hydrocarbon diluent, and polybasic acid salts wherein said salts were taught to be beneficial when employed in a freshwater environment, in view of secondary references which clearly suggested the addition of petroleum sulfonate to corrosion inhibiting compositions. The Board affirmed the rejection, holding that it would have been obvious to omit the polybasic acid salts of the primary reference where the function attributed to such salt is not desired or required, such as in compositions for providing corrosion resistance in environments which do not encounter fresh water.). See also In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission of additional framework and axle which served to increase the cargo carrying capacity of prior art mobile fluid carrying unit would have been obvious if this feature was not desired.); and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient).
Accordingly, the examiner argues for future prosecution and/or appeal that, if required by the claims, for one skilled in the art to remove the auxiliary blade 77 from the auger 75 in LIET is sanctioned by established law and deemed well within the realm of obviousness. For example, to thereby reduce complexity and the corresponding increased cost associated with the auxiliary blade arrangement and actuator and/or to employ an auger to mix substances wherein a variable diameter auger created by the movable blade 77 (i.e., a larger diameter at the lower portion of the auger 75) is not needed to reduce the effective required size of the mixing container in which such auger is mounted since accommodation space for the larger diameter auger, when the auxiliary blade 77 is actuated, would not be needed.
The supposed advantages of the claimed invention outlined on page 9 of the remarks are noted, however, such arguments are of no patentable consequence because it is well settled that features not claimed may not be relied upon in support of patentability. In re Self, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982). Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim. Limitations not found in the language of a claim cannot be read into the claim. E. I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 7 USPQ2d 1129 (Fed. Cir. 1988). Limitations appearing in the patent specification cannot be read into the claims. Id. Nor is it permissible to inject into claims limitations referred to in the prosecution history. Intervet America, Inc. v. Kee-Vet Labs, Inc., 887 F.2d 1050, 1053, 12 USPQ2d 1474, (Fed. Cir. 1989). Moreover, the functional aspects of introducing more air, improving feed loosening and increasing throughput stated in section “C.” of the RCE response, if actually claimed, fail to constitute distinctions that would add more structural substance to the pending apparatus claims to define over the existing prior art.
The 112(d) rejection is withdrawn in view of the gracious cancellation of claim 13.
In conclusion, contrary to Applicant’s remarks filed with the RCE, the claims filed with the RCE do not distinguish over the prior art.
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.
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.
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/CHARLES COOLEY/ Examiner, Art Unit 1774
3 JULY 2026
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