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 .
Drawings
The drawings were received on 12/3/2025. These drawings are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 9 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites “condensing device” which is interpreted under 35 USC 112(f) but the specification does not clearly define what is the condensing device. The specification recites “”the condensing apparatus has a cooling apparatus” on page 20 but does not specify what is the cooling apparatus. A review of the drawings show a line passing through or to the upper part of the reservoir; however, it is not described what this line is, where it is coming from or what is it actually doing beyond cooling.
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 9 and 13 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 limitation “condensing device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification recites “”the condensing apparatus has a cooling apparatus” on page 20 but does not specify what is the cooling apparatus. A review of the drawings show a line passing through or to the upper part of the reservoir; however, it is not described what this line is, where it is coming from or what is it actually doing beyond cooling. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
For the purpose of examination, as long as any device which provides condensation is provided the limitation is met.
Claim 13 recites “at least one metering device” and then later recites “a metering device”, which is indefinite as it is unclear if this is a recitation of the same metering device or separate metering device. For the purpose of examination, they are considered to be the same metering device.
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 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: pressure regulating device in claims 1 and 13, understood to be a pressure regulating circuit with a pressure regulating valve, a pump,
metering device in claims 1 and 13 understood to be a valve,
a temperature regulating device in claims 1 and 13 understood to be a heat exchanger or heater,
condensing device in claim 9.
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.
Pressure reducing device is not interpreted under 35 USC 112, sixth paragraph as sufficient structure is provided.
Claim Rejections - 35 USC § 103
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 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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1, 6-8, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homann et al. (US PG Pub 20060283799), hereinafter referred to as Homann and further in view of Herzenjak (DE102017222926), hereinafter referred to as Herzenjak.
With respect to claim 1, Homann (Figure 1) teaches an apparatus for providing coolants and/or extractants for at least one press (the screw press receives a feed from 13, paragraph 37-39), comprising: at least one reservoir (storage tank 13 which has liquid CO2, paragraph 50);
a pressure regulating device (high-pressure pump 15, paragraph 39);
a temperature regulating device (heater 16, paragraph 39);
and a metering device (any of the valves 17, 18, 19 or 20, paragraph 39),
wherein the pressure regulating device has a single-stage (there is a single pump).
Homann does not teach wherein the pressure regulating device has an at least two stage structure which includes at least one pressure increasing pump and at least one high-pressure pump.
Herzenjak (Figure 1) teaches that when distributing that in addition to a high-pressure pump (16) a feed pump (10) is used to pump liquid to a heat exchanger (31) for use (paragraphs, 17, 23).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Herzenjak provided a feed pump upstream of the high-pressure pump of Homann since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing a feed pump would provide what is common knowledge in the art of a way of ensuring a desired flow from the tank. Having two pumps would be a two-stage structure for the pressure regulating device.
With respect to claim 6, Homann teaches wherein the metering device includes a throughflow regulating circuit (the valves control the throughflow of the fluid).
With respect to claim 7, Homann teaches further comprising at least one individual supply line for each connected press (there is only one press and it has an individual supply line, the line that connects between 13 and the press).
Homann does not teach wherein the at least one press includes at least two pressures, the at least one individual supply line for each of the presses so that there are at least an equal number of supply lines and presses.
However, this is a mere duplication of parts and therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have had at least two presses and two supply lines configured as in Homann since it has been held that a mere duplication of parts has no particularly significance unless a new an unexpected result is produced where having more than one press fed by the tank would allow for the predictable result of an increase in overall production from the use of the carbon dioxide by increasing the amount of presses the carbon dioxide is used for.
With respect to claim 8, Homann teaches wherein each supply line has an individual temperature regulating device and an individual metering device (the supply line has a heat exchanger and a valve).
With respect to claim 10, Homann teaches a pressing apparatus, comprising an apparatus for providing coolants and/or extractants according to Claim 1 (screw press 1, paragraph 37 which has the apparatus as claimed shown in claim 1).
With respect to claim 13, Homann teaches (Figure 1) a method for providing coolants and/or extractants for at least one press, comprising the steps of: providing a coolant and/or extractant in a reservoir (storage tank 13 which has liquid CO2, paragraph 50);
increasing pressure of the coolant and/or extractant using a pressure regulating device (high-pressure pump 15 pumps the coolant);
setting temperature of the coolant and/or extractant using at least one temperature regulating device (heater 16 heats the carbon dioxide, paragraph 51);
and metering the coolant and/or extractant using at least one metering device (any of the valves 17, 18, 29, 20, paragraph 39, meter the flow through the system by being present), the method further includes using an apparatus for providing coolants and/or extractants, comprising at least one reservoir (storage tank); a pressure regulating device (pump); a temperature regulating device (heater); and a metering device (one of the valves).
Homann does not teach wherein the pressure regulating device has an at least two stage structure and includes at least one pressure increasing pump and at least one high-pressure pump.
Herzenjak (Figure 1) teaches that when distributing that in addition to a high-pressure pump (16) a feed pump (10) is used to pump liquid to a heat exchanger (31) for use (paragraphs, 17, 23).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Herzenjak provided a feed pump upstream of the high-pressure pump of Homann since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing a feed pump would provide what is common knowledge in the art of a way of ensuring a desired flow from the tank. Having two pumps would be a two-stage structure for the pressure regulating device.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homann/Herzenjak and further in view of Baust et al. (US PG Pub 20220205589), hereinafter referred to as Baust.
With respect to claim 4, Homann does not teach further comprising an annular line that includes a return line for returning the coolant and/or extractant to the reservoir.
Baust (Figure 10) teaches that after using a fluid (at tip 216), the fluid can be recovered and passed back up a return tube (206) which surrounds the feed tube (204) (paragraph 38) so that it can be returned back to the cylinder it originated in (paragraphs 27, 44).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Homann to have provided based on the teaching of Baust a return tube surrounding the feed line to the press (a return tube surrounding a feed line is an annular line) that feeds carbon dioxide back to the storage tank since it has been shown that combining prior art elements to yield predictable is obvious whereby providing the annular return line would provide the ability to recover carbon dioxide from the press which would allow it to be reused.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homann/Herzenjak. and further in view of Garner (US PG Pub 20180128210), hereinafter referred to as Garner.
With respect to claim 5, Homann does not teach wherein the pressure regulating device, at least for fine regulation of pressure, includes a pressure regulating circuit that includes a regulating valve having an actuator configured so the regulating valve is openable to lower and set the pressure to a pressure target value.
Garner teaches that a storage tank has design parameters under which it operates and if the pressure in the tank is above a threshold a pressure relief valve can be provided on a conduit to open when the pressure to maintain the pressure inside the tank below a threshold and opens only when needed (paragraph 27).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Garner to have provided in Homann a conduit and a pressure relief valve attached to the tank which opens only when needed to maintain the pressure in the tank below a threshold value in order to maintain safe operations of the storage tank. As the valve opens when needed it inherently has some type of actuator that causes it to open. The conduit and valve together would form the circuit.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homann/Herzenjak. and further in view of Bassetto et al. (US 20180259128), hereinafter referred to as Bassetto.
With respect to claim 9, Homann does not teach further comprising a condensing device for condensing gaseous coolant and/or extractant.
Bassetto (Figure 1) teaches that a tank can have an exchanger for cooling the fluid contained in the tank so as to condense the vapors of said fluid (paragraph 33).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Bassetto provided an exchanger attached to the tank of Homann in order to condense any vapor in the tank in order to provide temperature and pressure stability to the tank (paragraph 52 of Bassetto).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homann/Herzenjak and further in view of Ziger (CN113494631), hereinafter referred to as Ziger.
With respect to claims 11-12, Homann does not teach further comprising at least one nozzle for introducing the coolant and/or extractant into a pressing space wherein the at least one nozzle has a non-return valve.
Ziger teaches that for delivery of a fluid from a tank the combination of a one-way valve (100, paragraph 50) and a filling nozzle (200, paragraph 48) can be used (Figures 1-2) to prevent backflow during discharge of the fluid, (paragraph 50).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Ziger provided a nozzle and one-way valve (which is the same thing as a non-return valve) on the line which feeds the carbon dioxide into the press of Homann in order to prevent backflow of the fluid from the press.
Response to Arguments
Applicant's arguments filed 12/3/2025 have been fully considered but they are not persuasive.
Applicant argues, page 1 that “condensing devices are well known to a person of ordinary skill in the art” and specifically in “processing of supercritical carbon dioxide” and thus the “subject matter contained in the claims is described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or joint inventor has possession of the claimed invention”. This is not persuasive.
There are a wide range of components and heat exchangers that could be considered a condensing device, and applicant has not provided sufficient recitation in the specification to convey that they had possession of the claimed invention with respect to 35 USC 112(a). Applicant has provided an example of a prior art which teahces a type of condenser, but this is not sufficient to show or support overturning of the rejection under 35 USC 112(a) as applicant has not stated on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function as recited in the rejection above, but only described the generality of a type of condensing device. Therefore, the rejection under 35 USC 112(a) and (b) is maintained.
Applicant argues that because Herzenjak is a dual injection device for an internal combustion engine and Homann is for pressing a liquid extract from a material, they are in completely different technological fields and “a person of ordinary skill in the art of pressing liquids from materials such as oilseed would not look to teachings regarding fuel delivery for an internal combustion engine” as they are from completely different technical fields. This is not persuasive.
This is an argument that Herzenjak is non-analogous art to Homann. In response to applicant's argument that Herzenjak is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The question of analogous art is whether the prior art is analogous to the field of inventor of the inventor, not to that of the other prior art. In this case, Herzenjak and Homann can both be said to be in the field of the inventor’s endeavor and reasonably pertinent to the particular problem to which the inventor was concerned. Herzenjak, Homann and the claimed invention can all be said to be analogous as they are all concerned with the delivery of a stored liquid for use, a liquid that is considered a liquefied gas, that is one that is gaseous under ambient conditions. That the use of the liquid after delivery is different in Herzenjak than it is in either Homann or the claimed invention does not render the prior art any less analogous. As such, one of ordinary skill in the art at the time the invention was filed would have looked to Herzenjak to not only modify Homann but also to render the claimed limitations obvious and the rejection of the amended claims in view of Herzenjak is provided above and maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BRIAN M KING whose telephone number is (571)272-2816. The examiner can normally be reached Monday - Friday, 0800-1700.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frantz Jules can be reached at 5712726681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN M KING/Primary Examiner, Art Unit 3763