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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/18/2026 has been entered.
Claim Objections
Claim 13 is objected to because of the following informalities: In line 4 of Claim 13, “Providing” should not be capitalized. Appropriate correction is required.
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 5-8, 10-13 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 5-8 all recites “The apparatus” according to claim 1 which is considered indefinite. Claim 1 is drawn to “A press with an apparatus” and as such it is unclear if claims 5-8 are only further limiting the apparatus; however some of the claims are drawn to aspect of the press and it is overall unclear if the press is a required part of the invention or if the claims are only further limiting the apparatus. For the purpose of examination claims 5-8 are interpreted as further limiting the overall “Press with an apparatus”.
Claim 7 recites “at least one press” which renders the claims indefinite, as claim 1 has only required the presence of a single press and as that is the entirety of the invention it is unclear how there are more than one press. For the purpose of examination, this limitation is interpreted that the apparatus is configured to connect to a second press.
Claim 10 recites limitation present in claim 1 as well as “coolant and/or extractants” which results in claim 1 being indefinite as it does not appear to further limit claim 1 and claim 1 has been amended to remove “coolants and/or”. Further the use of “A pressing apparatus’ in claim 10, continuing in claims 11-12 is indefinite as it is unclear how it relates to “A press with an apparatus” in claim 1. For the purpose of examination, claim 10 is not considered to further limit the claims and is only repeating the preamble of claim 1.
Claim 11 is indefinite as it refers to “coolant and/or” which has been deleted form claim 1 which only refers to extractant, which renders the claims indefinite. For the purpose of examination, this limitation is interpreted to only require the extractant.
Claim 13 recites “in a reservoir”, “using a pressure regulating device” and “using a temperature regulating device” and then later recites using an apparatus followed by recitations of “at least one reservoir”, “a pressure regulating device” and “a temperature regulating device” which are considered indefinite as it is unclear how the two limitations relate. For the purpose of examination, these limitations are considered to be referring to the already mentioned components are not considered to further limit the claims as the claims have already required the use of those components, the method would thus be on an apparatus comprising those components when they are originally recited.
Claim 12 is rejected as being dependent upon a rejected claim.
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.
Claim 10 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. Claim 10 does not further limit claim 1 as it only includes limitations found already in 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.
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:
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.
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 regulating 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, 10, 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 and Baust et al. (US PG Pub 20220205589), hereinafter referred to as Baust.
With respect to claim 1, Homann (Figure 1) teaches a press with an apparatus for providing extractants for at least one press (the screw press 1 receives a feed from 13, paragraph 37-39, which feed system including tank 13, heater 16 and pump 15, for providing an extracting agent, paragraph 39 would be the apparatus for providing), the apparatus 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 a high-pressure pump (high-pressure pump 15, paragraph 39).
Homann does not teach wherein the pressure regulating device has an at least two stage structure which includes at least one pressure increasing pump as well as the 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.
Homann as modified does not teach further comprising an annular line that includes a return line for returning 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.
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 operating a press including providing extractants to the press, comprising the steps of: providing an extractant in a reservoir (storage tank 13 which has liquid CO2, paragraph 50, which is an extractant, paragraph 39);
increasing pressure of the extractant using a pressure regulating device (high-pressure pump 15 pumps the coolant);
setting temperature of the extractant using at least one temperature regulating device (heater 16 heats the carbon dioxide, paragraph 51);
and metering the coolant 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); the at least one 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.
Homann as modified does not teach returning the extractant to the reservoir by an annular line comprising a return line.
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/Baust 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) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homann/Herzenjak/Baust 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 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 (the extractant) into the press of Homann in order to prevent backflow of the fluid from the press.
Response to Arguments
Applicant's arguments filed 5/18/2026 have been fully considered but they are not persuasive.
Applicant argues that Homann is drawn to devices for pressing a liquid extract from a material and Herzenjak is drawn to a fuel delivery device and as such “the two fields are totally unrelated” and “because a reference in a completely different technical field… teaches a feed pump does not in any way suggest to a person of ordinary skill in the art of a different field… that such a feed pump would provide any benefits to a device for pressing liquids from materials”. 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). Further: “In order for a reference to be proper for use in an obviousness rejection under USC 103, the reference must be analogous art to the claimed invention” and “When more than one prior art reference is used as basis of an obviousness rejection, it is not required the references be analogous art to each other”. MPEP 2141.01(a) I. 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, which applicant has not argued against. Homann is concerned with delivering an extractant to a press which is the same field of endeavor as the applicant. Herzenjak is concerned with delivering a liquid from a storage tank to a device for using multiple pumps, which is reasonably pertinent to the particular problem with which the inventor was concerned, see page 6, lines 1-9, where the particular problem is how to ensure delivery of a fluid is to a desired level, which Herzenjak is pertinent to as Herzenjak teaches a system with multiple pumps for fluid delivery. Further in this regard, the structural similarities of Homann, Herzenjak and the claimed invention are readily apparent and it has been found that “the similarities and differences in structure and function of the inventions disclosed in the references” carries weight in determining pertinence MPEP 2141.01(a) II. Additionally, Herzenjak can also be considered in the same field of endeavor as the applicant as both Herzenjak and the claimed invention are concerned with apparatus for fluid delivery using pumping systems as “The field of endeavor ‘is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field” MPEP 2141.01(a) I. One having ordinary skill in the art would recognize both the claimed invention and the references above are drawn to how to deliver fluid from a tank making them analogous art. 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 claims as both Homann and Herzenjak are analogous art to the claimed invention.
Applicant argues that the claims have been amended and “are more specifically directed to a press that has a device for providing extractants” which “the references do not suggest or render obvious”. This is not persuasive.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant’s remaining arguments are moot as the rejection of Homann in view of Herzenjak is maintained.
Conclusion
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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/BRIAN M KING/Primary Examiner, Art Unit 3763
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