DETAILED ACTION
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 .
Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive.
Claims have been amended to require that the act of selecting a value of a total power depending on the distance and “not a change in the distance.” This is insufficient to overcome the previously presented rejections.
A negative limitation in the claims must have explicit support in the instant specification. Then act of requiring a value based on the distance between two points is not a showing that it cannot be based on a change in distance between two point. Negative limitations must have direct and explicit support in the specification.
[0057-0067] discloses the act of selecting and calculating the value of the total power based on the distance between the two plates. [0058] even explicitly states that the distances between the bases plates can be changed during operation in order to control the total power consumed. There is nothing here that negates the use of a change in distance as what is used to select a value of total power.
Applicant further argues that the step of selecting the total power occurs by way of a controller using the measured distance as well as values of the total power stored in a memory of a control system.
This is not found to be persuasive as none of the arguments are commensurate in scope with the claims. The device does not include a controller. It also does not further describe how the controller utilizes the information to select based on the values. This is the point previously made and the arguments do not rectify the 101 rejection. The amendments do not modify any of the argued components of the method only provide an additional negative limitation that does not distinguish any operations to be significantly more as required to overcome a judicial exception.
Applicant also argues the 112 rejection by responding to the clarifying questions raised int eh 112 1st rejection. These answers do not overcome the rejection as the claims are not modifying to provide the clarity. Furthermore the responds the “the total power is understood to be used in operating the device” does not answer the raised questions on if it is the total power usage over an extended period of time of a peak total utilized during operation or any of the other examples given to a lack of description. Saying that total power is used in operating the device does not provide any meets and bounds to how this is utilized.
A similar situation occurs for the 112 2nd rejections where the claims are still indefinite even upon answers being given in an argument. Using claim 5 as an example, the act of stated that the at least every 1 to 2 weeks is a preset standard does not clarify the syntax of the claim that still leaves it up to interpretation on if the 1 to 2 weeks is a recommendation or a requirement. The claims must be amended to overcome the 112 rejections in addition to stating the intention of the claims in the Remarks.
Applicant further argues the 102 rejection in view of Matthew as not teaching the requirement of total power depending on the distance between the plates and not a change in distance. As stated above the newly amended limitation is considered to be new matter as it is a negative limitation not supported by the instant specification. Furthermore the distinction of utilizing a distance and not a change in distance is moot as the claims to not actually provide guidance on how the total power is calculated. It is argued that the act of changing the distance to render a total power measurements will require the act of measuring the distance between the plates in the act of determining the total power. When calculating a change in distance between the plates the actual distance between the plates has to be part of that equation. Even if this new limitation was given full patentable weight, the teachings of Matthew would still implicitly read on them.
The arguments are not found to be persuasive.
Claim Rejections - 35 USC § 101
Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim(s) recite(s) a method for controlling a device comprising the steps of providing a specific device, measuring a distance between base plates and the treatment tools during operation, and selecting a value of a total power depending on the distances. The claims are directed to determining a value based on a measurement without doing anything with the determined value in operation of the device or execution of the method.
Step 1 of the 101 analysis passes as the claims are directed to a method, even though the method for controlling a device is not expanded upon from the preamble and the body of the claims only direct to the determination of a value based on a measurement during operation.
Step 2A of the 101 analysis passes as the requirement of reciting the judicial exception of an abstract idea.
Step 2B of the 101 analysis fails the prong two as it fails to recite additional elements that integrate the Judicial exception into a practical application (see MPEP 2106.05).
This judicial exception is not integrated into a practical application because there are not further practical applications to the claims. The claims simply end with the determining step of a total power and does not utilize this information in any way. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because MPEP 2106.05 states the following:
Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:
i. Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d));
iii. Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource V. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)); or
iv. Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski V. appos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker V. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)).
In the instant application, there is no method of controlling the device provided as claimed. Instead the claims are directed to a specific apparatus and the steps of "measuring" without any clarification on how and the step of "selecting a value" without any clarification on how. The only additional advice is to select the values based on the distance but no guidance is provided on how this occurs. It is unclear if this is utilizing a comparison chart or the operators experience to select a value of the total power. The claims also do not state what to do with this information once selected or tie it into the preamble of the claim that states to control the apparatus.
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.
Claims 1-12 are 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.
The claims are directed to "a method for controlling a device for treating a fibrous material" and do not have any method steps for controlling a device for treating a fibrous material included. All of the actively claimed limitations are providing a device, measuring a distance within the device and the selecting a value of a total power.
It is not clear what this total power is in reference to. Is it a measurement of force worked upon inside the device or a total power usage over an extended operation?
There is no other reference to total power in the claims, and total power is not utilized in the controlling of the device.
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 4 and 5 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.
Regarding claim 4, the total power being adjusted at least when a change of at least one treatment nip of at least 1 mm is indefinite as it is unclear if the at least requirement is a minimum requirement for the adjustment or a recommendation. Therefore it is unclear if the adjustments are conditional or optional requirements. Clarification is required.
Regarding claim 5, the term "depending on the distance" renders the limitation unclear if that is further defining when the adjustments take place or if they do. It is also unclear if the "which is at least every 1 to 2 weeks" is a recommendation, an example, or a further defining limitation of "a plurality of predetermined time intervals." If the time intervals are predetermined it is unclear as to how the adjustments can be dependent on the distance measured. If this limitations intended to be at a minimum of every 1 to 2 weeks and also whenever a distance threshold is reached (as in two different triggering criteria), the claims should be clarified.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 7, 9, and 11-12 are rejected under 35 U.S.C. 102a1 as being anticipated by Matthew et al, US Patent Publication 2004/0112997.
Regarding claim 1, Matthew teaches a method for controlling a device for treating a fibrous material (see abstract), the method comprising the steps of:
providing that the device includes a housing (grinder, refiner, pulp mill [0012- 0018]) in which at least a first treatment tool and a second treatment tool (bars [0028- 0030] are arranged, the first treatment tool and the second treatment tool:
being mounted on a first base plate and a second base plate respectively (stator plates [0042]);
having a rotationally symmetrical shape [0008 and 0066-0068];
being arranged coaxially relative to each other in that the first treatment tool and the second treatment tool rotate relative to one another about a common axis (double disk refiners [0063-0066]);
delimiting at least one treatment nip through which the fibrous material flows (plate gap [0056-0059]); and
having respectively a first treatment profile and a second treatment profile facing toward the at least one treatment nip [0008-0013];
mounting at least one of the first base plate and the second base plate respectively of at least one of the first treatment tool and the second treatment tool in an axially movable manner in order to compensate for a wear of the first treatment profile and the second treatment profile [0010 and 0032-0054];
measuring a distance between the first base plate and the second base plate respectively of the first treatment tool and the second treatment tool of the at least one treatment nip during an operation of the device [0058]; and
selecting a value of a total power depending on the distance between the first base plate and the second base plate of the at least one treatment nip [0056-0062].
Regarding claims 2-3, 7, 9 and 11-12, Matthew remains as applied as above and further teaches a number of different embodiments that correlate the changes in the gap to changes in the power directly (see claim 1) as well as utilizing other considerations (see claims 6 and 8) and the use of no load calibrations (claims 5 and 7) in the refiner.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 4-6, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Matthew et al, US Patent Publication 2004/0112997.
Regarding claims 4-6, 8, and 10, Matthew remains as applied above. Matthew is silent on the use of a controller to store the memory of the total power loads. Matthew does teach the same steps of obtaining the measurements and determining power and gap levels through calculation. The act of utilizing a storage device to store the data as memory is a standard automation operation in the industry. While the reference does not explicitly state that the data is stored in a memory space the average artisan would have understood the advantages of utilizing controller memory to store valuable information for easy access and use. Furthermore the optimization of how often to adjust the power levels is well within the ability of the average artisan. Matthew teaches that changes of 0.02 mm is important in the act of refining different types of wood pulp [0057-0058], and it would have been obvious to make a power adjustment when the distance change of 1 mm is detected (see 112 rejections above).
It would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the adjustment protocols as Matthews teaches the importance of monitoring and controlling the operation of the device and the set minimums for when to repeat or rest the zero values and adjustments would be simply engineering practice, as well as utilizing a storage memory for the control system.
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 JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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