DETAILED ACTION
1. The Amendment filed 07/02/2026 has been entered. Claims 7-16 & 21-30 in the application remain pending. Claim 7 was amended. Claims 1-6 & 17-20 were cancelled. Claims 21-30 are new.
2. The text of those sections of Title 35, U.S.C. code not included in this action can be found in a prior Office Action.
Notice of Pre-AIA or AIA Status
3. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
4. Applicant's election was filed on 02/02/2026 without traverse of Group II, claims 7-16 for further examination. Newly submitted claims 21-29 are directed to inventions that are independent or distinct from the invention of group II, originally claimed for the following reasons:
Group I, Claims 1-6 (Cancelled).
Group II, Claims 7-16 & 30, drawn to a cone coating machine, comprising:
a basin configured to contain a liquid cone coating material, the basin including a lower interior surface; and
a fountain assembly disposed within the basin, the fountain assembly comprising:
a tube having an upper end and a lower end, the lower end proximate the lower interior surface of the basin; and
a nozzle coupled to the upper end of the tube, such that the fountain assembly terminates at the nozzle, wherein the nozzle includes a plurality of coating outlets positioned to envelop the nozzle with the cone coating material, further wherein the cone coating machine is configured to recirculate the cone coating material from the basin through the plurality of coating outlets and return the cone coating material to the basin.
Group III, Claims 17-20 (Cancelled).
Group IV, Claims 21-29, drawn to a cone coating machine, comprising:
a cabinet defining an interior and including a basin; and
a fountain assembly disposed within the basin, the fountain assembly comprising:
a tube having a distal end spaced from the basin;
a nozzle disposed at the distal end of the tube, wherein the nozzle defines a plurality of coating outlets and is dimensioned to be received within the cone; and
a flange disposed below the nozzle, the flange having a diameter greater than a diameter of the nozzle, wherein the cone coating machine is configured to recirculate a coating material from the basin through the plurality of coating outlets and return the coating material to the basin, and the plurality of coating outlets are dimensioned to spread the coating material over the nozzle with the coating material.
Thus a prior art that satisfies the limitations of claim 7 would not necessarily satisfy the limitations of claim 21, as both of them contain different combinations of structural components with different functional limitations. Thus, regardless of the search method, inventions with different limitations will require different search strategies, and the times to consider the relevancy of collective references would increase proportionality as well and it would be necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention. Thus far, applicant has not proved or provided convincing argument that there is no material difference between the two inventions currently on the record.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, newly submitted claims 21-29 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Specification
5. The amendment filed 07/02/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “such that the fountain assembly terminates at the nozzle” of claim 7, lines 7-8.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
6. The following is a quotation 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.
7. Claims 7-16 & 30 are rejected under 35 U.S.C. 112(a), 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, at the time the application was filed, had possession of the claimed invention.
The amendment to claim 7, lines 7-8 which recites “such that the fountain assembly terminates at the nozzle” is not supported by the original specification or claims and therefore considered new matter.
Claims 8-16 & 30 are rejected at least based on their dependency from claim 7.
Claim Rejections - 35 USC § 102
8. Claims 7-16 & 30 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Barnett (US 3,022,010 A) hereinafter Barnett (the terminology of the claims in the application is used, but the references of Barnett are included between parentheses).
Regarding claims 7-16, the recitation “cone coating…cone coating material”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Barnett since Barnett meets all the structural elements of the claim and is capable of applying cone coating material to a cone for cone coating, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon 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)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 7, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), comprising:
a basin (35) configured to contain a cone coating material, the basin (35) including a lower interior surface (see fig 1, interior of 35) (col 2, ln 12-41; fig 1); and
a fountain assembly (see fig 1, everything minus basin 35) disposed within the basin (35) (col 1, ln 51-col 2, ln 51; fig 1), the fountain assembly (see fig 1, everything minus basin 35) comprising:
a tube (10) having an upper end (see fig 1, top at 10) and a lower end (see fig 1, bottom at 10), the lower end (see fig 1, bottom at 10) proximate the lower interior surface (see fig 1, interior of 35) of the basin (35) (col 1, ln 51-col 2, ln 41; fig 1); and
a nozzle (11+12) coupled to the upper end (see fig 1, top at 10) of the tube (10), such that the fountain assembly (see fig 1, everything minus basin 35) terminates (see fig 1) at the nozzle (11+12), wherein the nozzle (11+12) includes a plurality of coating outlets (13) positioned to envelop (see fig 1, covers/surrounds) the nozzle (11+12) with the cone coating material, further wherein the cone coating machine (see fig 1) is configured to recirculate (repeated reuse…jet openings 46 for downward discharge as water jets 47 into basin 28 which in turn discharges water jets 31 in a like manner, through sidewall ports 30 into the catch basin 35) the cone coating material (31+47) from the basin (35) through the plurality of coating outlets (13+42) and return the cone coating material (31+47) to the basin (35) (col 1, ln 21-30; col 1, ln 51-col 2, ln 51; fig 1).
As regards to claim 8, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), wherein the basin (35) includes a greater width than depth (see fig 1) (col 2, ln 12-41; fig 1).
As regards to claim 9, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), wherein the plurality of coating outlets (13+42) are configured to spread the coating material (31+47) over an upper surface (see fig 1) and an annular sidewall (see fig 1) of the nozzle (11+12) (col 1, ln 51-col 2, ln 51; fig 1).
As regards to claim 10, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), wherein the plurality of coating outlets (13+42) further comprise: a plurality of side coating outlets (13); and an upper coating outlet (42) (col 1, ln 51-col 2, ln 51; fig 1).
As regards to claim 11, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), wherein an opening diameter (see fig 1, spray 43) of the upper coating outlet (42) is greater than an opening diameter (see fig 1, spray 14) of the plurality of side coating outlets (13) (col 1, ln 51-col 2, ln 51; fig 1).
As regards to claim 12, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), wherein the nozzle (11+12) defines a plurality of side channels (12) that fluidly couple the side coating outlets (13) to a central channel (11) (col 1, ln 51-col 2, ln 51; fig 1).
As regards to claim 13, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), wherein the side channels (12) are angled at 90 degrees such that the plurality of side coating outlets (13+42) are positioned higher than (see fig 1) an interior end (see fig 1) of the side channels (12) (col 1, ln 51-col 2, ln 51; fig 1).
As regards to claim 14, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), wherein the tube (10) is fluidly coupled to the central channel (11) (col 1, ln 51-col 2, ln 51; fig 1).
As regards to claim 15, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), further comprising a flange (see fig 1, angled inner sidewall of 35) disposed below (see fig 1) the nozzle (11+12), the flange (see fig 1, angled inner sidewall of 35) having a diameter (see fig 1) greater than (see fig 1) a diameter (see fig 1) of the nozzle (11+12) (col 1, ln 51-col 2, ln 51; fig 1).
As regards to claim 16, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), wherein the flange (see fig 1, angled inner sidewall of 35) comprises an upper surface (see fig 1, top of 35) having a downward slope (see fig 1) configured to generate a veil effect when the coating material (31+47) cascades from the flange (see fig 1, angled inner sidewall of 35) (col 1, ln 51-col 2, ln 51; fig 1).
Regarding claim 30, the recitation “to be received within an ice cream cone”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Barnett since Barnett meets all the structural elements of the claim and is capable of being received within an ice cream cone, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon 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)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 30, Barnett discloses a cone coating machine (fig 1-3; clm 1-2), wherein the nozzle (11+12) is dimensioned to be received within an ice cream cone (col 1, ln 51-col 2, ln 51; fig 1).
Response to Arguments
9. Applicant's arguments filed 07/02/2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
(a) Applicant contends that features of the claims have not been accorded interpretation consistent with the use of the claim terms in the specification and drawings.
(b) Claim 7 is amended to recite, in relevant part, "a nozzle coupled to the upper end of the tube, such that the fountain assembly terminates at the nozzle, wherein the nozzle includes a plurality of coating outlets positioned to envelop the nozzle with the cone coating material." Barnett does not teach these features of claim 7.
(c) Claims 8-16 & 30 depend from claim 7, and, therefore, are allowable for at least the reasons provided in support of amended claim 7.
10. In response to applicant’s arguments, please consider the following comments.
(a) Respectfully in response, Office personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Examiner respectfully contends the limitations of claim 7 interpreted as such.
(b) As already discussed above in detail in regards to claim 7, Barnett teaches a nozzle (11+12) coupled to the upper end (see fig 1, top at 10) of the tube (10), such that the fountain assembly (see fig 1, everything minus basin 35) terminates (see fig 1) at the nozzle (11+12), wherein the nozzle (11+12) includes a plurality of coating outlets (13) positioned to envelop (see fig 1, covers/surrounds) the nozzle (11+12) with the cone coating material.
(c) In view of the foregoing, Examiner respectfully contends the limitations of claim 7 are indeed satisfied. Claims 8-16 & 30 are rejected at least based on their dependency from claim 1, as well as for their own rejections on the merits, respectively.
Conclusion
11. 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 extension fee 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 date of this final action.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights