DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 02/02/2026 without traverse of Group II, claims 7-16 for further examination. Claims 1-6 & 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on 03/14/2023 is being considered by the examiner.
Claim Rejections
4. 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.
5. 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 Rejections - 35 USC § 102
6. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
7. Claims 7-16 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…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 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 liquid, 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), wherein the nozzle (11+12) includes a plurality of coating outlets (13), 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) a coating material (31+47) from the basin (35) through the plurality of coating outlets (13+42) and return the 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).
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
9. 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.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights