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 .
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 on 8/19/2026 after a final rejection was mailed 4/20/2026. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/9/2026 has been entered.
Response to Amendment
The response filed on June 9th, 2026 is acknowledged. Four pages of amended claims were received on 6/9/2026. Claims 1, 8, and 14 have been amended. The claims have been amended to overcome previous claim objections and previous rejections under 35 U.S.C. 112(b) in the final rejection mailed 4/20/2026, however Claims 1-2, 5-9, and 12-14 remain rejected under 35 U.S.C. 103 as noted below.
Election/Restrictions
Applicant’s election without traverse of Ferromagnetic Element Species A and Loss Prevention Device Sub-Species A (Fig. 3) in the reply filed on 10/27/2025 in response to the requirement for restriction mailed 8/28/2025 is acknowledged. Claims 3-4 and 10 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim.
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:
The “at least one loss prevention device” in Claim 8, which uses the generic placeholder “device” coupled with functional language without reciting sufficient structure.
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.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitations:
The “at least one loss prevention device” in Claim 8 corresponds to the disclosure in Page 6 Lines 2-4 of the Specification which states, “the loss prevention device can be formed by an elastic element”. Therefore, based on the disclosure and the claims as a whole the examiner interprets the “at least one loss prevention device” in Claim 8 to be an elastic element and equivalents thereof.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
The “means of a tool gripping the at least one shoulder” in Claim 1, which recites sufficient structure of a tool.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claims 1-2, 5-9, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over DE-202021105086-U1 to Planert (“Planert”) in view of US PGPUB 2001/0015386 A1 to Pruss (“Pruss”).
As to Claim 1, Planert discloses a rotary atomizer for coating components (See Fig. 3) comprising:
a bell cup shaft (#3) and a spray bell (#4) that is regionally insertable into the bell cup shaft and releasably attached to the bell cup shaft (See Fig. 3 and Machine Translation of Description Paragraph 0007), wherein the spray bell includes at least one ferromagnetic element or at least one permanent magnetic element (See ferromagnetic element #11 in Fig. 3 and See Machine Translation of Description Paragraph 0025) and the bell cup shaft includes at least one permanent magnetic element or at least one ferromagnetic element (See permanent magnetic element #7 in Fig. 3 and See Machine Translation of Description Paragraph 0022) that are arranged in relation to one another such that the at least one ferromagnetic element and the permanent magnetic element exert a magnetic retaining force on one another acting parallel to an axis of rotation of the bell cup shaft in order to releasably retain the spray bell on the bell cup shaft (See Annotated Fig. 3 and Machine Translation of Description Paragraph 0020), wherein the bell cup shaft includes a conical receiving portion facing the spray bell and the spray bell includes a conical insertion portion facing the bell cup shaft (See Annotated Fig. 3 and Machine Translation of Description Paragraphs 0011-0012), wherein the conical insertion portion has an inclination of 1° to 10°,relative to an axis of rotation of the spray bell (See Annotated Fig. 3 and Machine Translation of Description Paragraph 0011), wherein the spray bell includes a bell body that increases in diameter towards a spraying edge (See Annotated Fig. 3).
Regarding Claim 1, in reference to the rotary atomizer of Planert as applied to Claim 1 above, Planert does not disclose wherein the bell body includes at least one shoulder on its outer surface, wherein the at least one shoulder protrudes from the outer surface at a position along the outer surface between the spraying edge and the bell cup shaft, wherein the position is spaced apart from the spraying edge, and wherein the at least one shoulder is configured such that the spray bell can be detached from the bell cup shaft by means of a tool gripping the at least one shoulder (See Annotated Fig. 3, the bell body does not have a shoulder configured to be detached by a tool that grips the shoulder).
However, Pruss discloses, in the same field of endeavor of spray coating (See Paragraph 0001), a rotary atomizer (See Figs. 1-2) comprising a spray bell (#3) that includes a bell body (#37 and #32) that increases in diameter towards a spraying edge (See Annotated Fig. 2, the spray edge is on an upper portion of the bell body), wherein the bell body includes at least one shoulder on its outer surface (See the portion of the bell body that is a circumferential shoulder in Annotated Fig. 2), wherein the at least one shoulder protrudes from the outer surface at a position along the outer surface between the spraying edge and a bell cup shaft (See Annotated Fig. 2, the shoulder is between the spraying edge on an upper portion of the bell body and the bell cup shaft #13), wherein the position is spaced apart from the spraying edge (See Annotated Fig. 2, there is a space between the spraying edge and the shoulder), and wherein the at least one shoulder is configured such that the spray bell can be detached from the bell cup shaft (#13) by means of a tool gripping the at least one shoulder (See Fig. 2 and Paragraph 0031, the shoulder shown in Annotated Fig. 2 is configured on #3 such that #3 can be pulled away from #13 by a person utilizing some tool that grips the shoulder).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spray bell of the rotary atomizer of Planert as applied to Claim 1 above such that the bell body includes the at least one shoulder of Pruss on its outer surface by utilizing the bell body geometry of #37 and #32 of Pruss, since doing so would yield the predictable result of helping guide the bell body when assembling the rotary atomizer (See Pruss Paragraph 0029), while allowing coating product to be distributed by centrifugation (See Pruss Paragraph 0026). Such a modification would result in the at least one shoulder being configured such that the spray bell can be detached from the bell cup shaft by means of ae tool gripping the at least one shoulder (See Pruss Annotated Fig. 2 and Paragraph 0031 and See Planert Annotated Fig. 3, the shoulder in Pruss is configured on #3 such that #3 can be pulled away from #1 by a person using some tool that grips the shoulder. Implementing the shoulder of Pruss into the spray bell of Planert will result in the spray bell being capable of being detached by the bell cup shaft by some tool that grips the shoulder).
As to Claim 2, in reference to the rotary atomizer of Planert in view of Pruss as applied to Claim 1 above, Planert further discloses wherein the at least one ferromagnetic element is a ring provided on a side of the spray bell facing the bell cup shaft (See Fig. 3 and Machine Translation of Description Paragraphs 0019-0020).
As to Claim 5, in reference to the rotary atomizer of Planert in view of Pruss as applied to Claim 1 above, Planert further discloses wherein the at least one permanent magnet element includes an annular permanent magnetic element (See Annotated Fig. 3, the permanent magnetic ring is annular), wherein the bell cup shaft includes a central recess on a side facing the spray bell, wherein the annular permanent magnetic element is fixed within the central recess (See Annotated Fig. 3 and Machine Translation of Description Paragraph 0009).
As to Claim 6, in reference to the rotary atomizer of Planert in view of Pruss as applied to Claim 1 above, Planert further discloses wherein the at least one permanent magnet element includes an annular permanent magnetic element (See Annotated Fig. 3, the permanent magnetic ring is annular), wherein the bell cup shaft is a hollow shaft including a shoulder on a side facing the spray bell comprising an axial contact surface facing away from the spray bell against which the annular permanent magnetic element is resting (See Annotated Fig. 3 and Machine Translation of Description Paragraph 0010).
As to Claim 7, in reference to the rotary atomizer of Planert in view of Pruss as applied to Claim 1 above, Planert further discloses wherein the conical receiving portion and the conical insertion portion are adapted to one another such that there is an axial air gap of less than 2 mm, between the at least one ferromagnetic element and the at least one permanent magnetic element when the spray bell is attached in the bell cup shaft (See Annotated Fig. 3 and Machine Translation of Description Paragraph 0012).
As to Claim 8, in reference to the rotary atomizer of Planert in view of Pruss as applied to Claim 1 above, Planert further discloses wherein the spray bell is attached to the bell cup shaft via at least one loss prevention device (See #16 in Fig. 3 and See Machine Translation of Description Paragraphs 0023 and 0025).
As to Claim 9, in reference to the rotary atomizer of Planert in view of Pruss as applied to Claim 8 above, Planert further discloses wherein the at least one loss prevention device is formed by an elastic element, radially provided between the spray bell and the bell cup shaft (See #16 in Fig. 3 and See Machine Translation of Description Paragraphs 0023 and 0025).
As to Claim 12, in reference to the rotary atomizer of Planert in view of Pruss as applied to Claim 9 above, Planert further discloses wherein the elastic element comprises an O-ring or a spring lock washer (See #16 in Fig. 3 and See Machine Translation of Description Paragraphs 0023 and 0025).
As to Claim 13, in reference to the rotary atomizer of Planert in view of Pruss as applied to Claim 7 above, Planert further discloses wherein the axial air gap is less than 1 mm (See Machine Translation of Description Paragraph 0012).
As to Claim 14, in reference to the rotary atomizer of Planert in view of Pruss as applied to Claim 1 above, Planert as modified by Pruss further discloses wherein the bell body extends between a proximal end and the spraying edge (See Planert Annotated Fig. 3, the bell body extends between the proximal end and the spraying edge), wherein the proximal end is proximate the conical insertion portion (See Planert Annotated Fig. 3), and wherein the at least one shoulder is positioned closer to the spraying edge than to the proximal end (See Pruss Fig. 1, the shoulder #32 is positioned at the spraying edge).
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Response to Arguments
Applicant's arguments filed 6/9/2026 have been fully considered but they are not persuasive.
Regarding the “at least one loss prevention” device in Claim 8, applicant argues that it should no longer be interpreted under 35 U.S.C. 112(f) because it does not recite the term “means”.
This argument is not found persuasive. The term “at least one loss prevention device” does not use the word means however it uses the generic placeholder holder “device” coupled with functional language without reciting sufficient structure. Therefore, the term “at least one loss prevention device” in Claim 8 is being interpreted under 35 U.S.C. 112(f) as noted above.
Regarding Claim 1, which remains rejected under 35 U.S.C. 103 as being unpatentable over Planert in view of Pruss as noted above, applicant argues that Pruss fails to teach that the at least one shoulder protrudes from the outer surface at a position along the outer surface between the spraying edge and the bell cup shaft as now claimed. Applicant additionally argues that 32 of Pruss is not configured such that the spray bell can be detached from the bell cup shaft by means of a tool gripping 32, and that a person or ordinary skill in the art would not consider using 32 of Pruss for withdrawal of the bowl 3 by means of a tool due to associated risk of damaging 32.
These arguments are not found persuasive. In accordance with MPEP 2111.01, during examination the claims must be interpreted as broadly as their terms reasonably allow. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). The claimed invention need not be expressly suggested in any one or all of the references. Rather, the test for obviousness is what the combined teachings of the applied references, taken as a whole, would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) and In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). A prima facie case of obviousness is established by presenting evidence indicating that the reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having those teachings before him to make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972). As to the desirability of the modification, the proper inquiry is “whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,’ not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004). In response to Applicant's piecemeal analysis of the references, one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.
Amended Claim 1 requires “wherein the at least one shoulder protrudes from the outer surface at a position along the outer surface between the spraying edge and the bell cup shaft, wherein the position is spaced apart from the spraying edge”. Planert does not teach the at least at least one shoulder as claimed. However, Pruss discloses, in the same field of endeavor of spray coating, a rotary atomizer with a shoulder that reads on a broadest reasonable interpretation of the claimed at least one shoulder, as shown in Annotated Fig. 2. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spray bell of the rotary atomizer of Planert such that the bell body includes the at least one shoulder of Pruss on its outer surface by utilizing the bell body geometry of #37 and #32 of Pruss, since doing so would yield the predictable result of helping guide the bell body when assembling the rotary atomizer, while allowing coating product to be distributed by centrifugation.
It is also noted that when the prior art fails to disclose a functional limitation, the examiner may be able to rely on the theory of inherency. See: MPEP §2112. In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. See: MPEP §2112 IV; Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). Claim 1 merely requires that the at least one shoulder be capable of being detached from the bell cup shaft by a tool gripping the at least one shoulder, and such a modification would result in the at least one shoulder being configured such that the spray bell can be detached from the bell cup shaft via some tool gripping the at least one shoulder, which protrudes to an extent that a graspable surface is present. The rotary atomizer of Planert modified by Pruss is capable of meeting such a functional limitation, even if some damage might result depending on how a tool is used by one of ordinary skill, and even so it is noted that skill, not the converse, is presumed on the part of those practicing in the art (In re Sovish, 226 USPQ 771) and a conclusion of obviousness can be made from "common sense" of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. (In re Bozek, 163 USPQ 545, 549 (CCPA 1969)). Therefore, the rejection of Claim 1 is proper, and Claims 1-2, 5-9, and 12-14 remain rejected under 35 U.S.C. 103 as noted above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Notice of References Cited Form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN E SCHWARTZ whose telephone number is (571)272-1770. The examiner can normally be reached Monday - Friday 9:00AM - 5:00PM MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O Hall can be reached at (571)-270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN EDWARD SCHWARTZ/ Primary Examiner, Art Unit 3752
August 21, 2026
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