DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 2026 has been entered.
Drawings
Previously, the drawings were objected to under 37 CFR 1.83(a) because drawings must show every feature of the invention specified in the claims. Examiner requested a filter must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. In response, Applicant added Figs. 2 and 3 schematically including the same.
Added Figs. 2 and 3 fail to provide Examiner (or anyone else in possession of the disclosure) with sufficient detail to properly understand the originally disclosed invention and therefore the claimed invention. Thus, the drawings are objected to under 37 CFR 1.83(a) because they fail to show filter as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amendment filed 5 January 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: 1) Applicant’s Application Data Sheet as originally filed indicates that the present application is a continuation of 17/099,565. If Applicant intends to amend the type of continuing application. Proper protocol must be followed. The amendment in specification is considered new matter, because this is not reflective of the overall application; 2) Portions of paragraph 51 adding previously undisclosed features with respect to the flush points.
Applicant is required to cancel the new matter in the reply to this Office Action.
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: a feeder device in claim 1 (interpreted as a fluidizer with inlet and outlet, para. 47, and equivalents thereto) as generically set forth in the specification.
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.
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 1-2, 4-20 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 claim 1 has been amended to recite the tube is “the pneumatic transport tube is continuous”. Claim 20 recites “the pneumatic transport tube is a continuous pneumatic transport tube”. Regarding claim 1 this is considered new matter as this feature which appears to be a structural feature is not set forth in the original disclosure. Claim 20 is similarly analyzed because it includes at least the same language. Nevertheless, the claims have been examined as written based on BRI. The claims are rejected here because Applicant’s amendments and arguments suggest they believe a more narrow interpretation is required, one which Examiner does not find to be present in the original disclosure. Clarification and/or correction is requested.
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 1-2 and 4-20 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 pre-AIA the applicant regards as the invention. Any claim not specifically mentioned is rejected based on its dependence.
The claim 1 has been amended to recite the tube is “the pneumatic transport tube is continuous”. Claim 20 recites “the pneumatic transport tube is a continuous pneumatic transport tube”. While Applicant has argued that such features are absent in prior art, Examiner is unable to find such features in applicant’s specification or schematic drawings that indicated exactly what this claim language is meant to encompass. Thus, the language is considered unclear. Clarification and/or correction is requested.
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 20 is 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 20 does not appear further limit claim 18 which includes all the limitations of amended claim 1, which now states that the tube is continuous. 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 Language Interpretation
Continuous (and other forms of the word as used herein) as applied to a structure/structures (e.g., a tube) has been interpreted as a feature wherein the structure/structures (or structures) include a connected volume.
Continuous (and other forms of the word as used herein) as applied to a process (e.g. pneumatic transport) performed in an apparatus has been interpreted as a feature based on an intended use which will dependent on a method performed with respect to the apparatus.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-2, 4-8 and 12-13 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by U.S. Patent Pub. No. 2003/0059615 to Klinedinst et al.
Regarding claim 1: in Figs. 1 and 12: Klinedinst et al. disclose an apparatus capable of depositing atomic or molecular layers onto small particles while the small particles are subjected to pneumatic transport substantially as claimed, the apparatus comprising: (i) a pneumatic transport tube (i.e. a transport tube capable of pneumatic transport -- multiple structures/segments from inlet opening to outlet opening, all connected and thus forming a tube that is continuous from the inlet opening to the outlet opening) having an inlet opening (see annotation below) and an outlet opening (see annotation below), wherein the pneumatic transport tube is continuous from the inlet opening to the outlet opening; a feeder device (see annotation below), wherein the pneumatic transport tube and the feeder device are configured to feed (i.e. capable of feeding) a carrier gas entraining the small particles from the feeder device into the pneumatic transport tube at or near the inlet opening of the pneumatic transport tube to create (i.e. capable of creating) a particle flow through the pneumatic transport tube; and a plurality of injection points (see annotation below) downstream from the inlet opening, for introducing (i.e. capable of introducing) two or more different reactants via different injection points of the plurality of injection points into the pneumatic transport tube, for atomic or molecular layer deposition on the small particles, wherein said plurality of injection points are spaced apart along at least a portion of the length of the pneumatic transport tube.
Note: although only three injection points are shown in the annotated figure below, per the teachings of Klinedinst et al., any number of reactors can be chained together to form the desired number of injection points and numbered accordingly such that they introduce two or more different reactions [see, e.g., para. 48]. Also see below regarding intended use of a claimed apparatus);
Regarding intended use(s) of the claimed apparatus (e.g., pneumatic transport and/or continuous pneumatic particle flow), Examiner notes that the courts have ruled the following: 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 teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The courts have also ruled expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) and the inclusion of material or article worked upon by a structure being claimed 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)).
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With respect to claim 2, the pneumatic transport tube is coiled (i.e. folded) as represented by the change of direction of gas flow therethrough in various portions thereof).
With respect to claim 4, the plurality of injection points is provided/comprised at folds of the pneumatic transport tube. See annotated figure above.
With respect to claim 5, each injection point of the plurality of injection points may be numbered sequentially from the inlet opening of the pneumatic transport tube, wherein odd numbered injection points of the plurality of injection points are arranged to be capable of injection of a first self-terminating reactant of the two or more different reactants; and even numbered injection points of the plurality of injection points are arranged to be capable for injection of a second self-terminating reactant of the two or more different reactants. Additionally, again, regarding intended use of the claimed apparatus, Examiner notes that the courts have ruled the following: 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 teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The courts have also ruled expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). The different reactants/first self-terminating reactant/second self-terminating reactant are considered “contents…during an intended operation”.
With respect to claim 6, the apparatus may further comprise one or more flush points along at least a part of the length of the pneumatic transport tube for removing reaction by-products from the pneumatic transport tube. See annotated figure above.
With respect to claim 7, the apparatus may further comprise one or more flush points along at least a part of the length of the pneumatic transport tube and located at folds of the pneumatic transport tube, for removing reaction by-products from the pneumatic transport tube. See annotated figure above.
With respect to claim 8, which does not appear to recite any specific structure related to the claimed apparatus, see above regarding intended use.
With respect to claim 12, Klinedinst et al. fail to explicitly disclose an additional chamber. However, whatever room or building the apparatus of Klinedinst et al. is located in could be considered a chamber. Additionally, Klinedinst et al. disclose additional heat exchangers that allow portions of the apparatus in the chamber to be kept in a desired temperature range. See, e.g. Fig. 7 and additional heat exchangers 30 and 42 in Fig. 1. Also see above regarding intended use.
With respect to claim 13, see above regarding arrangement of the plurality of injection points. Also, see above regarding intended use of the claimed apparatus.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 9 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Klinedinst et al. as applied to claims 1-2, 4-8 and 12-13 above in view of U.S. Patent No. 5,876,793 to Sherman et al.
Klinedinst et al. disclose the apparatus substantially as claimed and as described above.
However, Klinedinst et al. fails to disclose the one or more flush points comprise a filter to allow reaction products to be removed while keeping the small particles in the pneumatic transport tube.
Sherman et al. teach providing one or more filters such as cyclones associated with a flush point and/or a separator for the purpose of separating gases and coated particular matter in order to ultimately collected the particulate matter (see, e.g., column 3, rows 20-39 and column 5, row 52 through column 6, rows 53).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was filed to have provided one or more filters such as cyclones associated with the one or more flush points and/or a separator in Klinedinst et al. in order to separate gases and coated particular matter and in order to ultimately collect the particulate matter as taught by Sherman et al.
Claims 10-11 and 14-17 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Klinedinst et al. as applied to claims 1-2, 4-8 and 12-13 above and as further discussed below.
Klinedinst et al. disclose the apparatus substantially as claimed and as described above.
However, Klinedinst et al. fail to explicitly disclose specific dimensions of the claimed apparatus, such as an internal diameter or tube length of the pneumatic transport tube, or spacing between first and second injection points of the plurality of injection points.
Nevertheless, while Klinedinst et al. fail to specifically disclose spacing from a second injection point of the plurality of injection points to an upstream first injection point of the plurality of injections points measured along the length of the pneumatic transport tube is larger than the distance needed to self-purge (or deplete) the first reactant and/or the tube inner diameter is constant over the length of the tube and/or the tube diameter may have an internal diameter in the range of 0.02mm to 300mm (or 0.01 mm to 100 mm or 0.01 mm to 100 mm) and/or the tube has a length of 0.1 m to 500 m (or 5 to 50 m), the disclosure of Klinedinst et al. does teach the layout of the apparatus is provided to enable fine control of the total coating and alternate coating layers of different coating materials and that pneumatic transport efficiency can be controlled by adjusting the dimensions thereof (including diameter and length, wherein length will directly affect length in between injection points)(see, e.g., para. 48).
Additionally, it is further noted that the courts have ruled the following, In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Further still, the courts have ruled where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Thus, it would have been obvious to one of ordinary skill in the prior art exercising ordinary creativity, common sense and logic before Applicant’s invention was effectively filed to have optimized the dimensions of the apparatus, including the internal diameter of the pneumatic transport tube and spacing between the plurality of injection points measured along the length of the pneumatic transport tube, in order to enable fine control of the total coating and alternate coating layers of different coating materials and also to control pneumatic transport efficiency as taught by Klinedinst et al.
Claims 18-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Klinedinst et al. as applied to claims 1-2, 4-8 and 12-13 above in view of U.S. Patent No. 5,198,029 to Dutta et al.
Regarding claim 18: Klinedinst et al. disclose the apparatus substantially as claimed and as described above. Additionally, portions of the pneumatic transport tube between injection points if the plurality of injection points can be designated as segments.
Additionally, with respect to claim recitation “said plurality of injection points are numbered sequentially from the inlet opening of the pneumatic transport tube, wherein odd numbered injection points of the plurality of injection points are arranged for injection of a first self-terminating reactant of the two or more different reactants; and even numbered injection points of the plurality of injection points are arranged for injection of a second self-terminating reactant of the two or more different reactants ”, again, regarding intended use of the claimed apparatus, Examiner notes that the courts have ruled the following: 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 teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The courts have also ruled expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). The different reactants/first self-terminating reactant/second self-terminating reactant are considered “contents…during an intended operation”.
However, Klinedinst et al. fail to disclose first tube segments are made of a different material than second tube segments, wherein the first segments are made of stainless steel and the second segments are made of Teflon or wherein the second tube segments are made of stainless steel and the first tube segments are made of Teflon.
Dutta et al. teach an apparatus for coating small solids wherein stainless steel and Teflon (polytetrafluoroethylene) are used as different construction materials for the purpose of, inter alia, providing structural integrity and a low coefficient of sliding friction/preventing contamination, respectively. See, e.g., column 4, rows 17-31,45-55, column 10, row 67 through column 11, rows 11, claim 38).
The courts have ruled that the selection of a known material based on its suitability for its intended use is prima facie obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Thus, it would have been obvious to one of ordinary skill before Applicant’s invention was effectively filed to have provided any one of the tube segments in modified Klinedinst et al. comprising Teflon (polytetrafluoroethylene) and/or stainless steel in order to, inter alia, provide an apparatus having structural integrity, a low coefficient of friction and prevent contamination as taught by Dutta et al.
With respect to claim 19, as disclosed above, in Klinedinst et al. thermal control of the apparatus (including one or more of the first segments and second segments) is provided for the pneumatic transport tube. In particular, Klinedinst et al. disclose additional heat exchangers that allow portions of the apparatus in the chamber to be kept in a desired temperature range. See, e.g. Fig. 7 and additional heat exchangers 30 and 42 in Fig. 1. Also see above regarding intended use.
With respect to claim 20, in Klinedinst et al. the pneumatic transport tube is considered a continuous pneumatic transport tube in the that the disclosed apparatus may be “daisy-chained” in order to provide an apparatus of desired length capable of continuous processing (if intended as a use thereof), wherein all portions of the apparatus are connected and therefore continuous.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5-8 and 10-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,845,532. Although the claims at issue are not identical, they are not patentably distinct from each other because all claimed features are present in the claims of the ‘532 patent.
Claims 1-2, 4-8 and 10-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,845,532 in view of Klinedinst et al. ‘932 discloses the bulk of the claimed invention except the tube being folded or coiled and injection points and flush points provided thereat and specific temperature range for the chamber. Klinedinst et al. makes up for the deficiencies in teaches that the arrangement allows for performing a staged deposition process in different zones with individual, independent and variable conditions.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,845,532 in view of Klinedinst et al. and U.S. Patent No. 5,876,793 to Sherman et al.
‘932 discloses the bulk of the claimed invention except the tube being folded or coiled and injection points and flush points provided thereat and specific temperature range for the chamber. Klinedinst et al. makes up for the deficiencies in teaches that the arrangement allows for performing a staged deposition process in different zones with individual, independent and variable conditions.
Sherman et al. disclose subject matter drawn to the filter of the apparatus as discussed above.
Claims 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,845,532 in view of Klinedinst et al. and U.S. Patent No. 5,198,029 to Dutta et al.
‘932 discloses the bulk of the claimed invention except the tube being folded or coiled and injection points and flush points provided thereat and specific temperature range for the chamber. Klinedinst et al. makes up for the deficiencies in teaches that the arrangement allows for performing a staged deposition process in different zones with individual, independent and variable conditions.
Dutta et al. disclose subject matter drawn to construction materials, thermal control of the apparatus as discussed above.
Response to Arguments
Applicant’s amendments and accompanying arguments with respect to, the drawings, claim(s) 1-2 and 4-20 and double patenting rejections have been considered but are moot because, except for where addressed below, the modified rejections address the amended subject matter.
Examiner has reconsidered the status of the present application based on related applications and agrees that prohibition of nonstatutory double patenting rejections under 35 USC 121 does apply to the instant application as set forth in MPEP 804.01 based on its lineage. However, notably, Examiner also points out situations where the prohibition against nonstatutory double patenting rejections under 35 USC 121 does not apply as set forth in MPEP 804.01. After reconsideration, Examiner finds that the claims of the application under examination and claims of the other application/patent are not consonant with the restriction requirement previously made by the Examiner in the patented application, since the claims have been changed in material respects from the claims at the time the requirement was made. For example, the continuation/divisional application filed includes additional claims not consonant in scope with the original claims subject to restriction in the parent. Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991); Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990). In order for consonance to exist, the line of demarcation between the independent and distinct inventions identified by the examiner in the requirement for restriction must be maintained. 916 F.2d at 688, 16 USPQ2d at 1440.
In particular Examiner notes that the form of claim 20 presented for examination (12/02/2011 version) in application 13/254,854 and subject to restriction was the following:
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The present invention includes claim 1 as follows:
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The claims of the present application are not consonant since the claims has been changed in material respects from the claims at the time the restriction requirement was made. Thus, the double patenting rejections based on patent 9,845,532 (resulting from app 13/254,854) remain.
Applicant has also argued Klinedinst fails to disclose an apparatus configured such that particulate material is conveyed continuously or unidirectionally through the device. Applicant concludes, based on this argument, “Klinedinst’s apparatus is incapable of pneumatic transport and cannot comprise a pneumatic transport tube – indeed Klinedinst is explicit that their apparatus prevents such pneumatic transport”.
In response, Examiner first disagrees that Klinedinst is explicit that their apparatus prevents pneumatic transport, rather Examiner finds that Klinedinst et al. teaches that the particles are capable of being transported pneumatically (see, e.g., para. 27). Applicant is invited to point to the explicit disclosure they are referencing. Second, Examiner points out that a continuous tube has been interpreted as the connected structures of Klinedinst. Third, Examiner notes that the feature of “pneumatic transport” is drawn to an intended use of the claimed apparatus. As indicated above, the courts have ruled that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Short Contact Time Experiments in A Novel Benchscale FCC Riser Reactor by Helmsing et al. use of a continuous wall elongated tube as a processing volume for gas processing of particles in order to provide a processing volume predictable capable of a plug flow regime. USP Pub 2003/0059530 discloses providing pneumatic transfer of particles in an apparatus similar to the one of Klinedinst relied upon above.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716
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