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 .
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.
Specification
The amendment filed 10 April, 2023 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:
The incorporation by reference of the International Patent Application No. PCT/KR2021/014332 and of Korean Application No. 10-2020-0134294 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 15 October, 2021, see MPEP 1893.03(b). Therefore, the specification amendment of 10 April, 2023 to include the incorporation by reference is new matter, per MPEP 608.01(p).
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: “suction unit”, “cyclone unit”, and “grip part” in claims 1 and claims 2-20 depending therefrom .
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 § 103
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 1-5 and 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bian (CN 107997674 A) in view of Lin (CN 210612011).
1. Bian teaches a cleaner, comprising:
a suction unit (17) configured to suction air containing dust, the suction unit extending along a longitudinal axis (such as line 172 or a line parallel to 172, see Bian fig. 9) of the suction unit;
a suction motor (32) configured to generate a flow of the air into the suction unit;
a cyclone unit (2) in communication with the suction unit, the cyclone unit being configured to separate the dust from the air;
a rear housing (3) that is disposed rearward relative to the cyclone unit and accommodates the suction motor (32 is inside 3, see Bian figs. 8-9);
a handle (100) arranged in a direction opposite to the suction unit with respect to the cyclone unit, the handle comprising a grip part (102) configured to be gripped by a user (see Bian figs. 1 and 4);
a power supply (4) configured to supply power to the suction motor; and
a dust bin (21) disposed at a front side of the power supply (21 is in front of 4, see Bian figs. 1-2), the dust bin having a base surface disposed downward relative to a lower end of the handle (bottom of dust bun 21 is located below bottom end of handle, see Bian figs. 1-2),
wherein the base surface of the power supply protrudes downward relative to the base surface of the dust bin such that the base surface of the power supply and the base surface of the dust bin are provided at different heights from each other (bottom of dust bin and bottom of power supply are at different heights, see Bian fig. 1),
wherein an upper side of the power supply is disposed adjacent to the lower end of the handle, and the front side of the power supply is disposed adjacent to a lower portion of an outer circumferential surface of the dust bin (see Bian fig. 1),
wherein the handle extends toward the suction motor (see Bian fig. 9).
Bian does not teach that the suction motor comprises a motor shaft configured to rotate about a rotation axis of the suction motor, the rotation axis of the suction motor being perpendicular to the longitudinal axis of the suction unit and parallel to a base surface of the power supply,
wherein the handle extends toward the suction motor along handle extension lines that are tangent to an outer circumferential surface of the grip part of the handle, the handle extension lines passing outside of the suction motor, and
wherein the handle extension lines include:
a first handle extension line that is tangent to an outermost protruding point on the outer circumferential surface of the grip part and is disposed adjacent to a first position of the grip part farthest from the suction unit, the first handle extension line passing through an inside of the rear housing, and
a second handle extension line that is disposed adjacent to a second position of the grip part closest to the suction unit, the second handle extension line passing through a space between an outside of the rear housing and the cyclone unit.
However, Lin teaches an arrangement for a motor (21) in a suction cleaner (see Lin fig. 3), wherein the suction motor (21) comprises a motor shaft (output shaft connected to fans 211 , see Lin Translation [0066] and Lin fig. 6) configured to rotate about a rotation axis of the suction motor, the rotation axis of the suction motor being perpendicular to the longitudinal axis of the suction unit and parallel to a base surface of the power supply (motor rotation axis is perpendicular to the longitudinal axis of suction unit 11, see Lin figs. 2-6).
It would have been obvious to one of ordinary skill in the art before the effective filing date to integrate the teachings from Lin regarding a motor chamber for a suction cleaner into the cleaner of Bian such that the suction motor comprised a motor shaft configured to rotate about a rotation axis of the suction motor, the rotation axis of the suction motor being perpendicular to the longitudinal axis of the suction unit and parallel to a base surface of the power supply, as doing so would allow for increased suction without an increase in noise (see Lin Translation [0010]-[0012]).
Regarding the limitations of handle extension lines, it would be possible to define extension lines extension lines tangent to an outer circumferential surface of the grip part of the handle of Bian as modified such that the handle extension lines included: a first handle extension line tangent to an outermost protruding point on the outer circumferential surface of the grip part and disposed adjacent to a first position of the grip part farthest from the suction unit and a second handle extension line disposed adjacent to a second position of the grip part closest to the suction unit.
Further, both Bian and Lin teach that the handle is positioned such that a center of gravity of the motor and center of gravity of the power supply are on opposite sides of extension lines thereof (see Bian fig. 9 and Lin fig. 3). It would have been obvious for one of ordinary skill before the effective filing date to design the handle, motor, rear housing, and cyclone unit of Bian as modified such that the handle extension lines would pass outside of the suction motor, with the first handle extension line passing through a space between an inside of the rear housing and an outside of the suction motor and the second handle extension line passing through a space between an outside of the rear housing and the cyclone unit, as the specific angles of such lines (and consequently their extension) are a function of the specific shapes and sizes of the handle and housing, and it has been held that, absent persuasive evidence that a particular configuration is significant, that changes in the shape of an invention are a matter of obvious design choice. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
2. Bian as modified teaches the cleaner of claim 1, wherein the suction motor is disposed on the handle and the power supply is disposed below the handle (handle 100 is positioned below motor 32 and above power supply 4, see Bian figs. 1 and 9).
3. Bian as modified teaches the cleaner of claim 1, wherein the handle extension lines are spaced apart from an outer circumferential surface of the suction motor in a radial direction of the suction motor, and wherein the handle extension lines do not penetrate the suction motor
(for the reasons noted in the rejection of claim 1 above, reaching a configuration that resulted in the extension lines being spaced apart from an outer surface of the motor in a radial direction such that they do not penetrate the motor would be a matter of obvious design choice).
4. Bian as modified teaches the cleaner of claim 1, wherein a center of gravity of the suction motor is disposed in a direction opposite to the suction unit with respect to a longitudinal axis of the grip part (motor 32 and suction unit 17 are on opposite sides of motor axis 104, see Bian fig. 9).
5. Bian as modified teaches the cleaner of claim 1, wherein the rear housing is disposed rearward with respect to the handle (housing 3 is positioned behind handle 100, see Bian fig. 9) and has a cylindrical shape (both Bian and Lin teach cylindrical motor housings, see Bian figs. 7-9 and Lin fig. 1), and
wherein the rear housing has an inclined surface configured to face the user during cleaning, the inclined surface being provided in a portion of an outer circumferential surface of the rear housing (outer surfaces of the rear housing would face the user. Modifying Bian to incorporate the motor arrangement of Lin would result in at least one of those surfaces being at an incline and facing the user due to the curvature on a rear portion of the housing as taught by Lin, see Lin fig. 1).
7. Bian as modified teaches the cleaner of claim 1, wherein the longitudinal axis of the suction unit is disposed at an upper part spaced apart by a certain distance from the grip part (a longitudinal axis may be defined at an upper portion of suction unit 17 such that it is vertically spaced apart from the handle, see Bian fig. 9).
8. Bian as modified teaches the cleaner of claim 1, wherein the longitudinal axis of the suction unit is disposed to penetrate at least a portion of the rear housing (a longitudinal axis may be defined at an upper portion of suction unit 17 such that it penetrates a portion of rear housing 3, see Bian fig. 9).
9. Bian as modified teaches the cleaner of claim 1, further comprising a discharge cover (5) coupled to one side of the suction motor (Bian figs. 7-8), wherein the discharge cover defines an air discharge portion configured to filter the dust (in post-motor filter 53) and to discharge remaining air (through exhaust ports 51, see Bian figs. 7-8);
wherein the rotational axis of the suction motor passes through the discharge cover (Lin teaches
discharge covers 12 associated with outlet channels 24, coupled to one side of the suction motor, wherein the rotation axis of the motor is centered on outlet channels 24 and passes through 12, see Lin figs. 1 and 5; incorporating the motor arrangement of Lin into Bian would result in an arrangement with two discharge covers as taught by Lin, wherein the rotational axis of the suction motor passing through the discharge covers)
10. Bian as modified teaches the cleaner of claim 9, wherein the air discharge portion comprises a plurality of openings spaced apart from one another by a certain distance (spaced apart perforations, see Lin fig. 1), and
wherein the plurality of openings are arranged in a direction perpendicular to the rotation axis of the suction motor in a state in which the discharge cover is coupled to the suction motor (perforations radiate outward from a center where the rotation axis passes through in a direction orthogonal to the rotation axis, see Lin fig. 1).
Regarding claims 11-13, Bian as modified teaches the cleaner of claim 1, wherein a center axis of the cyclone unit is perpendicular to the longitudinal axis of the suction unit and the rotation axis of the suction motor (the vertical center axis 211 of cyclone unit 2 is perpendicular to both a longitudinal axis of suction unit 17 parallel to line 172 and a horizontal rotation axis of the suction motor as taught by Lin, see Bian fig. 9 and Lin fig. 3).
14. Bian as modified teaches the cleaner of claim 1, wherein the power supply comprises a plurality of batteries that are arranged in a direction perpendicular to the rotation axis of the suction motor (battery cells are arranged in a front-to-back array, see Bian fig. 9; rotation axis of the suction motor of Bian as modified would be oriented in a side-to-side direction as taught by Lin, see Lin fig. 3).
Regarding claims 15-20, Bian as modified teaches the cleaner of claim 1, wherein the longitudinal axis of the suction unit is perpendicular to a center axis of the cyclone unit (the vertical center axis 211 of cyclone unit 2 is perpendicular to a longitudinal axis of suction unit 17 parallel to line 172, see Bian fig. 9),
the first handle extension line is disposed forward relative to the rotation axis of the suction motor (a line aligned with the rear of the handle would pass in front of the rotation axis of the motor of Bian as modified by Lin, see Bian fig. 9 and Lin fig. 3),
the first handle extension line is disposed rearward relative to the second handle extension line of the handle, the second handle extension line being parallel to the first handle extension line (the first extension line is at a back of the handle and the second extension line is at a front of the handle, because the front and back sides of the handle are parallel, the extension lines would be, too, see Bian fig. 9),
the first handle extension line is inclined with respect to the longitudinal axis of the suction unit, the center axis of the cyclone unit, and the rotation axis of the suction motor (the vertical center axis 211 of cyclone unit 2 is perpendicular to both a longitudinal axis of suction unit 17 parallel to line 172 and a horizontal rotation axis of the suction motor as taught by Lin, see Bian fig. 9 and Lin fig. 3; the handle is angled relative to each of these other axes, see Bian fig. 9),
the first handle extension line passes through the power supply (a line with the rear of the handle passes through the power supply, see Bian fig. 9),
wherein a perpendicular distance between the first handle extension line and the second handle extension line defines a thickness of the grip part (handle extension lines would be defined on front and rear sides of the handle, so a distance between them would be a thickness, see Bian fig. 9).
Bian as modified further teaches that the first handle extension line passes through a portion between an outer circumferential surface of the suction motor and an inner circumferential surface of the rear housing, the second handle extension line passes outside of the outer circumferential surface of the rear housing, and the first and second handle extension lines pass outside of the suction motor (for the reasons noted in the rejection of claim 1 above, because Bian and Lin each teach a configuration of the motor, handle, and power supply that places the centers of gravity for the motor and power supply on opposite sides of the handle from each other, reaching a specific configuration wherein the first handle extension line passes through a portion between an outer circumferential surface of the suction motor and an inner circumferential surface of the rear housing, the second handle extension line passes outside of the outer circumferential surface of the rear housing, and the first and second handle extension lines pass outside of the suction motor would be a matter of obvious design choice).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Bian and Lin as applied to claim 5 above, and further in view of King et al. (US PGPub 2019/0183306, "King").
6. Bian as modified teaches the cleaner of claim 5, but does not teach the presence of a display configured to display an operational state of the cleaner and disposed on the inclined surface of the rear housing.
However, King teaches a cleaner (4) including a suction unit (10), a motor (King [0092]), a cyclone unit (40), a handle (22), a power supply unit (32) and a display screen for displaying an operational state of the cleaner disposed on a rear surface (100 is on a back surface, see King figs. 1-4 and [0107]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to integrate the teachings from King regarding the inclusion of a display screen into the cleaner of Bian as modified such that the resulting cleaner included a display unit for displaying an operational state of the cleaner is disposed on the inclined surface, as the inclusion of such a display would allow for power to be used more efficiently (King [0051]).
Response to Arguments
Regarding the objection to the specification, Applicant makes reference to the priority claim made in the PCT Request (Form PCT/RO/101) and to the section in Box No. VI-3, which incorporates by reference parts referred to in Rule 20.5(a) or Rule 20.5bis(a), subject to confirmation under Rule 20.6, which applies the time limits under Rule 20.7. However, the PCT request form defines a specific set of procedures under which certain elements from prior art documents may be incorporated into the international application, not a blanket incorporation of all the elements of those documents.
Rules 20.5 and 20.5bis allow the PCT receiving office to notify applicant that portions of the specification appear to be missing (Rule 20.5) or that a part of the specification appears to have been erroneously filed (Rule 20.5bis). Such a notification to applicant would have been done during chapter I or II examination. Rules 20.5 and 20.5bis require that applicant’s corrective process be done within the time limit set by Rule 20.7. There does not appear to have been any invitation sent to the applicant, so the time limit would have been 20.7(a)(ii), which would have been 15 December 2021, as the date of actual receipt of this application on the RO/101 is 15 October 2021. So, even if PCT incorporation rules were applied, applicant is well outside the time period to claim that material was missing and add it to the specification now.
Furthermore, the entire process described by Rules 20.5 and 20.5bis is for portions that are missing from—or erroneously included in—the application and how to copy or submit those missing portions into this application (or how to remove erroneously included portions), it is not about making a blanket incorporation by reference statement as applicant is attempting to do in this national stage application.
Applications are not allowed to add subject matter after filing. A national stage entry into the US under 35 U.S.C. 371 does not have a distinct US filing date. Its filing date is that of the international application and thus the international application must include the document that does any incorporation by reference. If the international application incorporates a document by reference, then the national stage entry into the US under 35 U.S.C. 371 may do the same. If the international application does not incorporate a document by reference, then it is ineffective to amend the application at any time after the filing date of the international application to add an incorporation by reference.
For these reasons, the objection to the specification is maintained.
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/J.R.Z./ Examiner, Art Unit 3723
/MONICA S CARTER/ Supervisory Patent Examiner, Art Unit 3723
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