DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 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 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.
Response to Remarks
The remarks filed 5 November 2025 have been fully considered.
The applicant argues with regards to the interpretation of “cutting means” under 35 U.S.C. § 112(f) that:
“Applicant respectfully submits that the term ‘cutting means’ as used in claim 1 does not invoke 35 U.S.C. § 112(f) because the claim itself, when read in light of the specification, recites sufficient and definite structure that would be understood by one of ordinary skill in the art to perform the recited function of chipping or mulching vegetative debris.”
“Specifically, the specification describes the ‘cutting means’ as including at least one rotating blade having an edge aligned substantially parallel to the axis of rotation, together with a base block positioned such that vegetative debris passes over the base block into the rotating blade(s). (Seep. 3, 11. 9-12; p. 6, 11. 25-35; Fig. 8.) The specification further teaches embodiments where the ‘cutting means’ comprises a rotating drum carrying a plurality of circumferential blades (p. 3, 11. 13-14). These are all well-known structural components of a chipper or mulching mechanism in the art.”
The argument is not persuasive. The applicant does not state what the structure is that is allegedly recited in the claim. There is in fact no structure recited within the claim itself for the cutting means. Notice that immediately after alleging the claim itself provides the structure, the applicant directs one to the specification for the structure. Therefore, since the claim does not provide any corresponding structure of the cutting means, and since the limitation meets the three-prong test, the limitation is still being interpreted under 35 U.S.C. § 112(f) to cover the corresponding structure described in the specification as entirely performing the claimed function, and equivalents thereof. If the applicant does not intend for the limitation to be interpreted under § 112(f), the examiner suggests replacing “cutting means” with –cutter–.
The applicant argues with regards to the rejection of claim 1 under 35 U.S.C. § 103 that:
“Applicant's claimed subject matter expressly requires that the outlet grid is located substantially directly adjacent to the cutting means, and that the cutting means is configured to force vegetative debris through the outlet grid during operation. A person skilled in the art would recognize that McKie's discharge plate and the claimed outlet grid are functionally and structurally different. McKie's plate merely serves as a downstream screen for classifying material after impact cutting; it does not interact directly with the cutter or facilitate active discharge of material. There is no disclosure or suggestion that McKie's cutters are positioned immediately adjacent to the outlet plate or that they impart a forcing action driving debris through the plate openings.”
The argument is not persuasive. The applicant correctly states that the claim requires that the outlet grid is located substantially directly adjacent to the cutting means, but then later implies that substantially directly adjacent should be understood to mean “immediately adjacent”. Directly/immediately adjacent would only require that there is no other structure between the cutting means and the outlet grid. McKie reads on this interpretation (see fig. 2). Note that the claim does not even require as much since it recites “substantially directly adjacent”, which allows for an intervening structure.
Regarding the cutting means being configured so that in use at least part of the vegetative debris is forced through the outlet grid, the applicant has not met their burden of showing that col. 2, ln. 54-62 of McKie (which was cited by the examiner in the rejection as disclosing such) fails to disclose the function, but only provides a conclusory statement that McKie fails to disclose it. Col. 2, ln. 54-62 discloses that when a smaller diameter portion of a semi-processed piece of wood is forced into one of the slots of the outlet grid of McKie but has a larger diameter portion that is unable to pass through the slot, the cutting means will shear off the larger diameter portion, and thereby forcing the smaller diameter portion through the outlet grid. See the visual representation of such a scenario below. How is this different than the cooperation of the applicant’s disclosed cutting means 17 and outlet grid 13? If the applicant’s cutting means, which are illustrated as being much sharper than that of McKie, is configured to force material through the outlet grid, than how much more would McKie’s much more blunt cutting means be required to force the material through the outlet grid?
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Annotated Figure 2 of McKie, Providing a Visual of Col. 2, Ln. 54-62
The applicant further argues that:
“McKie does not disclose or suggest a chipper unit having an outer casing and inlet connected to a hopper outlet for receiving vegetative debris within a defined casing that integrates a cutting means located within the casing and configured to chip and/or mulch vegetative debris. McKie' s device is directed to heavy solid waste processing through impact and crushing actions within a large industrial rotor system, rather than chipping or mulching of vegetative debris.
In response to the applicant’s argument against the McKie reference individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The applicant has failed to show any error or shortcomings in the examiner’s proposed combination of McKie and Carlsson.
Further, heavy solid waste includes vegetative debris, as the examiner pointed out in the rejection of claim 1. See col. 1, ln. 5-42 of McKie, which states, inter alia, “… working on a variety of materials including materials with fibrous constituents or components; for example, tree stumps to produce a wood chip product suitable for ground mulch ...” Emphasis added.
The applicant then argues that:
“… McKie does not teach or suggest that an outlet grid forms an outlet for the debris within the casing, nor that the outlet grid is positioned substantially directly adjacent to the cutting means. In McKie, the grate surrounds a portion of the rotor and acts as a containment surface to facilitate size reduction by shearing, rather than as an outlet structure directly defining the discharge of debris from the unit. In contrast, claim 1 expressly requires that the outlet grid itself forms the outlet of the chipper unit and is arranged immediately adjacent to the cutting means, such that at least part of the vegetative debris is forced through the grid to exit the unit.”
The argument is not persuasive. There is no other way for the processed material of McKie to exit the casing of the mulcher of McKie than through the outlet grid 19 and, thus, it is in fact an outlet for the vegetative debris within the casing 13 (see fig. 2).
For at least the reasons set forth above, the prior art rejections are upheld but are reproduced below merely for convenience.
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 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) 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):
(A) the claim limitation uses the term “means” 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 entirely performing the claimed function;
(B) the term “means” 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 the generic placeholder is not modified by sufficient structure for entirely performing the claimed function.
Use of the word “means” 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). The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites sufficient structure to entirely perform the recited function.
Absence of the word “means” 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). The presumption that the claim limitation is not to be interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites a function without reciting sufficient structure to entirely perform the recited function.
Claim limitations in this application that use the word “means” are being interpreted under 35 U.S.C. § 112(f). Conversely, claim limitations in this application that do not use the word “means” are not being interpreted under 35 U.S.C. § 112(f).
Claim Rejections - 35 U.S.C. § 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 1-8 are rejected under 35 U.S.C. § 103 as being unpatentable over McKie (US 5,150,844 A), in view of Carlsson (US 4,544,104 A).
In re claim 1: McKie discloses a mulcher, comprising:
a chipper unit (11, 12) having an outer casing (13) and an inlet (17) passing therethrough, the chipper unit further comprising a cutting means (impact cutter bars 12) located within the casing and configured to chip and/or mulch vegetative debris within the chipper unit (wood, such as tree stumps; col. 1, ln. 5-42);
an outlet grid (19), the chipper unit and outlet grid configured so that the outlet grid forms an outlet for the vegetative debris within the casing (13), the outlet grid and cutting means mutually configured so that the grid is located substantially directly adjacent to the cutting means in use (see fig. 2), the cutting means configured so that in use at least part of the vegetative debris is forced through the outlet grid (col. 2, ln. 54-62).
McKie is silent regarding a hopper having an inlet end and an outlet end, the hopper being configured to receive vegetative debris via the inlet end; and the inlet being connected to the hopper outlet end to receive the vegetative debris within the casing.
However, Carlsson teaches a wood chipper comprising a hopper (39) having an inlet end (at outer edge 87) configured to receive wood and an outlet end connected to an inlet (37) of a chipper unit (col. 3, ln. 11-15 and fig. 3-4). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to provide McKie with a hopper having an inlet end configured to receive vegetative debris, and an outlet end connected the inlet of the chipper unit, thereby providing McKie with means for feeding material to be chipped into the chipper unit, as taught by Carlsson.
In re claim 2, which depends on claim 1: McKie discloses the outlet grid (19) comprises a plate with a plurality of elongate slots (20) formed therethrough (see fig. 2, 5).
In re claim 3, which depends on claim 2: modified McKie is silent regarding the elongate slots being formed to substantially follow the perimeter of the casing. Instead, the plate of McKie having the elongate slots is semi-circular in cross-section whereas the perimeter of the casing is substantially square (see fig. 2).
However, Carlsson teaches an outer casing (1) of a chipper unit that is curved in cross-section (see fig. 1-2, 4). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify McKie such that the perimeter of the casing is curved in cross-section, as taught by Carlsson, because selecting from known shapes of casings allowing for sufficient functionality would be obvious to the ordinary artisan. The proposed modification results in the elongate slots of McKie being formed to substantially follow the perimeter of the casing.
In re claim 4, which depends on claim 2: McKie discloses four substantially identical slots (20) are formed across the width of the plate (see fig. 5, only half of the fourth slot is shown). Note that the claim does not require that there are only four slots in total and, even if it did, there is no evidence that such a configuration produces an unexpected result. To the contrary, fig. 1-2 of the applicant’s drawings teach that other configurations can be used as desired. The ordinary artisan understands that the number of slots is one consideration when optimizing throughput of the mulcher while obtaining a desired end product size, which can be determined through routine engineering and experimentation.
In re claim 5, which depends on claim 1: McKie discloses the cutting means comprises at least one rotating blade (12) having an edge aligned substantially parallel to the axis of rotation (fig. 1-2), and a base block (anvil 18) located within the chipper unit and configured so that vegetative debris moves over the base block into the blade(s), the blade(s) rotating directly adjacent to the base block (see fig. 2).
In re claim 6, which depends on claim 1: McKie discloses the cutting means further comprises a rotating drum (11) and the at least one rotating blade is a plurality of blades (12) at a perimeter thereof (see fig. 1-2).
In re claim 7, which depends on claim 1: McKie discloses the outlet grid (19) extends substantially one-third of the distance around a perimeter of the chipper unit (see fig. 2). Even if it can be successfully argued that McKie does not in fact disclose the claimed features, the examiner notes that it has been held that where the only difference between the prior art and the claims is a recitation of relative size, proportion, or 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 does not patentably distinguish over the prior art device (MPEP § 2144.04, subsection IV.A).
In re claim 8, which depends on claim 1: McKie discloses the outlet grid (19) is located on the chipper unit so as to face at least partly downwards (see fig. 2).
Claims 1 and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Vila et al. (ES 2 275 386 A1), in view of McKie.
In re claim 1: Vila discloses a mulcher, comprising:
a hopper, having an inlet end (4) and an outlet end, the hopper configured to receive vegetative debris (6) via the inlet end (see fig. 1);
a chipper unit having an outer casing (forming grinding chamber 3) and an inlet passing therethrough, the inlet connected to the hopper outlet end to receive the vegetative debris (6) within the casing, the chipper unit further comprising a cutting means (2) located within the casing and configured to chip and/or mulch vegetative debris within the chipper unit (figures and § [0027]);
an outlet grid (15, 16; fig. 4), the chipper unit and outlet grid configured so that the outlet grid forms an outlet for the vegetative debris within the casing, the outlet grid and cutting means mutually configured so that the grid is located substantially directly adjacent to the cutting means in use (see fig. 4, there is no other structure between the grid and cutting means).
Vila does not explicitly disclose the cutting means are configured so that in use at least part of the vegetative debris is forced through the outlet grid.
However, McKie teaches an outlet grid (19) and a chipper unit (11, 12) configured so that the outlet grid forms an outlet for vegetative debris within a casing (13), the outlet grid and cutting means mutually configured so that the grid is located substantially directly adjacent to the cutting means in use (see fig. 2), the cutting means configured so that in use at least part of the vegetative debris is forced through the outlet grid (col. 2, ln. 54-62).
Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to modify Vila in the claimed manner, as taught by McKie, because applying known techniques to yield predictable results requires only routine skill in the art (KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
In re claim 9, which depends on claim 1: Vila discloses the casing of the chipper unit further comprises an upwardly-facing upper discharge aperture (see arrow B in fig. 4).
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over Vila, in view of McKie, and further in view of Hutson et al. (US 4,390,132 A).
In re claim 10, which depends on claim 9: modified Vila is silent regarding the discharge aperture being configured so that a blanking plate can be connected to the chipper unit to block the discharge aperture.
However, Hutson teaches a wood chipper comprising an upwardly-facing upper discharge aperture (190) configured so that a blanking plate can be connected to the chipper unit to block the discharge aperture (col. 4, ln. 40-45). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Vila in the claimed manner, as taught by Hutson, thereby requiring that all of the processed material be of a sufficient size to pass through the grid which increases consistency of the processed material.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Vila, in view of McKie, and further in view of Carlsson (US 4,544,105 A).
In re claim 11, which depends on claim 1: modified Vila is silent regarding the outlet grid and the chipper unit being configured so that the outlet grid can be removed and replaced with a blanking plate.
However, Carlsson (fig. 5-7) teaches an outlet grid (47) associated with a chipper unit (chipper rotor 59). Carlsson further teaches providing a set or system of easily replaceable outlet grids that enable a wood chipper to be easily adapted to different types of materials so that optimal operating conditions can be rapidly set accordingly (col. 1, ln. 51-57). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Vila such that the outlet grid is removable, thereby enabling a system of grids to be used to rapidly set optimal operating conditions as taught by Carlsson.
Note that the blanking plate has not been positively recited and, thus, is not a required feature of the claim. Accordingly, it is not being given patentable weight. Nevertheless, even if the claim were amended such that it is required, Hutson teaches the use of blanking plates. Thus, the claim would still be rejected in view of the teachings of Carlsson and Hutson.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jared O. Brown whose telephone number is 303-297-4445. The examiner can normally be reached on Monday - Friday: 8:00 - 5:00 (Mountain Time).
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/JARED O BROWN/Primary Examiner, Art Unit 3725