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 .
DETAILED ACTION
Claim Interpretation
The claims recite an apparatus with structural limitations and material worked upon by the apparatus. While there is nothing wrong with claiming the material worked upon, such limitations are only given weight to the extent that they limit the structure of the claimed apparatus. See MPEP 2115. See In re Rishoi (94 USPQ 71), In re Smith (3 USPQ 315), and In re Young (25 USPQ 69).
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
Claim Rejections - 35 USC § 112
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 10-19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “tightly” in claim 10 is a relative term which renders the claim indefinite. The term “tightly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is entirely unclear how to determine the difference between a “tightly” seal and a non-tightly seal.
Claim 14 recites “a nozzle body wherein a fluid mechanics design of the nozzle body in relation to a fluid mechanics design of the application area is configured to create a pressure point as a manually usable control parameter.” Respectfully, this claim is entirely unclear. It’s unclear what “a fluid mechanics design” means. The term is not a term of art. It’s also unclear how an application area, which is not part of the structure of the nozzle, can have a “fluid mechanics design”. Nor is it clear how either the fluid mechanics design can “create” a pressure point “as manually useable control parameter”. It’s not even clear what a “manually useable control parameter” is.
The term “smooth” in claim 14 is a relative term which renders the claim indefinite. The term “smooth” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is entirely unclear how to determine the difference between a smooth and not smooth.
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 (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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 10-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McMahon et al (US 2011/0091590).
The sealant bead, paste, application area, adhesion surfaces and flexible lateral seal are material to be worked upon and do not further limitation the structure of the nozzle. See Claim interpretation section above.
As to claim 1, McMahon discloses an application nozzle (fig 3,-4, 22) for manual application of a dimensioned sealant bead in a guiding direction, the dimensioned sealant bead having a paste consistency for sealing corner joints between a first adhesion surface and a second adhesion surface, comprising: a nozzle head (148/150, 950, para 44-53, 71-72, figs 3-5, 22) having a shaping area (fig 2-5, 22); and a triangular sealing wedge (fig 3, 4a, wedge is triangle shaped, also see head in fig 22), made of elastic material (para 44), wherein the nozzle head is made of an elastic structured rubber (para 44) in the shaping area, wherein the triangular sealing wedge is configured to tightly seal an application area is formed between the first adhesion surface and the second adhesion surface (figs 3-5, para 44-61, 71-72).
As to claim 11, McMahon discloses the elastic structured rubber of the nozzle head is designed for the first adhesion surface and the second adhesion surface to be compressed upon placement of the application nozzle on an application substrate and for creating of a flexible lateral seal as a constructive shape of the elastic structured rubber (para 44-47, 53, fig 3-4a).
As to claim 12, McMahon discloses a feed opening 160 in an area directly behind the triangular sealing wedge, wherein the feed opening leads directly through the structured rubber (para 47, 71-72, figs 3-5, 22).
As to claim 13, McMahon discloses a positioning guide system (fig 3) for positioning the shaping area of the nozzle head, wherein the positioning guide system comprises a first contact body 170 and a second contact body 182, (fig 3; 352/354, para 57 fig 7 can also read on the contact bodies).
As to claim 14, McMahon discloses a nozzle body wherein a fluid mechanics design of the nozzle body in relation to a fluid mechanics design of the application area is configured to create a pressure point as a manually usable control parameter (para 44-61, 71-72, figs 3-7, 22).
As to claim 15, McMahon discloses the elastic structured rubber is designed for adapting to the first adhesion surface and the second adhesion surface by sealing the application area laterally and in the guiding direction (para 44-53, 71-72, figs 3-5, 22).
As to claim 16, McMahon discloses a surface of the elastic structured rubber is smooth for forming a visible surface of the dimensioned sealant bead (para 44-61, 71-72, figs 3-7, 22).
As to claim 17, McMahon discloses the triangular sealing wedge is designed as a triangular sealing lip (figs 3, 4a and 22).
As to claim 18, McMahon discloses the elastic structured rubber is formed to have edges which are capable of being compressed when the application nozzle is placed on the first adhesion surfaces and the second adhesion surface (para 44, 68, fig 3-5).
As to claim 19, McMahon discloses a cross-section of a duct for the sealant leading to the feed opening is larger than a cross-section of the application area (para 44-61, 71-72, figs 3-7, 22).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746