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 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 Arguments
Applicant presents arguments directed to various references (see Applicant’s remarks of 4/1/26, pp. 5-7) that were cited in the Non-final office action dated 3/20/25. No prior art was cited in the Final office action dated 10/2/25 because this issue of whether the claims were to be interpreted under 35 U.S.C. 112(f) had to addressed. Therefore, Applicants remarks regarding prior art is not being addressed.
Applicant argues that claims should not interpreted under 35 U.S.C, 112(f) (see Applicant’s remarks of 4/1/26, p. 4). See Examiner’s response below.
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.
Claim 1, line 5 recited “unit for . . . “, Claims 2, 3, and 9 recite “means for” and Claim 4 recites “standard means for.” Applicant has argued that
In the Office Action, the Office has interpreted limitations of claims 1, 4 and 8 under 112(f). Applicant disagrees with this interpretation and submits that the claims do not recite functional language without reciting sufficient structure to perform the function. However, claims 1 and 8 have been amended to address the issues that gave rise to this interpretation. (see Applicant’s remarks of 4/1/26, p. 4).
Applicant has failed to provide any specific arguments as to the structure that is claimed by each of these functional limitations. The Examiner does note that functional limitations have been converted into structural limitations in claims 1 and 8, but does not address all instances of functional claiming. Still remaining functional claiming are as follows:
a. claims 1 and 3 each require “a unit for connecting to an electricity distribution grid” without providing structure for connecting to the electricity distribution grid”;
Claim 4 has not been amended, which leaves “a standard means for coupling the transportable container to lifting and handling equipment” to having to be interpreted under 35 U.S.C. 112(f) because the claims lacks any structure for how the coupling of the transportable container for lifting and handling equipment is accomplished;
Claims 2 and 3 still recites “said means for the electric power supply” even though this “means for” has been eliminated from claim 1; and
Claim 9 still recites “said means for translating” even though this “means for” has been eliminated from claim 8.
Claim Objections
Claims 1-10 are objected to because of the following informalities:
a. Claim 1, lines 5-6 requires “at least one [A] and [B].” The examiner understands as “at least one [A] or [B]” where [A] = “electricity generation unit” and [B] = “a unity for connecting to an electricity distribution grid.” See Superguide v. DirecTV, 358 F.3d 870 (Fed. Cir. 2004) and Ex Part Jung (PTAB Appeal No. 2016-008290).
Appropriate correction is required.
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 1-10 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.
Claim 1, lines 1-2 requires “an electric power supply and/or a data connection” and lines 4-6 requires “an electric power supply system . . . and a data connection.” Due to the inconsistency of “and/or” and “and”, are both the electric power supply and the data connection required by the system?Claim 1, lines 1-2 and 4-5 each require “an electric power supply.” Are these the same or different elements being claimed?
Claim 1, line 2 requires “a data connection for refrigerated containers by means of at least one mechanical arm” and line 6 requires “a data connection to a data transmission network.” Are these the same or different data connections being claimed?
Claim 1, line 2 requires “for refrigerated containers” (which is intended use) and lines 10-11 requires “a respective one of said refrigerated containers.” What is the minimum of refrigerated containers that the invention requires?
Claim 2, line 1, “said means for” lacks antecedent basis;
Claim 2 , line 2 requires “at least one electricity generation unit” and Claim 1, line 5 requires “an electricity generation unit.” Are these the same or different elements being claimed, since claim 2 does not have any antecedence to claim 1?
Claim 3, line 1, “said means for” lacks antecedent basis;
Claim 3, line 2 and Claim 1, lines 5-6 each require “a unit for connecting to an electricity distribution grid.” Are these the same or different elements being claimed, since claim 3 does not have any antecedence to claim 1?
Claim 7, lines 1-2 requires “at least two of said at least one mechanical arm” and Claim 6, line 2 requires “a plurality of mechanical arms.” Since “at least two” and “a plurality” each require two or more mechanical arms, are the “at least two” are the same two or more as defined by the “plurality” of claim 6?
Claim 7, line 5 requires “an upper one . . . upper one.” Is the second occurrence of “upper one” the same or different from the first occurrence of “upper one”?
Claim 8, line 4, “said stations” lacks antecedent basis;
Claim 9, line 1, “the means for” lacks antecedent basis;
Claim 9, line 2 and Claim 8, line 2 each requires “a support carriage.” Are these the same or different support carriages being claimed?
Claim 9, line 3 and Claim 8, line 3 each requires “a guide.” Are these the same or different guides being claimed? and
Claim 10, line 3, does “the guide” have antecedence in “a guide” of claim 8, line3 or claim 9, line 3?
Allowable Subject Matter
The Examiner is not indicating any allowable subject matter because there is disagreement as to how the claims are to be interpreted. The Applicant “submits that the claims do not recite functional language without reciting sufficient structure to perform the functions” (Applicant’s remarks of 4/1/26, p. 4). The Examiner disagrees in the instants noted above. Until claim interpretation can be agreed upon, the Examiner cannot determine whether the claimed invention(s) are patentable.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2025/0340379 discloses an arm for transferring power and data.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HOFFBERG whose telephone number is (571) 272-2761. The examiner can normally be reached on Mon - Fri 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash Gandhi can be reached on (571) 272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RJH 4/30/2026
/ROBERT J HOFFBERG/
Primary Examiner, Art Unit 2835
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