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's arguments filed 9/22/25 relating to the 35 U.S.C. § 112(f) interpretation have been fully considered but they are not persuasive.
Applicant argues that
In the Office Action, the Examiner has interpreted the claims 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, the claims have been amended to address the issues that gave rise to this interpretation solely to expedite examination of this application.
The Examiner disagrees with the Applicant that claims can be examined without interpreting some of the claim terms under 35 U.S.C. 112(f). Interpretation under § 112(f) is triggered by claim language and is not optional. A claim limitation that explicitly uses the term “means” or “step” creates a rebuttable presumption that the claim limitation is interpreted under § 112(f). While Applicant states “that the claims do not recite functional language without reciting sufficient structure to perform the function,” the Applicant has not present any arguments relating to sufficient structure being claimed that rebuts this presumption for each of the means plus function limitations claimed. Therefore, the Examiner does not believe that the Applicant has satisfactory rebutted the presumption of functional claiming under 35 U.S.C. 112(f) because Applicant has not presented any arguments showing that any of these claim limitations recite a structure, material or act that entirely performs the recited function.
Claim 1, line 6 requires “a means for the electric power supply and/or the data connection to a data connection network.” Claim 1 does not provide any structure for either “a means for the electric power” or “a means for . . . the data connection to a data connection network.” If the “a means for the electric power” alternative is met in claim 1, the structure in claim 2 of “at least one electricity generation unit” does not provide any structure for claim 1 because claim 2 is not incorporated by reference into claim 1. Further if the limitation of “a means for . . . the data connection to a data connection network” is met but not “a means for the electric power,” then the structure recited in claim 2 is not invoked because only the function language of “a means for . . . the data connection to a data connection network” applies.
Claim 3, lines 2-3 requires “a unit for connecting to an electricity distribution grid” which does not provide any structure even if claim 3 incorporates by reference claim 1 from which claim 3 is dependent thereon.
Claim 4, lines 3-4 requires “a standard means for coupling the transportable container to lifting and handling equipment” that does not recite any structure.
Claim 8, lines 1-4 requires “a means is included for translating said at least one mechanical arm into positions such that said at least one mechanical arm acts alternately on a plurality of said stations of said refrigerated containers.” Claim 8 does not provide any structure for “a means is included for translating said at least one mechanical arm into positions . . .” “A means is included for . . .” is understood as a means plus function despite using variant language because no structure is recited after “a means is included for.” By having structure in claim 9 of “a guide” does not provide any structure for claim 8 because claim 9 is not incorporated by reference into claim 8.
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.
Claims 1-10 includes many means plus function claim terms that Applicant argues should not be interpreted under 35 U.S.C. 112(f). Given that a claimed element interpreted under 35 U.S.C. 112(f) and not under 35 U.S.C. 112(f) have different claim scopes because broadest reasonable interpretation (BRI) of that claim language changes under § 112(f) where the claim is interpreted to cover only the corresponding structure, material, or acts described in the specification and their equivalents, which is not applicable if 35 U.S.C. 112(f) is not invoked. Therefore, this issue needs to be addressed, which includes possibly revising the claim language to insure that claim interpretation under 35 U.S.C. 112(f) does not apply;
Claim 1, line 5, “the data connection” lacks antecedent basis;
Claim 10, line 4 requires “a single guide” and Claim 9, line 3 requires “a guide.” Are these the same or different guides being claimed?
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.
Applicant has the option of amending the claim limitation to clearly recite a definite structure, material or act that entirely performs the recited function to insure that interpreted under 35 U.S.C. 112(f) is not invoked. If the claims are amended in this matter, it suggested that the “means for” be removed.
The following claim limitations are being interpreted under 35 U.S.C. 112(f) that use “a means for” or a variant thereof.
Claim 1, line 6 requires “a means for the electric power supply and/or the data connection to a data connection network”;
Claim 4, lines 3-4 requires “a standard means for coupling the transportable container to lifting and handling equipment”; and
Claim 8, lines 1-4 requires “a means is included for translating said at least one mechanical arm into positions such that said at least one mechanical arm acts alternately on a plurality of said stations of said refrigerated containers.”
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: “a unit for” in claim 3 (Claim 3, lines 2-3 requires “a unit for connecting to an electricity distribution grid” which does not recite any structure).
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.
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 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 ROBERT J HOFFBERG whose telephone number is (571) 272-2761. The examiner can normally be reached on Mon - Fri 9 AM - 5 PM.
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 9/30/2025
/ROBERT J HOFFBERG/
Primary Examiner, Art Unit 2835