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 Objections
Claims 1 and 3 are objected to because of the following:
In claim 1, “wherein further comprises” should be amended to “wherein said apparatus further comprises”.
In claim 3, “said first injection means are” should be “said first injection means is”.
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 3, 7 and 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 3 recites “the transport direction”. There is insufficient antecedent basis for this limitation in the claim.
Claims 7 recites “ means configured to supply inert gas” and “allowing the entry of inert gas”. In both limitations, it’s not clear if “inert gas” refers to the previously recited inert gas. Additionally, “the entry” lacks proper antecedent basis.
In claim 10, the limitation “the volume” lack proper antecedent basis.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fessehaye et al. (IT 2019-00002653, of record, see English translation, US equivalent 2022/0118478 for translation and citation purposes) in view of GB2139060.
The primary reference, Fessehaye shares a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). MPEP 2153.01(a) addresses this situation. In this case, because one of the inventors of the Fessehaye reference is not an inventor of the instant application, it is not readily apparent from the publication that it is an inventor-originated disclosure
As to claim 1 and 8, Fessehaye discloses an apparatus (fig 2) for the treatment of a chemical product applied to surfaces of items, said apparatus comprising: a covering element 20/120 defining a tunnel chamber 20 through which said items are transported by a conveyor belt element 30 (fig 2, 3; para 41-51), first injection means 300 (para 47) capable of supplying an inert gas in said tunnel chamber (para 62, figs 2-3), radiation emitter 56 (para 56) configured for the treatment inside said tunnel chamber of said chemical product by means of radiation (para 56-62), wherein further comprises a suction chamber (para 52) in fluid communication with said tunnel chamber, suction means (para 52, suctioning device) fluidly connected to said suction chamber (via 57), wherein said suction chamber is in fluid communication with said tunnel chamber through a plurality of through ducts 57 (para 53, fig 2-3)
Fessehaye does not disclose the plurality of through ducts formed on a wall element separating said chambers, said wall element being arranged so that said conveyor belt element is operatively at least partially interposed between said items and said plurality of through ducts, and said conveyor belt element being provided with a plurality of through openings which pass through its thickness.
GB060 discloses a device for the treatment of a product applied to surface, wherein ducts (fig 6-8, air extraction outlet) are formed on a wall element (chamber) separating said chambers, said wall element being arranged so that said conveyor belt (e.g. 14) is operatively at least partially interposed between said items and said plurality of through ducts, and said conveyor belt element being provided with a plurality of through openings which pass through its thickness (figs 3, 6, 7, p. 3, L40-115; p. 4, L46 – p. 5, L59).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Fessehaye such that the plurality of through ducts are formed on a wall element separating said chambers, said wall element being arranged so that said conveyor belt element is operatively at least partially interposed between said items and said plurality of through ducts, and said conveyor belt element being provided with a plurality of through openings which pass through its thickness as taught by GB060 above as such improves productivity and bonding by limitating reactive gases in the chamber (abstract, p. 4, L46-80).
As to claim 3, Fessehaye discloses said first injection means are arranged upstream of said radiation means with respect to the transport direction of said items in said tunnel chamber by said conveyor belt element (figs 2-5, associated text).
Claim(s) 4-6, 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fessehaye and GB060 as applied to claim 1 above, and further in view of Sueyoshi (JP2005317922, see attach ed machine translation for text citations).
As to claim 4-6, Fessehaye and GB060 do not disclose the apparatus wherein said wall element is configured so that said plurality of through ducts comprises a first ducts group arranged at or upstream of said radiation means with respect to the transport direction of said items in said tunnel chamber by said conveyor belt element and at least one second ducts group distinct from said first ducts group; wherein said wall element is configured so that said at least one second ducts group, distinct from the first group, is arranged upstream of said injection means, and said first ducts group and said at least one second ducts group being formed on said wall element so that between them there is a continuous wall portion of said wall element which is free from through ducts.
Sueyoshi discloses a treatment apparatus where a plurality of suction ducts are arranged on a wall element throughout the entire length of a chamber (fig 1, para 20-44, 57), and further discloses that the number and location of suction ducts is a design choice that effects the uniformity and contamination of the chamber (para 4-8, 43-47). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Fessehaye and GB060 such that said wall element is configured so that said plurality of through ducts comprises a first ducts group arranged at or upstream of said radiation means with respect to the transport direction of said items in said tunnel chamber by said conveyor belt element and at least one second ducts group distinct from said first ducts group; wherein said wall element is configured so that said at least one second ducts group, distinct from the first group, is arranged upstream of said injection means, and said first ducts group and said at least one second ducts group being formed on said wall element so that between them there is a continuous wall portion of said wall element which is free from through ducts as the location and number of ducts is a design choice that effects the uniformity and contamination in the chamber as taught by Sueyoshi above. One would have achieved such by performing routine experimentation to achieve only the expected results. Additionally, varying the location and number of ducts is obvious absent criticality demonstrated by the applicant. MPEP 2144.04.
As to claim 9, Sueyoshi discloses said suction chamber is defined by a plurality of sub-chambers (5a-5c, fig 1) fluid communication with each other through fluid connecting means (fig 1)
As to claim 10, Sueyoshi discloses the apparatus a distance between said conveyor belt element and said covering element is adjustable by means of adjustment means so as to adjust the volume of said tunnel chamber (para 27-31, fig 2).
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art of record does not disclose, in the context of the other limitations, the protruding elements keeping the item spaced from said plurality of through openings
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The prior art of record does not disclose, in the context of the other limitations, said reflector element interposed between said radiation emitter and said second injection means.
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.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746