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 .
Election/Restrictions
The applicant's election with traverse of Group 2 (claims 6-14) in the reply filed on 3 February 2026 is acknowledged.
The applicant argues on Pgs. 8-9 that the Office has not made a prima facie case because it has not shown, per MPEP 808, that the inventions are distinct and must be restricted on the basis of separate classification, separate status in the art, or a different field of search, and further argues on Pg. 9, under MPEP 806.05(j), that Groups 1 and 2 are “capable of being used together”. The present application is a national stage application under 35 U.S.C. 371, and restriction is governed by the requirement for unity of invention under 37 CFR 1.475 and PCT Rule 13, not by the distinctness and serious-burden provisions of MPEP 806 and 808, which apply to applications examined under U.S. restriction practice. Under PCT Rule 13.2, the sole inquiry is whether the groups share the same or corresponding special technical features, that is, technical features defining a contribution that each claimed invention makes over the prior art. A showing of separate classification, separate status in the art, or a different field of search is not required, and whether the inventions are “capable of use together” is not the test for unity of invention.
The applicant argues on Pgs. 6-8 that Groups 1 and 2 are linked by a single general inventive concept, characterized as a warm-dough processing system that eliminates the resting phase by forming products directly from warm dough, followed by rapid cooling in the mold, and identifies as special technical features, among others, integrated cooling-in-mold to eliminate the resting phase and a second container system with a movable separator. This argument is not persuasive because the features said to supply the inventive link are not features common to both groups. The link between groups under PCT Rule 13.2 must be the same or corresponding special technical feature, and unity is assessed with respect to the independent claims. Rapid cooling, cooling-in-mold, and elimination of a resting phase are recited only in the method of Group 1 (see claims 1 and 3) and are not recited in any claim of elected Group 2. The device of independent claim 6 contains no cooling structure. A feature appearing in only one group cannot be a corresponding technical feature shared by both groups. Likewise, the second container with a movable separator is recited in dependent claim 8, not in independent claim 6, and therefore does not establish a link between the independent claims of the two groups. To the extent applicant relies on “warm dough” (claim 6), that recitation defines the material the container is configured to house and imparts no structural feature to the device beyond a container capable of holding dough. See MPEP 2115. It is not a special technical feature distinguishing the device over the prior art.
The technical features actually common to independent claims 1 and 6 are a first container configured to receive dough up to a predetermined level corresponding to a dimension of the product, a first forming cutting mold comprising a plurality of tubular cells in the shape of a model of the product, and a first ejector mold comprising a plurality of extensions configured to be introduced tightly into the tubular cells. As set forth in the restriction requirement, this shared technical feature is not a special technical feature because it does not make a contribution over the prior art, as evidenced by US 1,144,953 (“Ward”). See also US 5,776,533 (“Okamoto”) and KR 10-1462263 (“Yoon”), which are discussed below. Ward discloses a container (the baking pan 2; see Figure 1) configured to receive a piece of dough (the rounded-up dough 1; see Figure 1), a forming cutting mold comprising a plurality of cells in the shape of the product (the divider blades 4, which subdivide the dough into fractional biscuit parts 5; see Figures 4-7), and a mold comprising a plurality of extensions configured to be introduced tightly into the cells (the plungers 3, which engage the dough with pressure within the divided regions; see Figure 4). The applicant expressly acknowledges on Pg. 7 that “Ward discloses generic components (container, mold, ejector)”. The applicant's remaining arguments regarding Ward, that Ward operates on cool proofed dough, that Ward's formation is sequential rather than simultaneous, and that Ward does not teach a warm-processing, cooling-in-mold, no-resting paradigm, are directed to process limitations of Group 1 that are not reflected in corresponding special technical features of elected Group 2, and therefore do not establish a special technical feature linking the two groups. Because the shared technical feature is not a special technical feature, Groups 1 and 2 lack unity of invention under PCT Rule 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The disclosure is objected to because of the following informalities:
In line 15 on page 7 of the substitute specification filed on 16 August 2023, there is a reference to “the cells of the first container”. The cells are part of the first forming cutting mold, not the first container. See lines 9-13. See also Figure 2 and lines 23-27 on page 10.
Appropriate correction is required.
Claim Objections
Claims 7-8 and 12-13 are objected to because of the following informalities:
Claim 7 recites “the plurality of extensions of the ejector mold”. For consistency with claim 6, this should read “the plurality of extensions of the first ejector mold”.
In claim 8, in the language “wherein between each of said rows or columns of the cells, the same comprises a slot”, the term “the same” should be replaced with “the second forming cutting mold” to increase clarity.
Each of claims 12 and 13 recites “an element selected between the first and second forming cutting mold”. To increase clarity, this language should be replaced with “one of the first and second forming cutting molds” (claim 12) and “the one of the first and second forming cutting molds” (claim 13).
Appropriate correction is required.
Claim Interpretation
The claims of elected Group 2 are directed to an apparatus. The following are statements of intended use or recite the material/article worked upon, and receive patentable weight only insofar as they require the claimed structure to be capable of the recited function: the preamble “A device for producing products from warm dough” (claim 6); “a first container configured to house a warm dough of a product to be obtained up to a predetermined level, corresponding to a height of the product to be obtained” (claim 6); “tubular cells in the shape of a model of the product to be obtained” (claim 6); and the analogous “warm dough” and “product to be obtained” recitations in the dependent claims.
A recitation of the manner in which an apparatus is intended to be employed does not distinguish the claimed apparatus from a prior art apparatus that teaches all the structural limitations. Ex parte Masham; MPEP 2114(II). Likewise, inclusion of the material or article worked upon (the warm dough or the croquette/product) does not impart patentability to an apparatus claim. In re Otto; In re Young; MPEP 2115. Accordingly, prior art disclosing a container, a forming cutting mold, and an ejector mold structurally capable of the recited functions meets these limitations regardless of whether that art is described as operating on warm dough or producing croquettes. The functional “configured to” recitations are treated as requiring only that the structure be capable of the function. In re Schreiber; MPEP 2114(IV).
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 6-14 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 6 recites “a first ejector mold comprising a plurality of extensions configured to be introduced tightly into the tubular cells of the first container”. There is insufficient antecedent basis for “the tubular cells of the first container”. Claim 6 introduces “a plurality of tubular cells” as a feature of the first forming cutting mold, not the first container, and the first container is not described as having any tubular cells. For purposes of examination, the limitation at issue is being interpreted as referring to “the tubular cells of the first forming cutting mold”. Claims 7-14 are rejected based on their dependency from claim 6.
Claim Rejections - 35 USC § 102
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.
Claims 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,776,533 (“Okamoto”).
Regarding claim 6, Okamoto discloses a device for producing products from warm dough (an apparatus for preparing a precut, solid water-in-oil emulsion such as butter or margarine; see the abstract, column 1, lines 8-13, and claim 11), comprising:
a first container configured to house a warm dough of a product to be obtained up to a predetermined level, corresponding to a height of the product to be obtained (the outer frame 1 of the mold M, which receives the fluid emulsion filled to a predetermined quantity; see column 5, lines 45-50, column 5, line 63, to column 6, line 3, column 10, lines 25-33, and Figures 1, 4, and 5);
a first forming cutting mold comprising a plurality of tubular cells in the shape of a model of the product to be obtained (the partitioning frame 3, formed by a plurality of partitioning plates 2 disposed within the outer frame 1 and defining a plurality of partitions in the shape of the product, for example square, rectangular, or trapezoidal; see column 5, lines 45-50, column 7, lines 21-26, and Figures 1, 8, 20, and 21); and
a first ejector mold comprising a plurality of extensions configured to be introduced tightly into the tubular cells of the first forming cutting mold (the extrusion die 4, having grooves 5 that receive the partitioning plates 2 such that the portions of the die between the grooves enter the partitions in close, slidable contact, the die being advanced through the mold to discharge the set emulsion from the mold; see column 5, lines 45-50, column 6, lines 7-11, column 10, lines 14-18, Figures 1, 6, and 7, and claim 11; see also the interpretation of claim 6 provided in the § 112(b) rejection above).
The recitations “for producing products from warm dough” and “configured to house a warm dough of a product to be obtained” are directed to the intended use of the apparatus and the material worked upon, which do not patentably distinguish the claimed device over the prior art apparatus. See MPEP 2114(II) and 2115. See also the Claim Interpretation section above. Regardless, Okamoto discloses an apparatus that houses and forms a fluid food material filled to a predetermined level, as discussed above.
Regarding claim 7, Okamoto discloses that the plurality of tubular cells of the first forming cutting mold and the plurality of extensions of the first ejector mold are arranged adjacent to each other, forming rows and columns (the partitioning plates 2 are arranged in parallel crosses to define a grid of partitions, and the grooves 5 of the extrusion die 4 are arranged in a corresponding grid; see Figure 1).
Claims 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 10-1462263 (“Yoon”).
Regarding claim 6, Yoon discloses a device for producing products from warm dough (a manufacturing device that forms glutinous rice cakes from rice cake dough by placing the dough in a molding mold, dividing it into multiple pieces, and rapidly freezing it; see [0001] of the provided translation), comprising:
a first container configured to house a warm dough of a product to be obtained up to a predetermined level, corresponding to a height of the product to be obtained (the dough mold 1, which holds the rice cake dough spread to a certain thickness within the dough mold, the thickness corresponding to the height of the formed product; see Figure 1, [0010], the last paragraph on page 10 of the provided translation, and [0038]);
a first forming cutting mold comprising a plurality of tubular cells in the shape of a model of the product to be obtained (the grid mold 2, which is placed on top of the dough and divides it into a plurality of pieces of a certain shape and size; see Figure 1, [0010], the last paragraph on page 10 of the provided translation, and [0038]); and
a first ejector mold comprising a plurality of extensions configured to be introduced tightly into the tubular cells of the first forming cutting mold (the removal plate 55, which passes downward through the gaps between the grid mold 2 to press and remove the frozen dough from inside the grid cells and drop it onto the belt conveyor 51; see [0088], [0104], and Figures 8-10; see also the interpretation of claim 6 provided in the § 112(b) rejection above).
The recitations “for producing products from warm dough” and “configured to house a warm dough of a product to be obtained” are directed to the intended use of the apparatus and the material worked upon, which do not patentably distinguish the claimed device over the prior art apparatus. See MPEP 2114(II) and 2115. See also the Claim Interpretation section above. Regardless, Yoon discloses a device that houses and forms a dough (glutinous rice cake dough), as discussed above.
Regarding claim 7, Yoon discloses that the plurality of tubular cells of the first forming cutting mold and the plurality of extensions of the first ejector mold are arranged adjacent to each other, forming rows and columns (the grid mold 2 defines cells arranged in a grid of rows and columns, and the removal plate 55 includes corresponding portions that pass through the gaps of the grid; see Figures 1 and 8-10).
Allowable Subject Matter
Claims 8-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 8 requires a second container, a separator, a second forming cutting mold, and a second ejector mold. The second container comprises marks on the inside of at least one side wall for signaling positions. The separator fits inside the second container and is located in correspondence with one of the marks. The second forming cutting mold comprises a slot to allow for the insertion of the separator.
It is known in the art to provide a container with a movable separator. For example, US 5,779,080 (“Corse”) discloses a multi-purpose baking pan 10 having a divider 48 for adjusting the size of the baking pan 10. See Figures 4 and 5 and column 3, lines 46-53. However, Corse does not disclose a forming cutting mold or ejector mold like those claimed, and there is nothing in the prior art to teach or suggest incorporating a divider like that of Corse into an apparatus like that of Okamoto or Yoon.
Claims 9-14 contain allowable subject matter based on their dependency from claim 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Specifically, see the abstract and Figures 3-6 of FR 2 601 231 (“Bertuetti”).
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/John J DeRusso/Primary Examiner, Art Unit 1744
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