DETAILED CORRESPONDENCE
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 .
Response to Arguments
Applicant's arguments have been fully considered.
Nakamura (US 20070018356 A1)
Applicant argues that Nakamura does not disclose "a press with a first pressing tool and a second pressing tool. .. wherein the first pressing tool and/or the second pressing tool are designed in such manner that their expansion profile (DVPl, DVP2) deviates by a maximum of 3.5% of the expansion profile (DVW) of the workpiece during at least 97.5% of the expansion profile."
Examiner does not find this persuasive because this limitation was read as an intended use.
In short, the limitation is a function of the material worked upon (the workpiece); and if a limitation is a function of the material worked upon, then it is an intended use.
“Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.”
Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
The prior rejection indicated on Page 1 Line 13 that: “The “workpiece” is considered the material worked upon by the pressing system.”; and indicated the disputed limitation was considered an intended use on Page 7 Line 20.
If applicant disputes this interstation, then they should have explained the limitation and how it is a structural limitation and not an intended use. Instead, Applicant asserts that the Nakamura system is used differently. This raises question as to the scope of the claim and whether the disputed limitation is required to be performed as seemingly alleged by Applicant.
As an explanation of why the limitation was considered an intended use, consider the meaning of the terms in the limitation:
“wherein the workpiece passes through an expansion profile (DVW) as a function of the pressure profile acting in the working space and the temperature profile acting in the working space”
This means that a pressure and temperature is applied to the workpiece. This is generic to all workpieces because all materials change size when pressure and heat are applied. The amount they change depends on the heat and pressure. Also, this is the material worked upon by the system.
Next is,
“wherein the first pressing tool and the second pressing tool pass through a respective expansion profile (DVP1, DVP2) as a function of the pressure profile acting in the working space and the temperature profile acting in the working space”
This means that a pressure and temperature is applied to the tools and the tools expand. This is generic to all tools because all materials change size when pressure and heat are applied. The amount they change depends on the heat and pressure.
Additionally, the temperature and pressure in the claim are undefined, so the claim does not exclude certain tools based on capability to withstand certain temperatures and pressures.
Last is:
“wherein the first pressing tool and/or the second pressing tool are designed in such manner that their expansion profile (DVP1, DVP2) deviates by a maximum of 3.5% of the expansion profile (DVW) of the workpiece during at least 97.5% of the expansion profile”
This means that the tools are designed to have a expand a certain amount relative to how much the workpiece expands when the pressure and the temperature is applied.
For example if the workpiece expands 100 (arbitrary units) then the tool must expand 96.5~103.5 (arbitrary units) for 97.5% of the expansion process. The expansion process being any temperature and when any pressure is applied during the particular intended use of the tool with any composition of workpiece. Thus, this is an intended use because it defines the structure of the system on material worked upon and when the system is used in a particular manner.
As stated above, the prior office action clearly stated that the limitation was considered an intended use. Rather than explaining how the limitation is not an intended use and clarifying the claims, Applicant makes a variety of allegations regarding the applied prior art and fails to explain why the interpretation is incorrect. If this claim limitation is not an intended use then applicant should explain what the claim means and how it further limits the claimed structure.
Applicant argues that in Nakamura, “Figs. 6-7 and 9 show only a portion of a pressing process, and thus only a portion of expansion at a certain point in time that does not equate to an expansion profile of the pressing tools and the workpiece, let alone the claimed ranges and features.” (bottom of Pg. 8 to top of page 9 of remarks).
Examiner does not find this persuasive because that the prior art only illustrates a portion of a process is irrelevant in a claim to a system claim. The prior art either teaches the same structure or it does not. Here, the prior art teaches the same physical elements that make up the system, the structure.
Mine (US 20150017390 A1)
Applicant argues that the rejection is too short and rejection lacks sufficient detail to allow Applicant an opportunity to adequately respond
Examiner does not find this persuasive because the rejection is clear. The rejection cites Fig 1. Fig 1 of Mine is shown next to Fig 1 of the present Application, below. The correspondence between features in the figures is readily apparent and does not require element-by-element annotation for Applicant to review and respond.
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The claim is directed to a system and a claim to a system is the structure that is recited in the claim. Mine shows the same structure as claimed. Thus, Mine meets the claim.
As shown in the prior cited Figs 1-3 of Mine, duplicated below, 12 is a tool, 10 is a tool, 16 is a heater. The tools are pressed together (pressure) and the workpiece 15 gets molded. This clearly shows the same structure as claimed.
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The correspondence between features in the figures and the claimed invention is readily apparent and does not require element-by-element annotation for Applicant to review and respond.
Applicant makes similar arguments as made in Nakamura, above.
Examiner does not find this persuasive for the same reasons as above.
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.
Claim(s) 16-26 and 31-41 is/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 pre-AIA the applicant regards as the invention.
In reference to claim 16, the limitation
“wherein the workpiece passes through an expansion profile (DVW) as a function of the pressure profile acting in the working space and the temperature profile acting in the working space
wherein the first pressing tool and the second pressing tool pass through a respective expansion profile (DVP1, DVP2) as a function of the pressure profile acting in the working space and the temperature profile acting in the working space, wherein the first pressing tool and/or the second pressing tool are designed in such manner that their expansion profile (DVP1, DVP2) deviates by a maximum of 3.5% of the expansion profile (DVW) of the workpiece during at least 97.5% of the expansion profile”
renders the claim indefinite because it requires a user to actually use the claimed structure to accomplish a recited function. A structure claim that requires a user to actually use a structure to accomplish a recited function constitutes an attempt to bridge more than one statutory class of invention and renders the claim indefinite1.
If an end user used the apparatus without performing the claimed action, then they would not meet every limitation of the claim because the above limitation would not be met, however no structural change would have occurred to the structure.
Although, in the prior office action the Examiner interpreted the following limitation as referring to an intended use, Applicant’s remarks filed on 02/24/2026 indicates that Applicant intends for this limitation to be required by the claim. Applicant intends for the claim to require the process of using the structure as being part of the claim. In a claim to a device, however, it is the physical structure that sets forth the metes and bounds of the patent claim.
In other words, the claim was previously interpreted such that the limitation “wherein the workpiece passes through an expansion profile… wherein the first pressing tool and the second pressing tool pass through a respective expansion profile…” was an intended use of the system, however, Applicants reply indicates that they intend that the user is required to use the system as claimed. This is not permitted in a device claim. Or, alternatively, it is unclear how this is a structure.
Note: Claims 17-26 and 31-41 are also rejected by virtue of their dependence on claim 16.
Claim Interpretation – 112(f)
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.
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. pressure generating device
temperature generating device
pressing tool
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.
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 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.
Claim 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Mine (US 20150017390 A1)
If the workpiece is part of the system, then Mine is relied upon regarding claims 17-18.
In reference to claim 16, Mine discloses the invention (see Fig 1-3, and “pressure” and “temperature” in the abstract; also see Claim 8).
Figure 1 of Mine is shown next to Fig 1 of the present Application.
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The correspondence between features in the two images is readily apparent and does not require element-by-element annotation for Applicant to review and respond.
The claim is directed to a system and a claim to a system is the structure that is recited in the claim. Mine shows the same structure as the claimed system. Thus, Mine meets the claim.
Figs 1-3 of Mine are also duplicated below, in sequence, for ease of reference.
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In reference to claim 17-18, Mine discloses the invention as in claim 16 and further discloses that the workpiece comprises two fusible components (“continuous fibers and a matrix resin of a thermoplastic resin is heated and pressed in the mold” [P0034]).
Claim 16, 19-21, 25 is/are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Nakamura (US 20070018356 A1)
In reference to claim 16, Nakamura discloses a press with a first pressing tool and a second pressing tool, wherein the first pressing tool and the second pressing tool can be moved relative to one another to form a working space (Fig 6-7 and Fig 9),
a workpiece (Fig 6-7 element 1)
a pressure generating device for generating a pressure profile acting on the workpiece located in the working space (Fig 6 element 2)
a temperature generating device for generating a temperature profile acting on the workpiece located in the working space (“the first die and the second die are also respectively heated to a temperature substantially” [P0012]);
The device would be capable of the claimed intended use,
wherein the workpiece passes through an expansion profile (DVW) as a function of the pressure profile acting in the working space and the temperature profile acting in the working space
wherein the first pressing tool and the second pressing tool pass through a respective expansion profile (DVP1, DVP2) as a function of the pressure profile acting in the working space and the temperature profile acting in the working space, wherein the first pressing tool and/or the second pressing tool are designed in such manner that their expansion profile (DVP1, DVP2) deviates by a maximum of 3.5% of the expansion profile (DVW) of the workpiece during at least 97.5% of the expansion profile.
The limitation is a function of the material worked upon (the workpiece); and if a limitation is a function of the material worked upon, then it is an intended use.
“Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.”
Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
The prior rejection indicated on Page 1 Line 13 that: “The “workpiece” is considered the material worked upon by the pressing system.”; and indicated the disputed limitation was considered an intended use on Page 7 Line 20.
If applicant disputes this intpretation, then they should explain the limitation and how it is a structural limitation and not an intended use.
As a further explanation of why the limitation is considered an intended use, let’s consider the meaning of the terms in the limitation:
“wherein the first pressing tool and the second pressing tool pass through a respective expansion profile (DVP1, DVP2) as a function of the pressure profile acting in the working space and the temperature profile acting in the working space”
This means that a pressure and temperature is applied to the tools and the tools expand. This is generic to all tools because all materials change size when pressure and heat are applied. The amount they change depends on the heat and pressure.
Additionally, the temperature and pressure in the claim are undefined, so the claim does not exclude certain tools based on capability to withstand certain temperatures and pressures.
The next half of the claim is:
“wherein the first pressing tool and/or the second pressing tool are designed in such manner that their expansion profile (DVP1, DVP2) deviates by a maximum of 3.5% of the expansion profile (DVW) of the workpiece during at least 97.5% of the expansion profile”
This means that the tools are designed to have a expand a certain amount relative to the workpiece property when the pressure and the temperature is applied.
For example if the workpiece expands 100 (arbitrary units) then the tool must expand 96.5~103.5 (arbitrary units) for 97.5% of the expansion process, when any temperature and when any pressure is applied during the particular intended use of the tool. This is an intended use because it defines the structure of the system on material worked upon when the system is used in a particular manner.
In reference to claim 17-18 the cited prior art discloses the invention as in claim 1.
The prior art teaches the same structure of the apparatus. The workpiece is material worked upon.
“It will be borne in mind that it has been long established that a person may not patent a combination of device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.”
In re Smith, 36 F.2d 302, 303 (CCPA 1929)
“Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.”
In re Young (CCPA 1935)
“there is no patentable combination between a device and the material upon which it works.”
In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952)
“[T]he grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition”
In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 162 (CCPA 1957)
“Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.”
Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
In reference to claim 19 the cited prior art discloses the invention as in claim 16. See Fig 6. See element 12 in Fig 6 re membrane.
In reference to claim 20-21 the cited prior art discloses the invention as in claim 16. The prior art device would be capable of the claimed intended use.
In reference to claim 25 the cited prior art discloses the invention as in claim 16. The prior art device would be capable of the claimed intended use.
In reference to claim 36-37 the cited prior art discloses the invention as in claim 16. The prior art device would be capable of the claimed intended use.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 20070018356 A1)
In reference to claim 26 the cited prior art discloses the invention as in claim 16.
Nakamura does not disclose the dimensions of the system.
The size of the system is not a matter of invention. It would be obvious to change the size of the tooling in order to make differently sized parts.
In reference to claim 38-41 the cited prior art discloses the invention as in claim 16.
Nakamura does not disclose the dimensions of the system.
The size of the system is not a matter of invention. It would be obvious to change the size of the tooling in order to make differently sized parts. The prior art device would be capable of the claimed intended use.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 35 U.S.C. § 101 delineates four categories of statutory subject matter: “processes,” “machines,” “manufactures,” and “compositions of matter.” A claim is indefinite if it does not reasonably apprise those skilled in the art of the statutory class of invention the claim is directed to or if the claim attempts to bridge more than one statutory class of invention.
See IPXL Holdings, 430 F.3d at 1384 (claim attempting to claim both a system and a method of using that system held indefinite); In re Rishoi, 197 F.2d 342, 345 (CCPA 1952) (“[T]here is no patentable combination between a device and the material upon which it works.”); In re Smith, 36 F.2d 302, 303 (CCPA 1929) (“It will be borne in mind that it has been long established that a person may not patent a combination of device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.”).
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