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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it uses phrases which can be implied (“The invention relates to,” “The invention also pertains to”), and because it uses legal phraseology (“means”).
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities:
Page 1, line 31, of the as-filed specification should be amended to recite “an ultra-high temperature.”
Page 4, lines 23–24, of the as-filed specification should be amended to recite “an ultra-high temperature.”
Page 5, lines 25–26, of the as-filed specification should be amended to replace “general vertical hole 6” with “tubes 6.”
Page 6, lines 14–15, of the as-filed specification should be amended to replace “general vertical hole 6” with “tubes 6.”
Page 7, lines 23–24, of the as-filed specification should be amended to recite “an ultra-high temperature.”
Page 7, line 15, of the as-filed specification should be amended to recite “an ultra-high temperature.”
Claim Objections
Claims 7, 9, and 10 are objected to because of the following informalities:
Claim 7 currently recites, “wherein it is applied to the material.” For clarity, the claim should be amended to make clear that “it” is the exposure of the material to the high-powered magnetic field.
Claims 9 and 10 should each be amended to recite “an ultra-high temperature.”
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
The following limitations are interpreted under § 112(f):
The means for, and step of, rotating or stirring the material in claims 3 and 6, respectively (no structure disclosed).
The means for measuring the material dielectric evolution of the material in claim 4 (“a spectrograph or a network analyzer transformed and fed to the computer program”).
The electronic control means in claim 4 (“a computer with an appropriate computer program”).
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
The mans for exposing the material to a high-powered electromagnetic field in claim 1 (adequate structure in the claim).
The means for, and step of, vertically moving the material in the general vertical hole in claims 3 and 6, respectively (clearly some sort of pump or the like).
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f), it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claims 3, 6, 9, and 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim limitations “means for rotating or stirring the material” (claim 3) and “step of rotating . . . the material” (claim 6) invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Each of claims 9 and 10 are “use” claims. See MPEP § 2173.05(q). These claims are indefinite because they do not set forth steps involved in the process.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5–10 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 includes a method step of “introducing the material to be transformed into the general vertical hole (4) of a device according to claim 1.” While the incorporation of claims is generally permissible (see MPEP §§ 608.01(n) and 2173.05(f)), the manner in which it is done in this claim raises concerns under § 112(d). Applicant clearly seems to mean that the claim should incorporate the structure of claim 1 (particularly given the limitation of “the magnetrons” later in the claim that, at least in part, seems to recognize other structure from apparatus claim 1). However, this part of the claim only says that the general vertical hole is incorporated, which is less than all the structure of claim 1, which suggests that only the general vertical hole is being incorporated, and therefore that less than all of the structure of claim 1 is being incorporated. See MPEP § 608.01(n).III., “the test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends and specify a further limitation of the subject matter claimed.” Applicant should amend claim 5 to clearly indicate that it incorporates the structure of apparatus claim 1. This can be done, for example, by amending the preamble to recite, “A process for transforming a material using the device according to claim 1,” and striking the mention of the structure of claim 1 later in the claim.
Claims 6–10 are rejected due to dependency upon a rejected claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1, 2, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fritz (US Pat. 4,775,770).
Claim 1: Fritz discloses a device for transforming a material, comprising means for exposing the material to a high-powered electromagnetic field (24) in order to perform a volumetric heating of the material characterized in that
said means comprise at least two torus-shaped waveguides (20) vertically disposed on one another (see fig. 5),
each torus-shape waveguide being associated on one side with a magnetron (24) and having on another side a vertically extending hole (22, see figs. 4–6),
the holes being aligned and forming a general vertical hole (19, see figs. 4–6) for receiving the material to be transformed.
Claim 2: Fritz discloses at least three torus-shaped waveguides (20) offset by an angle of 120 degrees to each other (see fig. 6).
Claim 5: Fritz discloses a process for transforming a material (7), comprising the steps of:
introducing the material to be transformed into the general vertical hole (19) of a device according to any one of claim 1 (see the rejection of claim 1 above) and
activating the magnetrons (20) in order to expose the material to a high-powered electromagnetic field and perform its volumetric heating.
Comment: Each of claims 5, 6, and 8 use the language of “the steps” or “the step,” with no “steps” or “a step.” However, even though the language does not follow the norms around antecedent basis in the conventional way, it’s abundantly clear that these are newly introduced steps in the claim, and the claims are definite under § 112(b).
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 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.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Fritz as applied to claims 1 and 5 above, and further in view of Mallah et al. (US Pat. 5,703,343).
Fritz does not disclose means or a step for rotating or stirring the material and/or means or step for vertically moving the material in the general vertical hole.
However, Mallah discloses a similar apparatus (clearly evident from fig. 4) with means for vertically moving material in a vertical hole (P1).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ the pump taught by Mallah to move the material of Fritz (most specifically, the milk mentioned in col. 11, ll. 19–38) through the apparatus for processing.
Claims 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fritz as applied to claims 1 and 5 above, and further in view of Kongmark et al. (US Pub. 2009/0101639).
Fritz does not disclose means or a step for measuring the material dielectric evolution of the material during its temperature ramping and electronic control means for adapting the exposure of the material to the measured dielectric values as well as to the nature of the material.
However, Kongmark discloses a similar apparatus with means for measuring the material dielectric evolution of the material during its temperature ramping (see ¶ 82 discussing “the dielectric properties of the irradiated portion of the product”) and electronic control means for adapting the exposure of the material to the measured dielectric values as well as to the nature of the material (8; see ¶ 82 also discussing considering the volume of the material).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add the means for measuring the material dielectric evolution of the material, and the electronic control means, taught by Kongmark to more accurately deliver an appropriate amount of radiation to the material being treated.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fritz.
Fritz does not seem to disclose that the electromagnetic field is applied to the material for a duration which depends on the characteristic and mass of the material submitted to the exposure.
However, before the effective filing date of the claimed invention, one of ordinary skill in the art would have been readily appraised of how the time for which the material was exposed to the electromagnetic field would be generally commensurate with the amount that it was heated, and would have chosen an exposure time appropriate for a desired heating effect of the material.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Fritz as applied to claim 5 above, and further in view of Strand (US Pat. 5,473,050).
Fritz discloses the use of the process of claim 5 to transform milk into a sterilized milk (col. 11, ll. 19–38).
Fritz does not explicitly disclose transforming milk into a UHT sterilized milk, the UHT being 138–142 °C.
However, UHT milk heated to 138 or 142 °C is known as a sterilization technique, as evidenced by Strand (col. 2, ll. 35–36).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to sterilize milk according to Fritz’s method to create UHT milk to give it a longer shelf life.
Allowable Subject Matter
Claim 9 would be allowable if rewritten to overcome the objection, as well as the rejection 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:
Fritz (US Pat. 4,775,770), Mallah et al. (US Pat. 5,703,343), Kongmark et al. (US Pub. 2009/0101639), and Kongmark et al. (WO 2012/098183 A1, cited by Applicant) are the most relevant prior art of record. Fritz and each Kongmark reference seem to concern heating food, while Mallah is concerned with heating a resin. There is no sufficient evidence that it would have been obvious to one of ordinary skill in the art to use an apparatus like what is shown in these references to transform a ceramic material into an ultra-high temperature ceramic.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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/JOHN J NORTON/ Primary Examiner, Art Unit 3761
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