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
EXAMINER’S COMMENT
Applicant's election with traverse of Group I (claims 9-24) in the reply filed on May 12, 2026 is acknowledged. The traversal is on the ground(s) that there would be no undue burden on the Examiner. This is found persuasive thus the requirement is withdrawn and all claims are examined.
Insertion of continuing data of PCT and Japanese Foreign Priority documents at beginning of the specification is suggested.
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 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. Such claim limitation(s) is/are: “the sorted is configured to select a portion of the water-absorbent resin precursor having a water content of 20% or more” of claim 9 and “selecting and removing a portion of the water-absorbent resin precursor, the portion having a water content of 20% or more” of claim 25. The specification teaches a specific sorting method for detecting the water-absorbent resin precursor having a surface temperature of 50C to 100oC in para. [0037]. Thus, claims 9 and 25 are objected.
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 § 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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nitschke (US 2008/0287631 A1)
Nitschke teaches a process for preparing water-absorbing polymer particles comprising the steps of i) drying a hydrogel to produce a dried hydrogel, ii) separating incompletely dried polymeric particles from the dried hydrogel and iii) drying the separated-off incompletely dried polymeric particles in abstract. Nitschke further teaches that the incompletely dried polymeric particles have the water content of 10-30 wt.% in [0024].
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to separate a pulverized incompletely product (i.e., particles) having a water content exceeding 20 wt.% and further classifying thereafter in Nitschke since the water content exceeding 15 wt.% would encompass the recited 20 wt.% of claim 1 absent showing otherwise.
The existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would have not been obvious. In re Peterson, 315 F.3d at 1330 (Fed. Cir. 2003). MPEP 2144.05
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Miyaka et al. (US 6,291,63).
Miyaka et al. teach a method of absorbent resin comprising a drying step and a separating step (i.e., soring step) of obtaining a pulverized incompletely product (i.e., particles) having a water content exceeding 15 wt.% in claim 1. Miyaka et al. further teach classifying the incompletely dried product in claim 2 and lines 7-15 of col. 25.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to separate a pulverized incompletely product (i.e., particles) having a water content exceeding 20 wt.% and further classifying thereafter in Miyaka et al. since the water content exceeding 15 wt.% would encompass the recited 20 wt.% of claim 1 absent showing otherwise.
The existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would have not been obvious. In re Peterson, 315 F.3d at 1330 (Fed. Cir. 2003). MPEP 2144.05.
CLAIM OBJECTION
Claims 10-24 are 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.
Claims 25-27 are 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 and if rewritten to overcome the objection under Claim Interpretation to claims 9 and 25.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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