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 .
Response to Amendment
The Amendment filed 10 November 2025 has been entered. Claims 1-4 remain pending in the application. Applicant's amendments to the Claims have overcome the 112(b) rejection previously set forth in the Non-Final Office Action dated 12 August 2025.
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 use the word “means,” which are 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: “paint micronization means” in claim 1.
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 (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 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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hansinger et al. (US 6,056,215).
Regarding claim 1, Hansinger teaches a coating machine (10) comprising a rotary atomizing head-type sprayer having a rotary atomizing head (col. 1, ln. 20-25; fig. 1) to spray paint on the tip (238) of a hollow rotary axis (202) that may be rotated by an air motor (44) in order to supply paint from a feed tube inserted into the rotary axis toward the rotary atomizing head (col. 7, ln. 53-65),
a paint supply source (col. 8, ln. 6-8) to supply the paint for the rotary atomizing head-type sprayer, and
a paint supply channel (46) from the paint supply source to the rotary atomizing head (fig. 1),
wherein the paint supply channel is provided with a paint micronization means (49) to promote the micronization of the paint that may be sprayed from the rotary atomizing head.
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.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hansinger.
Regarding claim 2, Hansinger discloses the coating machine described regarding claim 1, and further wherein said paint micronization means is provided at a position to obstruct the paint supply channel in the feed tube (fig. 1), and is a shearing member (col. 8, ln. 7-8; fig. 1) that is equipped with a plurality of micropores (610). Hansinger does not explicitly disclose that a total area of a part that allows for distribution of the paint is 1.53 mm2 or less.
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to utilize 1.53 mm2 or less for the total area of the part that allows for distribution of the paint since our reviewing courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 3, Hansinger discloses the coating machine described regarding claim 1, and further wherein the rotary atomizing head is constructed of a cup part (col. 7, ln. 62-63; fig. 6A) that is mounted at the tip end of said rotary axis (fig. 6A) and that has an extended paint surface (242) with a front surface that extends toward the front (fig. 6A), and a hub part (232) that is provided inside the cup part and that has an opposing surface that forms a gap part (240) with said extended paint surface throughout the entire circumference (col. 18, ln. 41-43; fig. 6A), and said paint micronization means is said gap part (col. 18, ln. 44-49) and the gap dimension between said extended paint surface and said opposing surface has been set to be 0.10 in. (col. 18, ln. 58 – which is about . Hansinger does not explicitly disclose that the gap dimension between said extended paint surface and said opposing surface has been set to be less than 0.2 mm.
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to utilize 0.2 mm or less for the gap dimension between said extended paint surface and said opposing surface since our reviewing courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 4, Hansinger discloses the coating machine described regarding claim 1, and further wherein said paint micronization means is a mesh-shaped micronization member (610, see col. 8, ln. 7-8; fig. 1) that has been provided in the paint supply channel (fig. 1). Hansinger does not explicitly disclose a pore size of 20 μm or less.
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to utilize 20 μm or less for the pore size since our reviewing courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Response to Arguments
Applicant's arguments filed 10 November 2025 have been fully considered but they are not persuasive.
Regarding claim 1, Applicant argues that Hansinger fails to teach “a paint micronization means” because Hansinger is silent regarding element 49, which is interpreted to teach this limitation, providing any micronization of the paint.
In response it is noted that element 49 of Hansinger has the same structure as that disclosed in the instant application as the “paint micronization means”. Applicant’s Specification identifies either the first or second shearing members, elements 21 or 22, respectively, as being the “paint micronization means” (see paragraph 42 and 45). Elements 21 and 22 are further described to be orifices in a valve seat (par. 43 and figs. 2, 3). This is the same as the structure of element 49 of Hansinger, which further includes a valve seat (608) having an orifice (col. 8, ln. 4-15; fig. 1). Therefore, this is interpreted to teach the “paint micronization means” consistent with the interpretation of this limitation under 112(f) “means-plus-function”, as explained above.
Regarding the capability of this structure in Hansinger as being able to “promote the micronization of the paint that may be spray from the rotary atomizing head”, it is noted that when the structure recited in the prior art is substantially identical to that of the claims, claimed functions are presumed to be inherent. See MPEP 2112.01.I. Additionally, it is noted that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and that a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114.II. Element 49 of Hansinger controls the flow of the paint to the atomizing head 30; therefore, it promotes micronization by permitting paint to be supplied to the atomizing head.
Conclusion
THIS ACTION IS MADE FINAL. 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 CODY J LIEUWEN whose telephone number is (571)272-4477. The examiner can normally be reached Monday - Thursday 8-5, Friday varies.
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/CODY J LIEUWEN/Primary Examiner, Art Unit 3752