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 .
Status of the Application
This action is responsive to the amendment dated 9/17/2025. Claims 1-6 remain pending. Claim 1 has been amended. The applicant’s amendment has necessitated the new ground(s) of rejection below. This action is Final.
Response to Remarks
Applicant argues that the 112(a) rejection applied in the last Office Action is not proper because Fig. 9 clearly shows the claimed functionality and the specification describes this function as well. The Examiner disagrees. In fact, how the filling station is intended to operate in order to utilize the plunger and filling mandrel in order to fill the mastic cartridge. See MPEP 2163 which states:
An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
Also see MPEP 2163.02 which states:
An applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by "whatever characteristics sufficiently distinguish it").
In this case, the words, structures, figures, and diagrams do not provide sufficient support to show that Applicant was in possession of the claimed invention. For at least these reasons, the 112(a) is maintained.
In view of Applicant’s remarks and amendment, a drawing objection is applied below.
In view of Applicant’s remarks and amendment a 112(b) rejection is applied to the claims below.
Applicant's amendment to recite a filling mandrel, the plunger arranged opposite to the filling mandrel has overcome the rejection of record. However, a new ground(s) of rejection is applied to the claims below. As such, applicant's arguments with respect to the 102 rejection over Broyles have not been found persuasive. A new interpretation of Broyles as stated below in the 102 rejection teaches each and every limitation including a filling mandrel, the plunger arranged opposite to the filling mandrel.
Applicant's amendments to the claims have necessitated further search and/or consideration and/or revision of the rejection, and accordingly, this action must be made Final.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitation of “a plunger insertable into the mastic cartridge and retractable to fill material into the mastic cartridge; and a filling mandrel, the plunger arranged opposite to the filling mandrel” as claimed in claim 1, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the limitation of “a plunger insertable into the mastic cartridge and retractable to fill material into the mastic cartridge; and a filling mandrel, the plunger arranged opposite to the filling mandrel” as claimed in claim 1, as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2 and 4-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the limitation of “a plunger insertable into the mastic cartridge and retractable to fill material into the mastic cartridge” is new matter. Para. [0087] of the original specification states:
When it is determined that the positioning of the cartridge 1 is correct, plungers 37 of the filling station 34 can be activated in order to refill the chambers 4 and 5 of the cartridge 1.
However, the specification fails to disclose how the plungers operate and if they are intended to be inserted and retracted to fill material into the mastic cartridge as recited in claim 1. Because of this, a new matter rejection is necessitated.
Claims not specifically referenced are rejected as being dependent upon a rejected base claim.
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 1, 2, and 4-6 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.
Regarding claim 1, the combination of “a plunger insertable into the mastic cartridge and retractable to fill material into the mastic cartridge; and a filling mandrel, the plunger arranged opposite to the filling mandrel” is indefinite. See MPEP 2173.03 which states:
A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).
In this case, the is clearly an inconsistency between the claimed subject matter and Applicant’s remarks regarding the operation of the filling system and the original specification. For this reason, the scope of the claim is unclear necessitating a 112(b) rejection.
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(s) 1, 2, and 4-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Broyles et al. (US 5,546,996, hereafter “Broyles”).
Regarding claim 1, Broyles discloses a filling station configured to fill a mastic cartridge (Figs. 1, 2), the filling station comprising: a control and evaluation unit (the microswitches or optical sensors as for cartridge 88 as described in Col. 9, lines 1-18) configured to communicate with an Automatic Identification and Data Capture (AIDC) element of the mastic cartridge to be filled (note that this is a functional limitation that the optical sensors mentioned above are capable of performing); a plunger (78) insertable into the mastic cartridge and retractable to fill material into the mastic cartridge (Col. 7, lines 31-45), and a filling mandrel (74), the plunger arranged opposite to the filling mandrel. (as best understood)
Regarding claim 2, Broyles further discloses the filling station in accordance with claim 1, further comprising counter alignment members (102) that are formed complementary to alignment members present at the mastic cartridge (note that the mastic cartridge is not positively recited and any limitations directed to the mastic cartridge are further defining the intended use of the filling system), with the counter alignment members being configured to ensure a correct mechanical alignment of a rigid head part at the filling station. (Fig. 7)
Regarding claim 4, Broyles further discloses the filling station in accordance with claim 2, further comprising a cartridge tray (86) and the control and evaluation unit is configured to activate the filling station upon determination that a position of the mastic cartridge is accurately positioned on a cartridge tray. (Col. 9, lines 1-18)
Regarding claim 5, Broyles further discloses the filling station in accordance with claim 1, wherein the mastic cartridge includes a head part and a cartridge wall. (note that the mastic cartridge is not positively recited and any limitations directed to the mastic cartridge are further defining the intended use of the filling system)
Regarding claim 6, Broyles further discloses the filling station in accordance with claim 5, wherein the cartridge wall is formed from a flexible film. (note that the mastic cartridge is not positively recited and any limitations directed to the mastic cartridge are further defining the intended use of the filling system)
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 PAUL J GRAY whose telephone number is (571)270-0544. The examiner can normally be reached 9:00 am - 5:00 pm, Monday - Friday.
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, Kenneth Rinehart can be reached at 571 272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PAUL J GRAY/Primary Examiner, Art Unit 3753