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 .
Specification
The amendment filed November 5, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the drawings showing a monolithic configuration of the shaft and persuader, see rejection under 35 USC 112(a) below.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 persuader (generic placeholder) with the recited function of “configured to…” in claim 1, this is linked in the specification to features such as fans and compressors “or the like”.
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. This would include any form of a device that would push, propel or fling lubricant toward the bearing element.
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.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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 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, 8-9, 11-15 and 18-20 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 claims 1, 8, 11, 13, 14 and 20, based on Applicant’s previous remarks/confirmation that the drawings are schematics (remarks filed August 26, 2025), Applicant reconfirms this in the current remarks (remarks addressed below), the drawings cannot be relied upon for any specific structural details of the device. The specification as originally filed did not state that the persuader was monolithic (single part) with the shaft, the original hatching in figure 1, or the lack thereof, is also not suggestive of a monolithic configuration and the original spacing between the parts in figure 2 also does not show a monolithic configuration. Because of this it cannot be said that at the time of filing that Applicant was actually in possession of the structure/concept that the persuader was monolithic with or one piece with the shaft and thus the amendment to the claims introduces new matter (including introducing new matter to the drawings).
With regards to the new matter issue Applicant argues that the recitation of the part being monolithic/single piece is supported by paragraph 0028 which states that the persuader is "formed with" the shaft. "Formed with" is much broader than monolithic and can include separate parts bonded together through any number of means or could include a process where the parts are made/shaped simultaneous but yet remain separate and distinct parts, such as molding in a common mold with two chambers or parts that are attached and then milled at the same time. The broad description in the specification cannot be said to provide clear support that Applicant was in possession of the much narrower monolithic unit at the time of filing. The drawings, as original filed, also do not provide a clear detailed representation of the part to support this position either. Because of this the argument is unpersuasive and all the claims remain rejected under 35 USC 112(a).
Response to Arguments
Applicant's arguments filed April 22, 2025 with respect to the drawing objection and the remaining rejection under 35 USC 112(a) have been fully considered but they are not persuasive.
With regards to the drawings Applicant again acknowledges that the drawings are schematical representations but argues that schematic diagrams can depict the significant components of a system and argues that the issue being raised with respect to figure 2 ignores the features shown in figure 1.
First, it is acknowledge that schematic drawings and diagrams are permitted and the issue is not isolated to the drawings but is rather a conclusion reached based on the totality of the case as originally filed. The issue raised above is in reference to the drawings collectively and not just figure 2. Returning to the original drawings figure 1 showed a shaft with no hatching with the persuader being a hatched element above and below the shaft, this figure as original filed is suggestive of a two part configuration but no definitive conclusion can be reached, original figure 2 showed the shaft in two parts with a space between the parts in which the persuader is positioned, this is suggestive of a three part configuration but again because of the schematical nature of the figure no definitive conclusion can be reached. Turning to the specification the parts in question never explicitly disclosed the part as being monolithic or a single part, in fact the terms do not even appear anywhere in the original filing, the term used in the original filing is integral. Integral has a much broader meaning than single part or monolithic and is inclusive of a number of parts assembled to form a unit, this is what the original drawings suggest.
The changing of the drawings to now show monolithic or single piece arrangements is the issue. The originally filed drawings weren’t suggestive of this as explained above, the specification also did not explicitly state what Applicant is now claiming and illustrating. Thus it cannot be said that there is explicit and clear support for what Applicant is now claiming based on the original filing or based on the original disclosure.
Applicant further states that the “use of the at least one persuader formed integral with the shaft is clearly understood by one of ordinary skill in the art”, however the issue is not with “integral” but rather with “monolithic” or “single part”. “Integral” has support in the original filing but “integral” does not mean “monolithic” or “single part” under the broadest reasonable interpretation. Applicant is attempting to make the case that one skilled in the art would understand integral to be the same as monolithic but this requires one skilled in the art to speculate what Applicant had possession of rather than what Applicant clear states and/or shows in the original filing. One of ordinary skill in the art knowing or acknowledging that this is a possibility is also not the standard when determining support in an original disclosure for a feature, support must be clearly established in the disclosure itself. Applicant’s argument is ultimately suggesting that one skilled in the art would understand this to be a possibility and thus it’s not new matter but Applicant never stated that this was a possibility and thus one of ordinary skill in the art would have to guess or make assumptions because of this it is new matter as there is no clear description or original figure to show that Applicant actually had possession of the configuration now claimed.
Applicant presents a similar argument in the remarks regarding the rejection under 35 USC 112a, the position above is maintained. However, Applicant points to portions of the specification that state that the persuader “can be in operative communication (e.g., coupled to, formed with, and the like) with the shaft” and “the persuader can be integral with the shaft”. None of these citations explicitly state monolithic or single part, as explained above “coupled to” and “formed with” can include devices that aren’t monolithic and “integral” is not limited to a single part either. “Integral” only requires parts to be assembled in a manner essential for completeness and thus to argue that the intent was to mean “monolithic” is not persuasive. The only way to support the argument/position would be to show clear support in the drawings but as explained above the original drawings don’t have such support.
Applicant further argues that one skilled in the art reads the entire written description contrary to the interpretation found in the office action which narrowly selecting terms and draws conclusions based on that narrow selection. However, the conclusions as stated above are made based on taking the totality of the original filing into consideration. Applicant is suggesting that because what is described in the disclosure, in their opinion, could include monolithic or single part, not just integral, that there is support. But again the problem is none of that was original stated, one skilled in the art cannot infer from the disclosure other possible embodiments and conclude that Applicant also had possession of those when there is no clear support in the record for that. Possession is only established for what it can be said Applicant has clearly disclosed which as noted above never stated monolithic or single part and Applicant has not pointed to any part of the disclosure that explicitly stated this, and based on the original drawings which did not clearly, without any doubt, show a monolithic configuration it cannot be said that Applicant articulated possession of what is now being claimed.
Applicant further argues that there is no requirement for the specification to include the term monolithic verbatim to have possessed the meaning of the term. However as explained above the meanings of the terms used in the original filing are not limited to monolithic and thus the meaning of the term in the specification cannot be said to clearly have meant monolithic. The only way to counter this conclusion and support the argument would then have to come from the drawings which again do not support monolithic based on those drawings originally filed. Applicant further states that “providing a narrow meaning for a claim term is not sufficient grounds to support a 112a rejection”, however, as explained above, the term “integral” is given its broadest meaning, the broadest meaning is not explicitly inclusive or exclusive of monolithic, because of this it cannot be said that Applicant clearly meant monolithic when they stated integral. Then the drawings get taken into consideration and again the original drawings didn’t show a monolithic configuration. Thus one skilled in the art cannot reasonable conclude that Applicant meant and/or had possession of the embodiment now claimed in the disclosure as originally filed. One skilled in the art would be required to read features into the disclosure as original filed that are not present and/or speculate on the meaning of the terms in the original filing because of this it cannot be said that Applicant clearly articulated possession of what is now claimed.
In conclusion, the argument presented by Applicant is unpersuasive. The argument does not point to any part in the original filing that clearly supported monolithic or a single part configuration. The statements that one skilled in the art would understand the meaning is not persuasive since at best the disclosure as originally filed requires one to guess at the intended meanings of the term, a guess which cannot be supported by the drawings as original filed. Requiring one skilled in the art to speculate or guess at what Applicant actually meant and was in possession of does not fulfill the written description requirement.
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 JAMES PILKINGTON whose telephone number is (571)272-5052. The examiner can normally be reached Monday through Friday 7-3.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617
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