Detailed Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 101
3. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the position signal detailed in claims 1 and 3 and the fish size signal detailed in claim 8 are claimed as encompassing non-statutory subject matter being transitory signals.
Claim Interpretation
4. 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.
Regarding claim 1, applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed conveying system and as seen in applicant’s originally filed disclosure in paragraph [021] of applicant’s originally filed specification the conveying system is detailed as he conveying system may be configured to convey the fish e.g., by use of one or more belts, e.g., by friction between the fish and the belt(s). In one embodiment, the conveying system comprises at least two conveying belts, e.g., endless belts arranged symmetrically on opposite sides of the vertical centre plane. Such belts may have projections or spikes increasing the grip in the fish and thus preventing slipping while they pull the fish past the cutting tool. This may improve the ability to determine the position of the fish, and particularly to determine the point in time when the fish, or particularly the dorsal fin, arrives at the cutting tool.
Regarding claim 9, applicant has not invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed first cutting device and the claimed second cutting device in that applicant claims specific structure being the claimed blade for the first cutting device and the claimed blade for the second cutting device.
Claim Rejections - 35 USC § 112
5. 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 1-15 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.
Claim 1 is 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. Applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed conveying system and as seen in applicant’s originally filed disclosure in paragraph [021] of applicant’s originally filed specification the conveying system is detailed as he conveying system may be configured to convey the fish e.g., by use of one or more belts, e.g., by friction between the fish and the belt(s). In one embodiment, the conveying system comprises at least two conveying belts, e.g., endless belts arranged symmetrically on opposite sides of the vertical centre plane. Such belts may have projections or spikes increasing the grip in the fish and thus preventing slipping while they pull the fish past the cutting tool. This may improve the ability to determine the position of the fish, and particularly to determine the point in time when the fish, or particularly the dorsal fin, arrives at the cutting tool. The terms “e.g.” in applicant’s originally filed specification render the claim indefinite in that it is unclear to whether other types of conveyors/conveying systems than those disclosed are being contemplated by the claim. Further, it is unclear to how the position signal provides for the motion control in that there is no corresponding structure in the claim related to determining the signal and no corresponding structure for providing the determined signal to the claimed motion control of the claimed device. Further, in line 9 of claim 1, “the dorsal part” lacks antecedent basis.
Claim 2 recites the limitation "the dorsal side" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 is 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. Claim 5 details a second pivot structure which implies a first pivot structure, but there is no first pivot structure claim 5 and parent claim 1 and therefore it is unclear to how many pivot structures are being claimed. It is recommended that applicant amend claim 5 to be dependent upon claim 4.
Claim 15 is 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. As seen in the preamble of claim 15, this claim is written as a method claim but depends from apparatus claim 1 and it is unclear to whether claim 15 is to be a method or apparatus claim. For purposes of the prior art rejections that follow, claim 15 is considered as being dependent on method claim 14.
Claim Rejections - 35 USC § 103
6. 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 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(s) 1-12 and 14/1 thru 14/12 is/are rejected under 35 U.S.C. 103 as being unpatentable over WIPO No. 2006/077673 to Matsumoto et al. in view of U.S. Patent No. 6,280,313 to Braeger et al.
Referring to claim 1, Matsumoto et al. discloses a machine for removing a dorsal fin from a fish, the machine comprising, a conveying system – at 1-2 and 4-9, configured to convey a sequence of fish in a downstream direction while each fish of the sequence of fish is oriented with right and left sides of the fish on opposite sides of a vertical center plane – see figures 1a-1b, 3a-3b and paragraphs [0037]-[0039] of the English translation provided by applicant, a cutter tool – at 31, and at least one mechanical height control – at 11 and 32-38, for controlling a height of the cutting tool – at 31, relative to the conveying system – at 1-2 and 4-9 – see figures 1a-5b and paragraph [0043] of the English translation provided by applicant, the mechanical height control – at 11 and 32-38, comprising a frame – at 11 and 35-38, carrying the cutting tool – at 31 – see figures 5a-5b, and a ski – at 42, wherein the ski – at 42, is arranged to ride on the dorsal part of the fish - see figures 5a-5b and paragraphs [0075]-[0076] of the English translation provided by applicant, while the frame – at 11 and 35-38, is moving in a height adjustment plane based on the riding of the ski – at 42, on the dorsal part of the fish – see figures 5a-5b. Matsumoto et al. does not disclose the frame is movable by a motion control between an upper and a lower position relative to the ski based on a position signal representing a position of a fish in the sequence of fish relative to the cutting tool. Braeger et al. does disclose the frame – at 304, is movable by a motion control – at 306a-310, between an upper and a lower position relative to the ski – at 2a – see figures 13-14 and column 11 line 5 to column 12 line 15, based on a position signal representing a position of a fish in the sequence of fish relative to the cutting tool – at 317 – see figures 13 and 14 and position signal via sensor – at 21a,21b,22 in column 9 line 62 to column 10 line 58. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Matsumoto et al. and add the motion control via position signal as disclosed by Braeger et al., so as to yield the predictable result of ensuring an accurate cut of the dorsal fin of fish of different sizes and configurations as desired. Regarding the 35 U.S.C. 112(f) means plus function analysis with respect to the claimed conveying system items 1-2 and 4-9 of Matsumoto et al. are at least functionally equivalent to the belts disclosed by applicant in the chain drive – at 8,9, of Matsumoto et al. provides for a belt-like conveyor having similar function of moving the fish along a processing path.
Referring to claim 2, Matsumoto et al. as modified by Braeger et al. further discloses the conveying system – at 1-2 and 4-9, is configured to convey the sequence of fish while each fish of the sequence of fish is oriented with the dorsal side of the fish facing in an upwards direction – see figures 1a-1b, 3a-3b and 5a-5b of Matsumoto et al.
Referring to claim 3, Matsumoto et al. as modified by Braeger et al. further discloses a sensor – at 21a,21b,22, arranged upstream the mechanical height control – at 302a,302b – see figures 1-2 and 13-14 of Braeger et al., and configured for determining the position signal – see figures 13-14 and column 11 line 5 to column 12 line 15 of Braeger et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Matsumoto et al. and add the motion control via position signal as disclosed by Braeger et al., so as to yield the predictable result of ensuring an accurate cut of the dorsal fin of fish of different sizes and configurations as desired. Further, in line 1 of claim 3 it is recommended to change “arranged upstream the” to - -arranged upstream of the- -.
Referring to claim 4, Matsumoto et al. as modified by Braeger et al. further discloses the frame forms – at 11 and 32-38, a first pivot structure – at 36 and/or 38 ,allowing pivoting of the frame – at 11 and 32-38, relative to the conveying system – at 1-2 and 4-9 – see figures 1a-5b of Matsumoto et al.
Referring to claim 5, Matsumoto et al. as modified by Braeger et al. further discloses the frame – at 11 and 32-38, defines a second pivot structure – other of items 36 or 38, allowing the ski – at 42, to pivot relative to the frame – at 11 and 32-38 – see figures 5a-5b of Matsumoto et al.
Referring to claim 6, Matsumoto et al. as modified by Braeger et al. further discloses the movement between the upper position and the lower position is constituted by an angular displacement of the ski – at 42, about the second pivot structure – at 36 or 38 – see figures 5a-5b of Matsumoto et al.
Referring to claim 7, Matsumoto et al. as modified by Braeger et al. further discloses an actuator – at 37, arranged to cause the angular displacement – see figures 5a-5b of Matsumoto et al.
Referring to claim 8, Matsumoto et al. as modified by Braeger et al. further discloses a controller – at 41, configured to control the distance between the upper and lower position of the frame – at 300, relative to the ski – at 2a, based on a fish size signal representing a size of a fish in the sequence of fish – see figures 13-14 and column 9 line 62 to column 12 line 15 of Braeger et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Matsumoto et al. and add the motion control via position signal as disclosed by Braeger et al., so as to yield the predictable result of ensuring an accurate cut of the dorsal fin of fish of different sizes and configurations as desired.
Referring to claim 9, Matsumoto et al. as modified by Braeger et al. further discloses the cutter tool – at one of items 317, comprises a first cutting device – at 317, arranged on one side of the vertical center plane – see figures 13-14 of Braeger et al. and comprising a corresponding blade – circular blade of 317, configured for cutting the fish during rotation of the blade about a first rotation axis – see figures 13-14 of Braeger et al., a second cutting device – other of items 317, arranged on the opposite side of the vertical centre plane – see figures 13-14 of Braeger et al., and comprising a corresponding blade – circular blade of 317, configured for cutting the fish during rotation of the blade – at 317, about a second rotation axis – see figures 13-14 and column 11 line 5 to column 12 line 15 of Braeger et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Matsumoto et al. as modified by Braeger et al. and add the first and second cutting devices of Braeger et al., so as to yield the predictable result of ensuring proper cutting of the dorsal fin by having the cutting tool contact each side of the dorsal fin during operation.
Referring to claim 10, Matsumoto et al. as modified by Braeger et al. further discloses the first and second cutting devices – at 317, are fixed to each other – see fixed to 320 in figures 13-14 of Braeger et al., and moved by the mechanical height control – at 302a,302b, as one unit – see movement of 317 via items 302a,302b in figures 13-14 and column 11 line 5 to column 12 line 15 of Braeger et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Matsumoto et al. as modified by Braeger et al. and add the first and second cutting devices of Braeger et al., so as to yield the predictable result of ensuring proper cutting of the dorsal fin by having the cutting tool contact each side of the dorsal fin during operation.
Referring to claim 11, Matsumoto et al. as modified by Braeger et al. the first cutting – at one of 317, device has a fixed angle to the second cutting device – at other of 317 – see fixed angle when in the non-cutting position of figure 13 of Braeger et al., and/or wherein the first cutting device – at one of 317, has a fixed distance to the second cutting device – other of 317 – see fixed distance in cutting position of figure 14 of Braeger et al. between items 317. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Matsumoto et al. as modified by Braeger et al. and add the first and second cutting devices of Braeger et al., so as to yield the predictable result of ensuring proper cutting of the dorsal fin by having the cutting tool contact each side of the dorsal fin during operation.
Referring to claim 12, Matsumoto et al. as modified by Braeger et al. further discloses for each of the first and second cutting devices – at 31, a blade shield – at 41, arranged to shield a sector of a circumference of the corresponding blade – see figures 5a-5b of Matsumoto et al. and see two cutting devices as seen at 317 in figures 13-14 of Braeger et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Matsumoto et al. as modified by Braeger et al. and add the first and second cutting devices of Braeger et al., so as to yield the predictable result of ensuring proper cutting of the dorsal fin by having the cutting tool contact each side of the dorsal fin during operation.
Referring to claims 14/1 thru 14/12, Matsumoto et al. as modified by Braeger et al. discloses a method for removing a dorsal fin of a decapitated fish by use of a machine according to any of the preceding claims 1-12 – see rejections of claims 1-12 detailed earlier, wherein the fish is conveyed with right and left sides of the fish on opposite sides of a vertical center plane – see figures 1a-5b of Matsumoto et al., and the cutter tool – at 31, is moved in the vertical plane by moving the frame – at 11 and 32-28, between the upper and the lower position relative to the ski – at 42 – see figures 1-5b and paragraphs [0037]-[0039, [0043] and [0075]-[0076] of the English translation of Matsumoto et al. provided by applicant.
Claim(s) 13 and 14/13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. as modified by Braeger et al. as applied to claim 1 above, and further in view of EP Patent No. 463701 to Fieret.
Referring to claim 13, Matsumoto et al. as modified by Braeger et al. does not disclose a suction hose with an open end arranged at the first and second cutting devices for receiving the dorsal fin by suction. Fieret does disclose a suction hose – at 18, with an open end – at 17, arranged at the first and second cutting devices – at 5, and 14-16, for receiving the dorsal fin by suction – see figure 3 and column 5 line 42 to column 6 line 31. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Matsumoto et al. as modified by Braeger et al. and add the suction hose of Fieret, so as to yield the predictable result of quickly removing the unwanted material of the fish so as to facilitate further processing of the fish during use.
Referring to claim 14/13, Matsumoto et al. as modified by Braeger et al. and Fieret further discloses a method for removing a dorsal fin of a decapitated fish by use of a machine according to preceding claim 13 – see rejections of claims 1-12 detailed earlier, wherein the fish is conveyed with right and left sides of the fish on opposite sides of a vertical center plane – see figures 1a-5b of Matsumoto et al., and the cutter tool – at 31, is moved in the vertical plane by moving the frame – at 11 and 32-28, between the upper and the lower position relative to the ski – at 42 – see figures 1-5b and paragraphs [0037]-[0039, [0043] and [0075]-[0076] of the English translation of Matsumoto et al. provided by applicant.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. as modified by Braeger et al. as applied to claims 14/1 thru 14/12 above, and further in view of U.S. Patent No. 5,591,076 to Evers et al.
Referring to claim 15, Matsumoto et al. as modified by Braeger et al. further discloses the position of front of the fish is detected – see via 21a,21b,22 in figures 1-2 and column 9 line 62 to column 10 line 58 of Braeger et al., but does not disclose the movement of the frame is initiated at the front of the fish. Evers et al. does disclose the movement of the frame – at 4, 4.2-4.5, is initiated at the front of the fish – see figures 1-2 and column 7 line 58 to column 8 line 6 Therefore it would have been obvious to one of ordinary skill in the art to take the device/method of Matsumoto et al. as modified by Braeger et al. and add the movement of the frame being initiated at the front of the fish as disclosed by Evers et al., so as to yield the predictable result of ensuring engagement of the cutting tool with the dorsal fin of fish of different sizes and configurations as desired.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. as modified by Braeger et al. and Fieret as applied to claim 14/13 above, and further in view of Evers et al.
Referring to claim 15, Matsumoto et al. as modified by Braeger et al. and Fieret further discloses the position of front of the fish is detected – see via 21a,21b,22 in figures 1-2 and column 9 line 62 to column 10 line 58 of Braeger et al., but does not disclose the movement of the frame is initiated at the front of the fish. Evers et al. does disclose the movement of the frame – at 4, 4.2-4.5, is initiated at the front of the fish – see figures 1-2 and column 7 line 58 to column 8 line 6 Therefore it would have been obvious to one of ordinary skill in the art to take the device/method of Matsumoto et al. as modified by Braeger et al. and Fieret and add the movement of the frame being initiated at the front of the fish as disclosed by Evers et al., so as to yield the predictable result of ensuring engagement of the cutting tool with the dorsal fin of fish of different sizes and configurations as desired.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following patents are cited to further show the state of the art with respect to fish processing devices/methods in general:
U.S. Pat. No. 2,771,633 to Bartels et al. – shows fish processing device
U.S. Pat. No. 3,793,675 to Hogan et al. – shows fish processing device
U.S. Pat. No. 4,354,297 to Wilson et al. – shows fish processing device
U.S. Pat. No. 7,427,229 to Grosseholz et al. – shows fish processing device
U.S. Pat. No. 7,988,542 to Yamase et al. – shows fish processing device
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PARSLEY whose telephone number is (571)272-6890. The examiner can normally be reached Monday-Friday, 8am-4pm EST.
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/DAVID J PARSLEY/Primary Examiner, Art Unit 3643