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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 250 in figure 12. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 Clarity
Claims 3 and 16 recite “wherein the void, the hole, or the cut-out is located at a first bottom portion of the baffle and the portion of the (coolant/liquid) flows to the (second/third) area from a second bottom portion of the (coolant/liquid) within the first area.”
The first bottom portion is a portion of the baffle, but the second bottom portion is a portion of the coolant/liquid within the first area. Hence, the use of the terms first and second bottom portions is confusing, especially because no first bottom portion of the coolant/liquid is ever claimed. It is suggested applicant amend to avoid referring to the bottom portion of the first area “the second bottom portion”.
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 (“portion” and “machine”) 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: “a lower portion that is configured to facilitate movement of the device from a first location to a second location” in claims 1-8 and 10-12, and “a machine that uses or outputs a liquid” in claim 20.
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 § 112(a)
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.
Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for having a broader scope than can be enabled. Claim 20 recites “a machine that uses or outputs a liquid”. This means plus function limitation is so broad as to cover a range of machines that applicant has not disclosed or enabled. The specification specifically states that the machine can be *any* machine that uses or outputs a liquid and does not limit to any particular machines (“A non-exhaustive list of examples of machines that may experience contamination may include manufacturing machines (e.g., computer numerical control (“CNC”) machines), lathes, food separator machines, dairy machines, cutting machines, meat separators, agricultural belts, corn bailers, hay bailers, farm combines, etc.).” and “Such machine may include mills, lathes, drill presses, saws, CNC machines, manual machines, and so on.”). As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Claim Rejections - 35 USC § 112(b)
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 6 and 19 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 6 and 19 recite “wherein the (coolant/liquid) is transferred from the reservoir of the machine via a first transport mechanism and the portion of the (coolant/liquid) is returned to the machine via a second transport mechanism, the first transport mechanism and the second transport mechanism each being a hose, a line, or a tube.” It is unclear if the first transport mechanism and the second transport mechanisms are part of the claimed device or if the device simply connects to the transport mechanisms. If they are part of the device, applicant should amend to positively recite the transport mechanisms as part of the device. For now, examiner will assume they are meant to be connectors between the device and the machine, in which case they only limit the device to one with openings for said connectors.
Claim Rejections - 35 USC § 102
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) 1-6, 9-10, and 13-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,890,860 (Gadgil et al.).
The following annotated figure from Gadgil et al. is referenced in the rejection below;
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Regarding claim 1, Gadgil et al. discloses a device comprising:
a lower portion that is configured to facilitate movement of the device from a first location to a second location (fig. 1-4, element 43, shown most clearly in fig. 2); and
an upper portion that is supported by the lower portion, the upper portion including: a first opening in which a coolant is received from a reservoir of a machine that is different than the device (fig. 1, element 11);
a first area in which the coolant is collected after entering the first opening (fig. 1-3, element 31);
a second area in which a portion of the coolant flows to from the first area (fig. 2, as annotated above);
a baffle that at least partially separates the first area from the second area (fig. 1-3, element 37);
a third area at which the portion of the coolant traverses in a direction from a first end of the third area to a second end of the third area that is opposite the first end (fig. 1-2, element 47, shown though not labeled in fig. 4);
one or more lamps that emit light directed towards the portion of the coolant while the portion of the coolant traverses in the direction across the third area (fig. 1, 4, & 6, element 53); and
a second opening, adjacent to the second end, at which the portion of the coolant exits the third area and is returned to the machine (fig. 1-2 & 4, element 69).
Regarding claim 2, Gadgil et al. discloses the device as recited in claim 1, wherein the baffle includes an opening, void, hole, or cut-out that allows the portion of the coolant to flow from the first area to the second area (fig. 1-3, element 64, unlabeled holes in baffle 37).
Regarding claim 3, Gadgil et al. discloses the device as recited in claim 1, wherein the void, the hole, or the cut-out is located at a first bottom portion of the baffle and the portion of the coolant flows to the second area from a second bottom portion of the coolant within the first area (fig. 1-3, element 64, unlabeled holes in baffle 37, some of which are located in a “bottom portion”).
Regarding claim 4, Gadgil et al. discloses the device as recited in claim 1, wherein the one or more lamps include a first lamp and a second lamp that are each disposed within the third area (“wherein two UV lamps are provided”).
Regarding claim 5, Gadgil et al. discloses the device as recited in claim 1, wherein the light includes ultraviolet (UV) light or UV-C light (“germicidal UV lamp”).
Regarding claim 6, Gadgil et al. discloses the device as recited in claim 1, wherein the coolant is transferred from the reservoir of the machine via a first transport mechanism and the portion of the coolant is returned to the machine via a second transport mechanism, the first transport mechanism and the second transport mechanism each being a hose, a line, or a tube (fig. 1-4, elements 11 & 69).
Regarding claim 9, Gadgil et al. discloses a device comprising:
a first opening in which a liquid is received (fig. 1-3, element 11);
a first area in which the liquid is collected after entering the first opening (fig. 1-3, element 31);
a second area at which at least a portion of the liquid traverses in a direction from a first end of the second area to a second end of the second area that is opposite the first end (fig. 1-2, element 47, shown though not labeled in fig. 4);
one or more lamps that emit light directed towards the portion of the liquid while the portion of the liquid traverses in the direction across the second area (fig. 1, 4, & 6, element 53); and
a second opening, adjacent to the second end, at which the portion of the liquid exits the second area (fig. 1-2 & 4, element 69).
Regarding claim 10, Gadgil et al. discloses the device as recited in claim 9, wherein the device includes: a lower portion that is configured to facilitate movement of the device from a first location to a second location (fig. 1-4, element 43); and an upper portion that is supported by the lower portion and that includes the first opening, the first area, the second area, the one or more lamps, and the second opening (fig. 1-4, elements 73 & 27, seen most clearly in fig. 2).
Regarding claim 13, Gadgil et al. discloses the device as recited in claim 9, wherein the liquid is received from a reservoir of a machine that is different than the device and the portion of the liquid is returned to the machine after being exposed to the light (intended use, limits only in requiring device to be capable of this, the presence of an inlet, a light exposure area, and a downstream outlet render the device of Gadgil et al. capable of this).
The following annotated figure from Gadgil et al. is referenced in the rejections below;
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Regarding claim 14, Gadgil et al. discloses the device as recited in claim 9, further comprising: a third area in which the portion of the liquid flows to from the first area (fig. 2, as annotated above); and a baffle that at least partially separates the first area from the third area (fig. 1-3, element 67).
Regarding claim 15, Gadgil et al. discloses the device as recited in claim 14, wherein the baffle includes an opening, void, hole, or cut-out that allows the portion of the liquid to flow from the first area to the third area (fig. 1-3, element 64, unlabeled holes in baffle 37).
Regarding claim 16, Gadgil et al. discloses the device as recited in claim 15, wherein the void, the hole, or the cut-out is located at a first bottom portion of the baffle and the portion of the liquid flows to the third area from a second bottom portion of the liquid within the first area (fig. 1-3, element 64, unlabeled holes in baffle 37, some of which are located in a “bottom portion”).
Regarding claim 17, Gadgil et al. discloses the device as recited in claim 9, wherein the one or more lamps include a first lamp and a second lamp that are each disposed within the second area (“wherein two UV lamps are provided”).
Regarding claim 18, Gadgil et al. discloses the device as recited in claim 9, wherein the light includes ultraviolet (UV) light or UV-C light (“germicidal UV lamp”).
Regarding claim 19, Gadgil et al. discloses the device as recited in claim 9, wherein the liquid is transferred from a reservoir of a machine via a first transport mechanism and the portion of the liquid is returned to the machine via a second transport mechanism, the first transport mechanism and the second transport mechanism each being a hose, a line, or a tube (fig. 1-4, elements 11 & 69).
Regarding claim 20, Gadgil et al. discloses a system comprising:
a machine that uses or outputs a liquid (“in-field sanitary devices”, also “cooling towers or large scale air conditioning systems,”); and
a device that exposes the liquid to light, the device comprising:
a first opening in which the liquid is received (fig. 1-3, element 11) from a reservoir of the machine (fig. 1, 3-4, & 7, element 3);
a first area in which the liquid is collected after entering the first opening (fig. 1-3, element 31);
a second area at which at least a portion of the liquid traverses in a direction from a first end of the second area to a second end of the second area that is opposite the first end (fig. 1-2, element 47, shown though not labeled in fig. 4);
one or more lamps that emit light directed towards the portion of the liquid while the portion of the liquid traverses in the direction across the second area (fig. 1, 4, & 6, element 53); and
a second opening, adjacent to the second end, at which the portion of the liquid exits the second area and is routed to the machine (fig. 1-2 & 4, element 69, note that routing to the machine is not a function of an opening but of an unclaimed hose, pipe, or other similar elements, hence the second opening is not limited by this).
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(s) 7-8 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gadgil et al. as applied to claims 1 & 10 above, and further in view of US 2022/0112097 (Batten et al.).
Regarding claim 7, Gadgil et al. discloses the claimed invention except for a skimmer wheel that is disposed in the first area that collects a second portion of the coolant that is within the first area. Batten et al. discloses a device for treating effluent with a skimmer wheel that collects the top portion of an effluent (multiple figures, element 16). It would have been obvious to a person having ordinary skill in the art at the time the application was filed to incorporate the skimmer wheel of Batten et al. into the device of Gadgil et al. so that oil and other contaminants could be removed, as disclosed in Batten et al. (“In another embodiment the invention provides a separator assembly for separating fat, oil, and grease from effluent including a container for receiving and holding effluent water containing oil, grease and solid waste to be removed from the effluent water, whereby F.O.G. collects in the container as grey water is passed downstream from the container;” P 16).
Regarding claim 8, Gadgil et al. in view of Batten et al. disclose the device as recited in claim 7, wherein the skimmer wheel is associated with a timer such that the skimmer wheel operates for a limited duration of time (Batten et al., “time can be used to terminate skimming after a pre-defined interval.” P 13). It would have been obvious to a person having ordinary skill in the art that the time the application was filed to incorporate the timer of Batten et al. to prevent overskimming, as disclosed in Batten et al. (“allowing F.O.G. to be directed to the canister from the skimmer for an unspecified period of time risks overflowing the canister. In such cases it may be preferable to use a timer to terminate skimming after a predefined time interval,” P 52).
Regarding claim 11, Gadgil et al. discloses the claimed invention except for a skimmer wheel that is disposed in the first area that collects a second portion of the liquid that is within the first area. Batten et al. discloses a device for treating effluent with a skimmer wheel that collects the top portion of an effluent (multiple figures, element 16). It would have been obvious to a person having ordinary skill in the art at the time the application was filed to incorporate the skimmer wheel of Batten et al. into the device of Gadgil et al. so that oil and other contaminants could be removed, as disclosed in Batten et al. (“In another embodiment the invention provides a separator assembly for separating fat, oil, and grease from effluent including a container for receiving and holding effluent water containing oil, grease and solid waste to be removed from the effluent water, whereby F.O.G. collects in the container as grey water is passed downstream from the container;” P 16).
Regarding claim 12, Gadgil et al. in view of Batten et al. disclose the device as recited in claim 11, wherein the skimmer wheel is associated with a timer such that the skimmer wheel operates for a limited duration of time (Batten et al., “time can be used to terminate skimming after a pre-defined interval.” P 13). It would have been obvious to a person having ordinary skill in the art that the time the application was filed to incorporate the timer of Batten et al. to prevent overskimming, as disclosed in Batten et al. (“allowing F.O.G. to be directed to the canister from the skimmer for an unspecified period of time risks overflowing the canister. In such cases it may be preferable to use a timer to terminate skimming after a predefined time interval,” P 52).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZA W OSENBAUGH-STEWART whose telephone number is (571)270-5782. The examiner can normally be reached 10am - 6pm Pacific Time M-F.
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/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881