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 .
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.
Claim Interpretation
The phrase of “to be inserted into a depth of stored sugar”, “to serve as a handle to direct the placement and serve as a place marker for visual purposes,” “purposed to be inserted into the white sugar to absorb moisture,” “purposed to be inserted into the brown sugar to provide moisture by moistening prior to insertion,” “may be used to collect and absorb added drops of water to maintain a moisture level in the brown sugar,” and “may be decorative, shaped or contain wording” is understood as being directed to and further reciting the purpose or intended use of the claimed invention which does not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the claimed invention, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02 and § 2112 - § 2112.02.
Further, the phrase of “creates an atmosphere of stable humidity, either by removing or adding, to prevent clumping of white and brown sugars” which pertains to the manner of operating a disclosed apparatus, it is noted that neither the manner of operating a disclosed device nor material or article being worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
In this view, claim 1 has been interpreted as follows:
“An apparatus comprising: a first lower end portion and a second upper end portion said lower portion of porous material of narrow length; said upper portion of larger size; said lower and upper portions forming one piece, attached together or formed of a single material; wherein said lower portion is purposed to be inserted into the white sugar to absorb moisture; wherein said lower portion is purposed to be inserted into the brown sugar to provide moisture by moistening prior to insertion; wherein said upper portion may be used to collect and absorb added drops of water to maintain a moisture level in the brown sugar; wherein said upper portion may be decorative, shaped or contain wording; and wherein said invention creates an atmosphere of stable humidity, either by removing or adding, to prevent clumping of white and brown sugars.”
Specification
The specification is objected to because the specification refers to fig. 101, fig. 102, fig. 106, etc.; however, there appear to be reference numerals rather than figure numbers. Appropriate correction is required.
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.
Claim 1 is 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.
Claim 1 recites “atmosphere of stable humidity” in line 16.
Examiner has consulted the Applicant’s Specification and find no disclosure therein that evinces possession of “atmosphere of stable humidity.”
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.
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.
Claim 1 recites the limitation "said lower portion" and “said upper portion” in lines 3, 5, 7, 9, 11, 13, and 15.
Claim 1 recites the limitation "the placement", “the white sugar”, “the brown sugar”, “said invention” in line 5, 9, 11, and 16.
There is insufficient antecedent basis for this limitation in the claim.
Examiner notes that the claim only required the first letter to be capitalized at the beginning of the sentence. Appropriate correction is required.
In addition, the terms “narrow” and “larger” are purely relative terms without any reference point or objective boundary.
The claim fails to specify:
Which dimension is “narrow” (length, diameter, width, cross-section, volume);
What the lower portion is narrow relative to;
What structural parameter defines “larger size”;
Any numerical, proportional, or structural comparison.
Absent objective standards, a person of ordinary skill in the art would be unable to determine the metes and bounds of the claimed invention with reasonable certainty.
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 is rejected under 35 U.S.C. 102(a) as being anticipated by Grieve et al (US 20080242538; hereinafter Grieve).
As regarding claim 1, Grieve discloses the claimed invention for an apparatus comprising: a first lower end portion and a second upper end portion said lower portion of porous material of narrow length; said upper portion of larger size; said lower and upper portions forming one piece, attached together or formed of a single material; wherein said lower portion is purposed to be inserted into the white sugar to absorb moisture; wherein said lower portion is purposed to be inserted into the brown sugar to provide moisture by moistening prior to insertion; wherein said upper portion may be used to collect and absorb added drops of water to maintain a moisture level in the brown sugar; wherein said upper portion may be decorative, shaped or contain wording; and wherein said invention creates an atmosphere of stable humidity, either by removing or adding, to prevent clumping of white and brown sugars (annotated fig. 3; title, abstract, [0033]-[0034], and claim 1).
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Conclusion
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/DUNG H BUI/ Primary Examiner, Art Unit 1773