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 .
Election/Restrictions
Applicant’s election of invention I in the reply filed on 3 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 3-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3 February 2026.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: wood block 72.
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. 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 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 limitations are: “an image tracking system for tracking an image” and “a carriage tracking system for tracking a movement of a wood block on said carriage” in Claim 1.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 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 claim limitations “an image tracking system for tracking an image” and “a carriage tracking system for tracking a movement of a wood block on said carriage” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structures, materials, or acts for performing the entire claimed functions and to clearly link the structures, materials, or acts to the functions. The terms “image tracking system” and “carriage tracking system” are only found in paragraph [0017], as part of the general summary of the invention, with no corresponding structures listed. A variety of cameras and computer programs are provided in the written description and the drawings, but it is unclear which of these, if any, are meant to comprise the image tracking system and carriage tracking system. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitations will no longer be interpreted as limitations under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structures, materials, or acts perform the entire claimed functions, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structures, materials, or acts disclosed therein to the functions recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structures, materials, or acts and clearly links them to the functions so that one of ordinary skill in the art would recognize what structures, materials, or acts perform the claimed functions, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structures, materials, or acts for performing the claimed functions and clearly links or associates the structures, materials, or acts to the claimed functions, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structures, materials, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed functions. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 2 is rejected by virtue of its dependence upon Claim 1.
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Longfellow (US 8,113,098, provided by Applicant).
Regarding Claim 1, Longfellow discloses (Figures 3A-4) a system for picking sawed shingles against a saw in movement (automated shingle milling system 1000), said system comprising: a shingle sawing machine (butt saw 200) having a carriage (conveyor belt 330) and a saw (saw blades 220) mounted along said carriage; an electronic group comprising: a computer (CPU 520); a machine vision system (visual imaging system 500) connected to said computer; an image tracking system (vision software 530) for tracking an image taken by said machine vision system (col. 5 lns 16-19, col. 6 lns 24-49); and a carriage tracking system for tracking a movement of a wood block (blank 10A/billet 10B/shingle 10C) on said carriage toward and away from said saw (col. 4 lns 8-14, col. 5 lns 38-41: magazine 100 pushes blanks 10A onto conveyor belt 330 to move towards saw blades 220 and is controlled, i.e. tracked, by CPU 520; col. 8 lns 48-50: sorting station 700 controller receives data, i.e. tracking, of approaching shingles 10C, which are moving away from saw blades 220); and a shingle picker (belts 340) mounted at a proximity of said saw, on a common structure with said saw, said shingle picker being controlled by said electronic group for guiding said picker to grab a shingle (billet 10B) against said saw in movement before said shingle is sawed off said wood block by said saw (col. 4 lns 14-16: belts 340 grab blank 10A before and during trimming the butt 12 via saw blades 220, after which point blank 10A becomes billet 10B, i.e. belts 340 grab billet 10B against saw blades 220 in movement before billet 10B is sawed off blank 10A; col. 5 lns 38-41: all machine control devices are connected to CPU 520, i.e. the belts 340 are controlled by CPU 520 of the electronic group).
Regarding Claim 2, Longfellow discloses (Figures 3A-4) a camera (camera 510) mounted at a proximity of said saw (saw blades 220), said shingle picker (belts 340) being configured for rotating a latter-sawed face (planar face 11) of said shingle (billet 10B) from a plane of said saw to an orientation where said latter-sawed face of said shingle is visible by said camera (col. 4 lns 17-18 and 49-52, col. 5 lns 50-58: belts 340 have the same construction as alignment belts 320, which are configured to rotate billet 10B such that each planar face 11, including a latter-sawed planar face 11, is visible by one of image-scanning cameras 510A/510B of camera 510).
Examiner note: The limitation “said shingle picker being configured for rotating a latter-sawed face of said shingle from a plane of said saw to an orientation where said latter-sawed face of said shingle is visible by said camera” is considered to be a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). Since belts 340 have the same construction as alignment belts 320 (col. 4 lns 17-18), belts 340 are therefore configured to perform the same functions as belts 320.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Latta (US 2,705,511) discloses a shingle sawing machine with a gripping means for grabbing shingles against a saw in movement before they are sawed from a blank.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA A GUTHRIE whose telephone number is (571)270-5042. The examiner can normally be reached M/Tu/Th, 10-6 ET.
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/TERESA A GUTHRIE/Examiner, Art Unit 3725
/Christopher L Templeton/Supervisory Patent Examiner, Art Unit 3725