The arguments and amendments submitted 11/25/2025 have been considered. The indicated allowability of claims 1-4 and 6-16 is withdrawn in view of the newly discovered references to Bartoli and Richardson. Rejections based on the newly cited reference follow and the merits of the claims are discussed below.
Claim Objections
The following claims are objected to because of these informalities:
In claim 2, line 5 “a first feeding device configured” should read “the first feeding device is configured”.
In claim 2, line 7 “an application device configured” should read “the application device is configured”.
In claim 2, line 7 “a detectable layer” should read “the detectable layer”.
In claim 2, line 11 “a transport device configured” should read “the transport device is configured”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
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.
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.
Claim 3 is rejected under 35 U.S.C. 112 (pre-AIA ) first paragraph.
Claim 3 recites “a separate feeding port for each kind of part of the marker core”. However, there is no limitation or definition of how many kind(s) of parts of the marker core there are, thus rendering the claim indefinite.
Claim 3 recites “the feeding port extends”. However, it is unclear which of the separate feeding port(s) must extend or whether each feeding port must extend, thus rendering the claim indefinite.
Claims 5 and 12-16 are rejected under both 35 U.S.C. 112 (pre-AIA ) first and second paragraphs for indefinite and inadequate written description in the specification and indefiniteness as explained below.
Claim 5 recites “the application device is operable to one or more of:
apply a liquid adhesive to an application side of the laminar material which is not the detectable side (function 5a);
hold a circumferential area of the laminar material provided and press the surface of the parts of the marker core against the application side of the laminar material, in such a way that tension in the laminar material is maintained and the laminar material adapts to the surface of the part of the marker core, without wrinkling, when the parts of the marker core are pressed against the laminar material (function 5b); and/or
determine a quality with which the adhesive has been applied, by fluorescently stimulating the adhesive” (function 5c), with annotations in italics added by examiner.
Claim 12 recites “the application device is operable to:” followed by three functional recitations very similar or identical to functions 5a-5c listed above.
These claims invoke 35 U.S.C. 112, sixth paragraph, for the reasons provided in the subsequent section below and the corresponding structure described in the specification for the application device is two reel supports per para. 0056 in the PG Pub for the instant application. This is the only structure described in the entirety of the specification for the application device. However, for the means plus function recitations of 5a and 5c, and the similar recitations in claim 12, the written description fails to disclose any structure performing or capable of performing these functions. Furthermore, the disclosed structure of two reel supports is clearly not adequate for or capable of performing functions 5a and 5c in claim 5 and the correspond functions in claim 12. Therefore, claims 5 and 12 are indefinite and fails to provide adequate written description supporting claims 5 and 12. Lastly, the present amendments to claim 5 also constitute unsupported new matter for the reasons described above. Dependent claims fall herewith.
Claim Interpretation
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 limitations use 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:
first feeding device operable to provide a marker core, which reads on a feeding device comprising two separate feeding ports per para. 0056
an application device operable to apply a detectable layer to a surface of the marker core, which reads on an application device comprising two reel supports per para. 0056
transport device operable to transport the marker within the apparatus (for claims 1-6) or to transport between the first feeding device and the application device (for claims 7-15), which reads on a transport device comprising two turntables per para. 0056
joining device operable to join two parts of the marker core
second feeding device for providing a laminar material
joining preparation device operable to remove laminar material and/or apply an adhesive
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 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 § 102
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 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 the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-2, 4-5, 7-8, and 10-11 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Bartoli (US PG Pub 2006/0237124).
In the claims, the recitations which involve the marker core and the detectable surface, as well as parts thereof and manners of operating the apparatus involving these materials, are merely materials worked upon the apparatus and/or manners of operation, and therefore do not limit the claims or distinguish over the prior art. See MPEP § 2115. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). Secondly, the courts have held that the manner of operating the device does not differentiate apparatus claims from the prior art. "[A]pparatus claims cover what a device is, not what a device does." See MPEP §2114.II and Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Regarding claim 1, Bartoli teaches an apparatus (Fig. 5) for producing a marker comprising a marker core and a detectable surface (abstract), the apparatus comprising:
a first feeding device (cylinder 14, which is functionally equivalent and provides the same results as the feeding ports in the instant disclosure for the application device; furthermore, the differences between Bartoli’s feeding device and the structure in the instant disclosure are insubstantial because “the individual components of an overall structure that corresponds to the claimed function are not claim limitations” per MPEP 2183, factor C) operable to provide the marker core (per para. 0030 and 0033) as shown in Fig. 5 with marker core referred to as composite microspheres web 11 in para. 0030);
an application device (comprising heated roll 18, felt 17, and six rollers associated with felt 17 per para. 0030, which is functionally equivalent and provides the same results as the two reel supports in the instant disclosure for the application device; furthermore, the differences between Bartoli’s application device and the structure in the instant disclosure are insubstantial because “the individual components of an overall structure that corresponds to the claimed function are not claim limitations” per MPEP 2183, factor C) operable to apply a detectable layer to a surface of the marker core (applies printed pattern layer 15 per paras. 0022, 0030-0031 and 0033); and
a transport device (the set of rollers 14, 18, unlabeled one near 19, and 21, which is functionally equivalent and provides the same results as the two turntables in the instant disclosure for the transport device; furthermore, the differences between Bartoli’s transport device and the structure in the instant disclosure are insubstantial because “the individual components of an overall structure that corresponds to the claimed function are not claim limitations” per MPEP 2183, factor C) operable to transport the marker core within the apparatus (per para. 0033 and as shown in Fig. 5).
Regarding the recitation of “producing a medical marker” in the preamble, this is an intended use and therefore does not limit the claimed apparatus. See MPEP § 2111.02.II and Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”.
Regarding claim 2, Bartoli teaches a joining device configured to join the at least two corresponding parts of the marker core together to form a marker (heated roller 18 in paras. 0030 and 0033).
Regarding claim 4, Bartoli teaches a second feeding device for providing a laminar ribbon-like material (roller 16 in Fig. 5).
Regarding claim 5, Bartoli teaches the application device is operable to hold a circumferential area of the laminar material provided and press the surface of the parts of the marker core against the application side of the laminar material, in such a way that tension in the laminar material is maintained and the laminar material adapts to the surface of the part of the marker core, without wrinkling, when the parts of the marker core are pressed against the laminar material (per paras. 0030 and 0033 and as shown in Fig. 5).
Regarding claim 7, Bartoli teaches an apparatus (Fig. 5) for producing a marker comprising a marker core and a detectable surface (abstract), the apparatus comprising:
a first feeding device (cylinder 14, which is functionally equivalent and provides the same results as the feeding ports in the instant disclosure for the application device; furthermore, the differences between Bartoli’s feeding device and the structure in the instant disclosure are insubstantial because “the individual components of an overall structure that corresponds to the claimed function are not claim limitations” per MPEP 2183, factor C) operable to provide the marker core (per para. 0030 and 0033) as shown in Fig. 5 with marker core referred to as composite microspheres web 11 in para. 0030);
an application device (comprising heated roll 18, felt 17, and six rollers associated with felt 17 per para. 0030, which is functionally equivalent and provides the same results as the two reel supports in the instant disclosure for the application device; furthermore, the differences between Bartoli’s application device and the structure in the instant disclosure are insubstantial because “the individual components of an overall structure that corresponds to the claimed function are not claim limitations” per MPEP 2183, factor C) operable to apply a detectable layer to a surface of the marker core thereby producing the medical marker (applies printed pattern layer 15 per paras. 0022, 0030-0031 and 0033); and
a transport device (the set of rollers 14 and the unlabeled immediately left of roller 18, which is functionally equivalent and provides the same results as the two turntables in the instant disclosure for the transport device; furthermore, the differences between Bartoli’s transport device and the structure in the instant disclosure are insubstantial because “the individual components of an overall structure that corresponds to the claimed function are not claim limitations” per MPEP 2183, factor C) operable to transport the marker core between the first feeding device and the application device (per para. 0033 and as shown in Fig. 5).
Regarding the recitation of “producing a medical marker” in the preamble, this is an intended use and therefore does not limit the claimed apparatus. See MPEP § 2111.02.II and Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”.
Regarding claim 8, Bartoli teaches a joining device configured to join the at least two corresponding parts of the marker core together to form a marker (heated roller 18 in paras. 0030 and 0033).
Regarding claim 10, Bartoli teaches a second feeding device for providing a laminar ribbon-like material (roller 16 in Fig. 5).
Regarding claim 11, Bartoli teaches the second feeding device comprises a reel support operable to support the marker core (as shown in Fig. 5).
Claim Rejections - 35 USC § 103
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bartoli, as applied to claims 1 and 4 above, in view of Richardson (US Patent 2,173,613).
Regarding claim 6, Bartoli does not teach these features.
However, Richardson teaches a cutting device comprising a blade that rotates about its axis (claim 5) is useful for cropping or face shearing the nap or pile threads of textile fabric with high speed operation and feeding (pg. 1, col. 1, lines 1-14).
In view of Richardson’s teachings, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Bartoli’s apparatus to include Richardson’s cutting device to predictably obtain the functionality and benefits taught by Richardson and cited above.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and all intervening claims.
Response to Arguments
Regarding claims 3 and 12-16, the features recited in each of these claims in combination with the respective base claims and all respective intervening claims were not found in the prior art. However, each of these claims was rejected under 35 U.S.C. 112 (pre-AIA ) first and/or second paragraphs, and are therefore not presently allowable.
Applicant’s arguments filed 11/25/2025 have been fully considered but are not persuasive for the reasons given below.
Regarding the 35 U.S.C. 112, sixth paragraph, interpretations of the claims, Applicant presents an argument contending that these interpretations should be withdrawn since Applicant does not intend to have these features interpreted under 112, sixth paragraph and because the various terms invoking 112, sixth paragraph, are shown in the drawings in various locations.
However, these arguments are not persuasive because each of the terms listed in the 112, sixth paragraph section above satisfies the three-pronged test in the statute, and therefore is properly interpreted under 112, sixth paragraph.
Conclusion
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/JRS/
Examiner
Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745