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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the support rotation axis, spindle axis, and carousel rotation axis must be labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 limitation(s) is/are:
A “feeding device” as recited in claim 1 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “for”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., there is no language defining the structure of the resilient element in claim 1). The claim states “for feeding capsules” but does not designate any structure to carry out said function.
A “cutting arrangement” as recited in claim 1 (first, “arrangement” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “for”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., there is no language defining the structure of the resilient element in claim 1). The claim does not include any structure for the cutting arrangement and only refers to its function of “making a guarantee band on each capsule fed by said feeding device”.
A “actuator device” as recited in claim 1 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “for”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., there is no language defining the structure of the resilient element in claim 1). The claim does not include any structure for the actuator device and only refers to its function of “varying an orientation of each capsule”.
A “control device” as recited in claim 1 (first, “device” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “configured to”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., there is no language defining the structure of the resilient element in claim 1). The claim does not include any structure and just refers to the functions of “controlling the actuator device and varying the orientation of each capsule”.
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
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 14-17, 24-25 and 28-30 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 14, the claim requires a cutting arrangement and a guarantee band which are both previously claimed in claim 1 from which claim 14 depends. It is unclear if claim 14 requires separate and distinct structures from claim 1 or if these structures are the same structures as claimed in claim 1.
Regarding claim 15, the claim requires a capsule and an actuator device which are both previously claimed in claim 1 from which claim 15 depends. It is unclear if claim 15 requires separate and distinct structures from claim 1 or if these structures are the same structures as claimed in claim 1.
Regarding claim 16, the claim states “the step of uncoupling”. This step lacks proper antecedent basis.
Regarding claim 24, the claim requires a feeding device, a cutting arrangement, actuator device, a control device which are all previously claimed in claim 1 from which claim 24 depends. It is unclear if claim 24 requires separate and distinct structures from claim 1 or if these structures are the same structures as claimed in claim 1. For examination purposes, the examiner considers claim 24 as referring to the same structures already introduced in claim 1 such that no additional interpretations under 35 USC 112(f) are required by claim 24.
Further, the claim states “said support and said spindle being configured so that the capsule is first engaged by said support and is subsequently engaged between said support and said spindle which is configured to engage the capsule while the capsule rotates on said cutting arrangement”. It is unclear from the claim how the capsule rotates on the cutting arrangement as the claim requires the capsule to be engaged between the support and spindle which are rotated by the actuator unit and the motor unit.
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 (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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Albonetti (US 2005/0223867 A1) in view of Sain (US 2016/0354946 A1).
Regarding claim 1, Albonetti teaches a cutting apparatus (Albonetti, Fig. 1-4, 1), including:
a feeding device (Albonetti, Fig. 2, 10) for feeding capsules (Albonetti, Fig. 2, 2);
a cutting arrangement (Albonetti, Fig. 3, 15) for making a guarantee bank on each capsules fed by said feeding device (Albonetti, P. 0009);
Albonetti does not teach a sensor unit for detecting an orientation of each capsule; an actuator device for varying an orientation of each capsule, and a control device configured to control said actuator device based on a detection of said sensor unit; wherein said control device is configured so as to vary the orientation of each capsule before the capsules reaches said cutting arrangement so that the capsules reach said cutting arrangement with a desired orientation with respect to said cutting arrangement.
Sain teaches a cutting apparatus (Sain, Fig. 1-8) comprising a sensor unit (Sain, P. 0039) for detecting an orientation of each capsule; an actuator device (Sain, Fig. 1-8, 20) for varying an orientation of each capsule, and a control device (Sain, P. 0024) configured to control said actuator device based on a detection of said sensor unit; wherein said control device is configured so as to vary the orientation of each capsule before the capsules reaches said cutting arrangement so that the capsules reach said cutting arrangement with a desired orientation with respect to said cutting arrangement (Sain, P. 0024). Such a configuration allows the capsule to be orientated in a desired orientation before cutting which ensures the guarantee band is formed by cutting into the proper sections of the capsule.
It would have been obvious to a person of ordinary skill in the art before the filing date of the instant invention to modify the cutting apparatus as taught by Albonetti with the sensor unit, actuator device, and control device taught by Sain as the inclusion of these features ensures that a guarantee band is properly formed by cutting in each capsule by changing the orientation of each capsule to be in a desired orientation before cutting.
Regarding claim 14, Albonetti in view of Sain teaches a cutting method, in particular implemented by a cutting apparatus according to claim 1, said method including the steps of:
- feeding capsules to a cutting means arrangement to make a guarantee band on each capsule (Albonetti, P. 0034);
- detecting an orientation of each capsule (Sain, P. 0039); and
- varying an orientation of each capsule on the basis of said detection (Sain, P. 0039);
characterized in that wherein said varying is performed before the capsules reaches said cutting arrangement so that the capsules reach said cutting arrangement with a desired orientation with respect to said cutting arrangement (Sain, P. 0039).
Regarding claim 15, Albonetti in view of Sain teaches the cutting method according to claim 14, said cutting method including the following steps:
- placing a capsule on a support (Albonetti, P. 0034);
- rotating said support around a support rotation axis by an actuator device to rotate said capsule on itself (Albonetti, P. 0035);
- rotating a spindle around a spindle rotation axis by a motor unit distinct from said actuator device (Albonetti, P. 0035);
- bringing said support and said spindle closer together so that said capsule engages between said support and said spindle (Albonetti, P. 0034);
- actuating said actuator device and said motor unit so that, when said capsule begins to engage between said support and said spindle, said capsule has a rotation speed around said support rotation axis equal to the rotation speed of said spindle around said spindle rotation axis (Albonetti, P. 0034);
- bringing said capsule into rolling contact with a cutting arrangement to form a guarantee band on said capsule (Albonetti, P. 0035).
EXAMINER’S NOTE
Due to the issues with 35 U.S.C. 112b and 112f the allowability of claims 16-17, 24-25 and 28-30 currently cannot be determined.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert D Cornett whose telephone number is (571) 270-0182. The examiner can normally be reached M-F 7:30 am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT D CORNETT/Examiner, Art Unit 3724
/EVAN H MACFARLANE/Examiner, Art Unit 3724
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