DETAILED CORRESPONDENCE
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 .
Allowable Subject Matter
Claim 113 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 any intervening claims.
Response to Arguments
Applicant's arguments have been fully considered.
Claim Interpretation
Applicant argues that certain terms should not be treated as means-plus-function terms.
Examiner agrees that if a functional term that does not have an art recognized structural meaning, but is recited with structure in the claim; and, if that structure sufficient to fully perform the function, then the term does not require importing elements from the specification into the claim, and it is not subject to interpretation under 112(f).
A functional term that does not have an art recognized structural meaning and is not provided with a sufficient structure, in the claim, to fully perform the function would require importing structure from the specification into the claim in order to provide the sufficient structure to perform the function.
112 rejections
Applicant argues
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Examiner does not agree with applicant’s analysis. The term “configured to” only requires a narrow structural interpretation if and only if the narrower meaning is supported by the specification. The term “configured to” should not be read as implying structure when structure does not exist in the specification.
Whether the narrow interpretation of “configured to” (or equivalent) is proper depends on whether it would be supported by the instant application. That is, whether the term “configured to” is properly interpreted as a structural limitation depends on the application as a whole.
The disputed limitations refer to functions that could be read as structural (e.g., a limit switch that turns one module off while another is running), but they could also be read as intended use implementations (e.g., user instructions).
The 112(b) inquiry was an attempt to resolve if and how applicant intended for any of these “configured to” limitations to be interpreted as more narrow structural interpretations. Applicants allegation that all terms using the term “configured to” are naturally structural will not be implemented.
Prior art rejections
Applicant alleges that duplication of the robot in Cahlander requires modification of the robot:
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Examiner does not find this persuasive because duplication would not require structural modification of the secondary robot. Cahlander provides a robot that, e.g., fries french fries. The Cahlander robot thus performs the tasts of main transport and lifting. While Applicant may intend for this task to be perfomed by two separate robots (or “modules”), there is no structural distinction between a transport robot (“transport module”) and a frying robot (“lift module”). Two Cahlander robots meets the claim.
Applicant argues that duplication of the robot in Cahlander would result in reductant manipulators and would not provide an obvious benefit (see quoted section above, and remainder of argument on Pg. 10)
Examiner does not find this persuasive. Duplication of the Cahlander robot would result in addition actuators being available which would enable the system to operate on larger or multiple fry stations. The idea splitting up tasks to operators (robots or people) in a cooking setting is obvious.
Examiner points out that the argument is not that the invention is trivial, however, as claimed, two Cahlander robots reads on the claim.
Applicant argues
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Examiner does not find this persuasive because it is unclear how the claimed structures are different than Cahlander’s robot. Cahlander’s robot is intended, at least, for frying baskets of food (see figures). A “mechanism configured to grip a basket” and a “basket support” are both encompassed by a robot that can pick up and hold a basket. When there are two Cahlander’s robot, then both limitations are met.
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:
linear transport modules
shaker mechanism
mechanism configured to grip the basket
salting and/or seasoning system
computer implemented scheduler
computer implemented software system
packaging system
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 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 111, 94-95 and 101-103 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.
In reference to claim 111, the claim is an unsupported negative limitation.
In reference to claim 94-95 and 101-103, applicant alleges that configured to in these claims refers to structure, however, there is no support for this
The term “configured to” only requires a narrow structural interpretation if and only if the narrower meaning is supported by the specification. The term “configured to” should not be read as implying structure when structure does not exist in the specification.
Whether the narrow interpretation of “configured to” (or equivalent) is proper depends on whether it would be supported by the instant application. That is, whether the term “configured to” is properly interpreted as a structural limitation depends on the application as a whole.
The disputed limitations refer to functions that could be read as structural (e.g., a limit switch that turns one module off while another is running), but they could also be read as intended use implementations (e.g., user instructions).
A prior 112(b) inquiry was issued in an attempt to resolve if and how applicant intended for any of these “configured to” limitations to be interpreted as more narrow structural interpretations. Applicants alleged that all terms using the term “configured to” are naturally structural. The claims are newly rejected under 35 USC 112(a) because there is no support for interpretation of these limitations as structurally narrowing.
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(s) 92-93, 112 is/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 pre-AIA the applicant regards as the invention.
In reference to claim 92-93, the claim limitation “the controller operable to control [an element] configured to…” invokes 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 structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
As evidenced by Applicant’s remarks Applicant intends for the claimed controller to refer to a specialized programmed controller, however, the specification fails to provide disclose of an algorithm for performing the claimed specific computer function. See MPEP 2181:
For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming.
Accordingly, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor.
Mere reference to a general purpose computer with appropriate programming without providing an explanation of the appropriate programming, or simply reciting “software” without providing detail about the means to accomplish a specific software function, would not be an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In this case there is no disclosure of any algorithm. 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 limitation will no longer be interpreted as a limitation 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 structure, material, or acts perform the entire claimed function, 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 structure, material, or acts disclosed therein to the function 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 structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
In reference to claim 112, the claim limitation “packaging system” invokes 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 structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. 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 limitation will no longer be interpreted as a limitation 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 structure, material, or acts perform the entire claimed function, 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 structure, material, or acts disclosed therein to the function 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 structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 91-106 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cahlander (US 5172328 A)
In reference to claim 91, Cahlander discloses an automated food-fryer system that is configured to automatically move a food-fryer basket from a frozen food dispenser to a cooking well and then to a food dump, the automated food-fryer system comprising (Fig 1-5 and description thereof, e.g,: “FIGS. 1-5, there is illustrated a perspective view of a robotized fry cell 111 in accordance with the present invention. Fry cell 111 is composed of a robot 113 and various stations and component”):
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(Fig 1-3 and description thereof, e.g., “Cooking station 117 consists of one or more fry vats 137 and associated equipment as hereinafter discussed.” and “Fig 1-5, 9-10, and Fig 23-28 and description thereof, namely, robot 113):
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(Fig 1-5, 9-10, and Fig 23-28 and description thereof, namely, robot 113 and discussion of associated control means.
The robot is shown as receiving frozen food from a dispenser, frying the food in fry wells, and transporting the cooked food, which reads on the claimed module functional claiming;
See fig 1-2; the robot extends over the one or more cooking wells and the food dump.)
Cahlander teaches a robot that reads on the claimed modules, but does not disclose multiple separate robots for independently performing certain tasks.
It would be obvious to duplicate the robot and dedicate each one to performing a single task in order to increase throughput.
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the system such that the system comprise multiple separate modules as claimed.
The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Harza, 124 USPQ 378 (CCPA 1960) (see MPEP § 2144.04).
In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes (e.g., Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959); In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)). See MPEP § 2144.04 (IV)(C).
Cahlander provides a robot that, e.g., fries french fries. The Cahlander robot thus performs the tasts of main transport and lifting. While Applicant may intend for this task to be perfomed by two separate robots (or “modules”), there is no structural distinction between a transport robot (“transport module”) and a frying robot (“lift module”). Two Cahlander robots meets the claim.
Duplication of the Cahlander robot would result in addition actuators being available which would enable the system to operate on larger or multiple fry stations. The idea splitting up tasks to operators (robots or people) in a cooking setting is obvious.
Examiner points out that the argument is not that the invention is trivial, however, as claimed, two Cahlander robots reads on the claim.
Cahlander’s robot is intended, at least, for frying baskets of food (see figures). A “mechanism configured to grip a basket” and a “basket support” are both encompassed by a robot that can pick up and hold a basket. When there are two Cahlander’s robot, then both limitations are met.
In reference to claim 92-93 the cited prior art discloses the invention as in claim 91. It would be obvious to program cooking robots to prepare food in fry baskets by moving the baskets.
In reference to claim 94-95 the cited prior art discloses the invention as in claim 91. The claims are read as intended use claims (see 112b rejections) and the prior art would be capable of performing this and meets the claim.
In reference to claim 97 the cited prior art discloses the invention as in claim 96. The claims are read as intended use claims and the prior art would be capable of performing this and meets the claim.
In reference to claim 98 the cited prior art discloses the invention as in claim 91.
See fig 1, the robot is on linear rails.
In reference to claim 99 the cited prior art discloses the invention as in claim 91.
See “FIG. 9 is a side elevation view of a portion of the robot gripping a fry basket;”
In reference to claim 100, see “shake box 293”
In reference to claim 101-103 the cited prior art discloses the invention as in claim 91. The claims are read as intended use claims (see 112b rejections) and the prior art would be capable of performing this and meets the claim.
In reference to claim 104-106 the cited prior art discloses the invention as in claim 96. The claims are read as intended use claims and the prior art would be capable of performing this and meets the claim.
Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang teaches frying robot.
Rosencrance describes a commercial frying robot system.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Examiner has utilized USPTO approved search resources, such as EIC or external tools, beyond routine search tools and/or leveraged experts in the field. Examiner has cited and explained the relevance of prior art not used in rejections but pertinent to the claims or disclosure. Examiner has provided detailed search documentation through detailed Search Notes, such as annotated search results that identify which data sets were reviewed. When citing the prior art examiner has used annotations clearly in prior art rejections such as, using item-to-item matching to the prior art, pairing exact claim language to particular language used in the prior art, and/or clearly explaining examiner’s interpretation as to how a citation maps to claim language especially when there is not a one-to-one matching of terms.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
