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 .
Response to Arguments
Applicant's arguments filed 10 June 2026 have been fully considered but they are not persuasive.
Regarding the rejection under 35 USC § 112, Applicant alleges that “heating region” is a “specific, physical part of the system (e.g. a partition wall 124)”. This is not persuasive because Applicant’s arguments are not commensurate in scope with the invention as claimed as claims 1 and 15 are devoid of “a partition wall”. The “region” terminology remains undefined and recites no structural limitation or configuration directed to “heating”. Applicant states that the “heating region” is not a heating device and allegedly is “actively heated by a separate heating device”. However, absent a positively recited heating device, the terminology “heating” provides no positively recited structural limitation to the claim, but merely the capability of such intended use. Applicant should more clearly and distinctly define their structural limitations to the claims if the intent is to claim heating structure. It is well settled that claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function (In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959)) and that “apparatus claims cover what a device is, not what a device does.” (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original)).
Turning to the rejection(s) of the claims under 35 U.S.C. § 102, it is noted that the terminology in a pending application's claims is to be given its broadest reasonable
interpretation (In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989))
and limitations from a pending application's specification will not be read into the claims
(Sjolund v. Musland, 847 F.2d 1573, 1581-82, 6 USPQ2d 2020, 2027 (Fed. Cir. 1988)).
Anticipation under 35 U.S.C. § 102 is established only when a single prior art
reference discloses, either expressly or under the principles of inherency, each and
every element of a claimed invention. See Constant v. Advanced Micro-Devices. Inc.,
848 F.2d 1560, 1570, 7 USPQ2d 1057, 1064 (Fed. Cir.), cert. denied, 488 U.S. 892
(1988); RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). Moreover, anticipation by a prior art reference does not
require either the inventive concept of the claimed subject matter or the recognition of
properties that are inherently possessed by the prior art reference. Verdegaal Brothers
Inc. v. Union Oil co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.
1987), cert. denied, 484 U.S. 827 (1987). A prior art reference anticipates the subject
matter of a claim when that reference discloses each and every element set forth in the
claim (In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994)
and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990));
however, the law of anticipation does not require that the reference teach what
Applicant is claiming, but only that the claims "read on” something disclosed in the
reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984) (and overruled in part on another
issue), SRI Intel v. Matsushita Elec. Corp. Of Am., 775 F.2d 1107, 1118, 227 USPQ
577, 583 (Fed. Cir. 1985). Also, a reference anticipates a claim if it discloses the
claimed invention such that a skilled artisan could take its teachings in combination with
his own knowledge of the particular art and be in possession of the invention. See In re
Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995), cert. denied, 116 S.Ct. 1362 (1996), quoting from In re LeGrice, 301 F.2d 929, 936, 133 USPQ 365, 372 (CCPA 1962).
Regarding claim 1, Applicant argues that Morioka does not disclose the newly introduced feature of “the cooling gas flow supply is guided through the heating region and/or surrounded by the heating region”, citing different portions of the Figures, specification, and structural features not recited in the claim. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., partition wall 124 and heating source) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further regarding the recitation of “the cooling gas flow supply is guided through the heating region” is clearly anticipated by Morioka since the cooling gas is directly supplied to the “heating region”, as shown in Figure 5 and associated text and recited in the rejection. Accordingly, the invention as claimed still reads on the teachings of Morioka.
Applicant further argues that “Morioka does not teach or suggest a cooling gas flow supply that is surrounded by a heating region”. However, such recitation is recited in the alternative and is claimed as an optional feature. Morioka teaches the limitation “the cooling gas flow supply is guided through the heating region” as indicated above.
Regarding the combination of Morioka and Covizzi, Applicant further argues that Covizzi does not disclose such configuration. However, Morioka is relied upon in the rejection for teaching such configuration.
Regarding claim 15, Applicant repeats arguments above for claim 1. This is not persuasive for reasons of same indicated above for claim 1.
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 1-20 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 claims 1 and 15, the recitation of “heating region” is indefinite because it is unclear what Applicant intends. Is a heating source being recited or merely a region having the intended use capability to be heated? Regarding claim 1, the recitation of a “heating region” being a component of a “cooling gas flow supply” is confusing. How can a region be heated by a cooling gas flow supply? What structure provides heat to this “region”? Clarification and correction of the heating source is required.
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 (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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 6-9, 13-18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,771,552 to Morioka.
Regarding claims 1-4, 6-9, 13-18, and 20, Morioka discloses a treatment system or treating workpieces, the treatment system comprising:
a housing which surrounds a treatment chamber (see Figs. and housing surrounding treatment chamber 1);
a cooling gas flow supply for supplying a cooling gas flow to the treatment chamber (see feed ducts 3A, feed line 3E, and damper 13J in Fig. 5, which supply cool ambient air); and
a heating region which is adjacent to the cooling gas flow supply or forms a component thereof, wherein the cooling gas flow supply is guided through the heating region (see feed nozzles 3H and feed line 3G connected to burner 3D in Fig. 5),
wherein the treatment system includes a heating device (3D) for actively heating the heating region, and wherein the heating device includes one or more burner elements and/or one or more ohmic heating elements (note 3D is disclosed as a blower),
wherein the heating region is or includes a partition wall delimiting the treatment chamber (wall between treatment chamber 1 and hot air feed duct 3A),
wherein an outer side, facing away from the treatment chamber, of the partition wall delimits a heating gas chamber to which heating gas can be supplied from a heating gas flow supply (3a) of the treatment system (inside portion of heating duct 3A reads on such heating gas chamber),
wherein the cooling gas flow supply is guided through the heating region and/or surrounded by the heating region (note the cooling gas flow supply of Morioka is guided throughout the chamber 1, which is at least in part the heating region),
wherein the cooling gas flow supply includes one or more cooling gas flow channels (3A,3a) for introducing the cooling gas flow into the treatment chamber (1), and wherein one or more of the cooling gas flow channels traverse a heating gas chamber (3G) for heating the heating region (see Fig. 5, note cooling gas flow channel between blower 3C and treatment chamber 1),
wherein one or more of the cooling gas flow channels (3a) fluidically connects a cooling gas chamber (3A) to the treatment chamber (1), and wherein the heating gas chamber is arranged between the cooling gas chamber and the treatment chamber (see Fig. 5),
wherein a heating gas chamber (3G) for heating the heating region is fluidically connected to the treatment chamber (see Fig. 5),
wherein the heating gas flow supply forms or includes a flow guide by which lock supply air from a lock of the treatment system or from a branching of a supply channel of the lock air can be supplied as heating gas to the heating region for heating the heating region (note the branching of supply channels 3E and 3G, which supply heating gas flow and the pathway includes a flow guide to flow heating gas into chamber 1),
wherein a cooling gas flow supply is provided in and/or on a partition wall and/or a side wall of the housing (inner wall of gas flow duct 3A), and includes nozzles which, starting from the partition wall and/or the side wall, project into the treatment chamber (see Fig. 5),
Method for treating workpieces, the method comprising:
introducing one or more workpieces (A) into a treatment chamber (1), which is surrounded by a housing (shown around chamber 1 in Fig. 5), and/or conveying one or more workpieces through the treatment chamber (via carriage 2);
supplying a cooling gas flow by means of a cooling gas flow supply to the treatment chamber for cooling the one or more workpieces (see cooling ambient air through blower 3C, damper 13J, and duct 3E to cool the workpiece(s)); and
heating a heating region adjacent to the cooling gas flow supply, preferably to a temperature which is above a temperature of the supplied cooling gas flow (see heated air through burner 3D and to the treating chamber 1 in Fig. 5),
wherein the heating region is heated to a temperature that is above a temperature of the cooling gas flow (manifestly the heated air is higher temperature than the cooling ambient air supplied),
wherein the partition wall in particular includes from one or more metal sheets or is formed therefrom (implicitly taught for air ducts),
wherein the side wall is a vertical side wall (see 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 (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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morioka in view of US 2015/0345867 to Covizzi et al. (“Covizzi”).
Morioka, supra, discloses the claimed invention including a treatment chamber and partition wal in the form of air ducts for treating workpieces. Morioka does not expressly disclose wherein an outer side, facing away from the treatment chamber, of the partition wall is provided with a thermal insulation. Covizzi teaches that it is known to provide a heat-treating chamber with heat-insulating structure on various ducts, baffles, unions, etc. that convey air. (see Covizzi at ¶¶ [0003] and [0025] teaching use of insulating material 21).
Therefore, the position is taken that it would have been obvious at the time of effective filing to provide the treatment system of Morioka with thermal insulation, such as that taught in Covizzi, to yield the same and predictable results of providing the desired thermal insulation of a heat treatment system.
Allowable Subject Matter
Claims 10-12 and 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSEPH L PERRIN whose telephone number is (571)272-1305. The examiner can normally be reached M-F 7:30-4:00.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael E. Barr can be reached at 571-272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Joseph L. Perrin, Ph.D.
Primary Examiner
Art Unit 1711
/Joseph L. Perrin/Primary Examiner, Art Unit 1711
Prosecution Insights