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 .
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:
“support device” recited in claim 11
“cutting device” recited in claim 11
“actuation device” recited in claim 11
“restoring element” recited in claim 18
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.
The limitation “support device” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“device”).
(B) The generic placeholder is modified by functional language (‘configured to project against the metal seal ring of the spark plug,’ see the rejection of claim 11 in view of 35 U.S.C. 112(b) below).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “support device” will be interpreted so as to comprise ‘a ring shaped disc,’ as taught by the Specification (page 7, lines 17 – 22), or a functional equivalent thereof.
The limitation “cutting device” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“device”).
(B) The generic placeholder is modified by functional language (‘configured for cutting’ and “which can be moved in the receiving area in the axial direction of the tool”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “cutting device” will be interpreted so as to comprise ‘a ring shaped base element having a plurality of cutting edges fastened to one end thereof and four rods fastened on an opposing end thereof, wherein a cutting edge plate is also fastened to an opposite end of the four rods,’ as taught by the Specification (page 8, line 26 – page 9, line 5), or a functional equivalent thereof. Examiner recognizes that claim 13 recites the ‘cutting device’ as comprising a “base element on which at least one cutting edge is arranged.” However, because the Specification clearly and expressly teaches that each of the above recited elements of the ‘cutting device’ are required for the ‘actuation device’ to perform the claimed function, the ‘cutting device’ of claim 13 still invokes interpretation under 35 U.S.C. 112(f). This is because the ‘base element’ and ‘cutting edge’ is insufficient structure for the ‘cutting device’ to perform the claimed function (page 8, line 26 – page 9, line 5).
The limitation “actuation device” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“device”).
(B) The generic placeholder is modified by functional language (“to carry out an axial movement of the cutting device in the receiving area and to move the cutting device in the axial direction into the gap, to cut the metal seal ring”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “restoring element” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (“element”).
(B) The generic placeholder is modified by functional language (‘configured for restoring’ and “to return the actuation device and the cutting device to an initial state”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “restoring element” will be interpreted so as to comprise ‘a cylindrical spring,’ as taught by the Specification (page 9, lines 6 - 7), or a functional equivalent thereof.
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 11 – 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.
Claim 11 recites the limitation “a support device which projects into the receiving area and against which the metal seal ring of the spark plug inserted into the receiving area rests in an axial direction” in the second paragraph of the body of the claim. Examiner notes that the preamble of the claim is directed towards “a tool for removing a metal seal ring from a spark plug.” Therefore, it is unclear as to whether Applicant intends the limitation to positively require the ‘support device’ to ‘project against the metal seal ring,’ such that the claim is directed towards ‘a method of removing a metal seal ring from a spark plug,’ or whether Applicant intends the limitation to set forth functional language of the ‘support device,’ such that the claim is directed towards the ‘tool’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “a support device which projects into the receiving area and is configured to project against the metal seal ring of the spark plug when the spark plug is inserted into the receiving area and rests in an axial direction.”
As explained above, the claim limitation “actuation device” 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. Examiner recognizes that the Specification teaches the “actuation device” comprising ‘a lever, a first guide element connected to the lever and configured to transmit an actuating force from the lever, a cylinder having a flange end and a tapering end in contact with the first guide element, a restoring element comprising a cylindrical spring, and a second guide element having an aperture’ (figures 2 and 4, element 60 being the ‘lever,’ element 61 being the ‘first guide element,’ element 63 being the ‘cylinder,’ element 7 being the ‘restoring element’ and ‘cylindrical spring,’ and element 62 being the ‘second guide element’; page 8, lines 13 – 24 and page 9, lines 6 - 11). However, Examiner further notes that the limitation “first guide element” also invokes interpretation under 35 U.S.C. 112(f). This is because: (A) ‘first guide element’ uses a term used as a that is a generic placeholder for performing a claimed function (“element”); (B) the generic placeholder is modified by functional language (‘configured to transmit an actuation force from the lever’); and (C) the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Furthermore, the Specification does not teach a sufficient corresponding structure of the ‘first guide member’ for one skilled in the art to perform the claimed function. Therefore, because the Specification teaches the ‘actuation device’ as comprising the ‘first guide element,’ the Specification also does not teach a sufficient corresponding structure of the “actuation device” for one skilled in the art to perform its’ claimed 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.
Examiner recognizes that claim 12 recites the ‘actuation device’ as comprising a “lever.” However, because the Specification clearly and expressly teaches that each of the above recited elements of the ‘actuation device’ are required for the ‘actuation device’ to perform the claimed function, the ‘actuation device’ of claim 12 still invokes interpretation under 35 U.S.C. 112(f). This is because the ‘lever’ alone is insufficient structure for the ‘actuation device’ to perform the claimed function (page 8, lines 13 – 24 and page 9, lines 6 - 11).
Examiner further recognizes that claim 16 recites the ‘actuation device’ as further comprising ‘a first guide element’ and ‘a cylinder.’ Again, because the Specification clearly and expressly teaches that each of the above recited elements of the ‘actuation device’ are required for the ‘actuation device’ to perform the claimed function, the ‘actuation device’ of claim 16 still invokes interpretation under 35 U.S.C. 112(f). This is because combination of the ‘lever,’ ‘first guide element,’ and ‘cylinder’ are insufficient structure for the ‘actuation device’ to perform the claimed function (page 8, lines 13 – 24 and page 9, lines 6 - 11).
Examiner further recognizes that claim 17 recites the ‘actuation device’ as further comprising ‘a second guide element.’ Again, because the Specification clearly and expressly teaches that each of the above recited elements of the ‘actuation device’ are required for the ‘actuation device’ to perform the claimed function, the ‘actuation device’ of claim 17 still invokes interpretation under 35 U.S.C. 112(f). This is because combination of the ‘lever,’ ‘first guide element,’ ‘cylinder,’ and ‘second guide element’ are insufficient structure for the ‘actuation device’ to perform the claimed function (page 8, lines 13 – 24 and page 9, lines 6 - 11).
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.
Claims 11 – 20 are 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.
As explained above, the limitation “actuation device” invokes interpretation under 35 U.S.C. 112(f). As further explained above, the Specification does not teach sufficient structure of the limitation to allow one skilled in the art to perform the claimed function. Therefore, the limitation is not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726