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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/23/2026 has been entered.
Claims 14-15, 18-19 and 22-28 are pending in this application. Any rejection(s) and/or objection(s) made in the previous Office Action and not repeated below, are hereby withdrawn due to Applicant's amendments and/or arguments in the response filed on 03/23/2026.
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 claimed features "suction device" and "the suction device comprises a suction tube" in claims 14 and 26-28 must be shown 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
In claim 27, there is no antecedent basis in the specification for "the suction device comprises a suction tube";
In claim 28, there is no antecedent basis in the specification for "the suction device comprises a suction tube";
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: "suction device" in claims 14 and 26, and "pickup device" in claim 26.
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.
In this Office action, the "pickup device" in claim 26 has been interpreted as: a device comprising an annular pickup body, wherein the annular pickup body supports pickup elements, and the pickup elements can slide with respect to the pickup body along radial directions (according to p. 5, ll. 29-30; p. 6, ll. 1-4 of the original specification).
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.
Claims 14-15, 18-19 and 22-28 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 14 and 26 each recite the limitation "suction device" which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the writing disclosure fails to provide any corresponding structure, material, or acts for performing the claimed function. There is a lack of written description for this limitation in the claims.
Claims 27-28 each recite the limitation "the suction device comprises a suction tube". However, the original disclosure fails to set forth the feature. It is noted that the original specification does not provide any structure for the "suction device", and the drawings do not show the "suction device" either. Therefore, claiming toward the suction device comprising a suction tube must be cancelled from the claims, since the claims appear to be new matter.
The remaining claims each depend from a rejected base claim and are likewise rejected.
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 14-15, 18-19 and 22-28 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.
Claim limitation “suction device” in claims 14 and 26 invoke 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 claims are indefinite and are 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.
The remaining claims each depend from a rejected base claim and are likewise rejected.
Status of Claims
Claims 14-15, 18-19 and 22-28 are currently free of prior art rejection. In Andrea, as the at least one extraction roller and the at least one contrast roller of are aligned horizontally, there is no motivation to arrange the at least one contrast roller to be supported by the pickup device and the at least one extraction roller to be supported by the turning device.
However, the claims should NOT be construed as reciting allowable subject matter. It is noted that all the pending claims are subjected to 35 USC 112(a) and/or 112(b) rejections as discussed above; and substantive amendments to the claims may result in prior-art-based rejections in future Office actions.
Declaration
The declaration under 37 CFR 1.132 filed 03/23/2026 is insufficient to overcome the 112(a) and 112(b) rejections to the claimed "suction device" which invokes 35 U.S.C. 112(f) because of the reasons as follows.
First, in the declaration, Mr. Forconi states "circular knitting machines for production of socks or other tubular knit items generally have a suction tube which basically is a duct through which a negative pressure (vacuum) is generated to aspirate, convey, or keep a knitted tubular fabric under tension during knitting and transportation of the sock." Per the Oxford Languages, the term "generally" is defined as "in most cases; usually", which means the "suction device" may not have a suction tube in some cases. In addition to a tube, a "suction device" may also be a vacuum hood, a suction cup or any other suction device that do not include a tube but still being applicable to transfer a knitted item in a circular knitting machine. As such, one of ordinary skill of the art cannot ascertain that the claimed "suction device" in the present application must have a suction tube. Therefore, it is still uncertain what structural features the claimed "suction device" has.
Second, the declaration fails to provide any factual evidence to support the statement that a person of ordinary one of ordinary skill in the art would understand from the present application what "a suction device" is and how it operates in the claimed system and method. As such, the declaration amounts to an opinion without support by actual proof.
For the above reasons, the opinion in the declaration, even if considered to be an expert opinion, is inadequate to overcome the 112(a) and 112(b) rejections to "suction device".
Response to Arguments
In view of Applicant's amendment, newly modified grounds of rejection have been identified and applied as necessitated by the amendment. In addition, Applicant's arguments filed 03/23/2026 have been fully considered and addressed as follows.
Applicant's remarks: Applicant asserts that the declaration filed by Applicant is sufficient to overcome the 112 rejections to the claimed "suction device" that invokes 35 U.S.C. 112(f).
Examiner's response: Examiner respectfully disagrees. The reasons have been detailed in the "Declaration" section. In addition, Mr. Forconi's explanation of the benefits of the present invention compared with US Patent No. 11,993,875 in the declaration appears to be irrelevant to the 112(a) and 112(b) rejections to the claimed "suction device" at issue, because the explanation does not provide or involve any structural feature for the claimed "suction device".
Further, MPEP 2181 (II)(A) states:
"The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function."
When a claim limitation invokes112(f), Applicant must specifically disclose their corresponding structure. It is not sufficient that a one of ordinary skill of the art could guess what it might be. However, the original specification does not disclose any structure for "suction device" and clearly link the structure to the suction function. Therefore, the claim limitation "suction device" is subjected to 112(a) and 112(b) rejections.
For the above reasons, Applicant's arguments are not found persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIYING ZHAO whose telephone number is (571)272-3326. The examiner can normally be reached on 8:30 am - 4:30 pm EST.
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/AIYING ZHAO/Primary Examiner, Art Unit 3732
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