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.
The limitations which are considered to invoke 112f include “visualization means”; “input means”; and “means for influencing” because they explicitly use the term “means” without reciting sufficient structure. Also the control unit and operating unit (see below) are understood to invoke 112f.
The “means (133,136,139,142,145,148) for influencing” as recited in claim 1 is understood to include both the buttons 136,139,142,145 of input field 133 and the touch-sensitive region 148 of the screen. The touch sensitive region of the screen is also understood to form the visualization means. As shown below, the operating unit is integrated with the visualization means and means for influencing. The input means –although disclosed as part of the operating unit—does not perform the claimed functions recited in conjunction with the operating unit and is interpreted as a distinct element.
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:
“driving press control unit1 with which the driving presses or groups of driving presses” can be controlled in claim 1 and dependents 2-10. This limitation is understood to be a computer-implemented means-plus-function limitation and examiner finds the corresponding algorithms described on pages 3 and 4 of the pre-grant publication and figure 7.
“operating unit2 (118) connected with the driving press control unit (115) which has means (133, 136, 139, 142, 145, 148) for influencing the actual total center of pressure (160) by changing coordinate values (CoTx, CoTy) of the desired total center of pressure (151) in a coordinate system (154,157) related to the tunnel boring machine (103) for at least approximating the actual total center of pressure (166) to the desired total center of pressure (151)” in claim 1 and dependents 2-103. Claim 1 recites “visualization means (148) which are configured to visualize an actual total center of pressure (160)” and later recites “an operating unit (118) connected with the driving press control unit (115) is present, which has means (133, 136, 139, 142, 145, 148) for influencing the actual total center of pressure (160) by changing coordinate values” [emphasis added]. As the “operating unit” also includes 148, it is understood to also incorporate the visualization means. The corresponding structure is understood as described on page2 [0020-0030] of the pre-grant publication to include screen and touch-sensitive area or electromechanical button/slider 133 (including 136,139,142,145) as well as touch sensitive region 148 of the visualization means -- illustrated at fig 1.
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.
Examiner finds that the touch panels which form part of the operating unit 136/139/142/145 may be touch sensitive screen or electromechanical buttons/potentiometers/sliders [0024,0025,0026]. The touch sensitive region 148 of the visualization means is understood to be a touch screen or equivalent. A touch screen is not understood to be equivalent to electromechanical buttons or sliders4.
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 2 and 3—and claims 4 and 5 by dependency- 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 2 recites “the means for influencing the desired total center of pressure (151) “ which lacks clear antecedent basis because previously a “means (133, 136, 139, 142, 145, 148) for influencing the actual total center of pressure (166) by changing coordinate values … of the desired total center of pressure (151)” [emphasis added] was recited.
Claim 3 is indefinite because it is not clear if “the screen” requires portion 133 to be a screen. That is, 118 is understood to positively include screen at 148, but not necessarily include a screen at 133.
Claims 1 and 6-10 allowed.
Claims 2-5 would be allowable if rewritten or amended 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Janine M KRECK whose telephone number is (571)272-7042. The examiner can normally be reached telework: M-F 0600-1530 EST.
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, Nicole Coy can be reached at 5712725405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Janine M Kreck/Primary Examiner, Art Unit 3672
1 This limitation uses the non-structural term unit coupled with function and fails to recite any structure.
2 This limitation includes the non-structural term(s) unit coupled with function and fails to recite any structure.
3 The 112f interpretation of the visualization means itself, and as it constitutes a part of the operating unit, is only for claims 1-5 and 7-10 because claim 6 recites sufficient structure for the visualization unit. The remaining functions of the operating unit are not supported by structure in claim 6 and are understood to invoke 112f.
4 Although electromechanical devices, such as buttons or sliders are broadly “touch sensitive,” a touchscreen requires programming and operates in a fundamentally different fashion than an electromechanical button or slider.