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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “electronic processor means” and “software means” in claim 1 (the phrase “electronic processor” and the word “software” are things, not functions), “mechanical means” in claims 4 and 12 (the word “mechanical” is not a function), “memory storage means” in claims 9 and 17 (“storage” is a thing, and not a function).
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-7, 9-15, and 17-22 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.
Claim 1 recites “a capping control device (300), arranged downstream of said quality control device (200) and equipped with one or more sensors, the capping control device (300) being and configured for…
ascertaining one or more characteristics of said sample on the basis of mechanical and/or physical quantities detected by said one or more sensors during said application cycle.”
The original specification fails to disclose one or more specific characteristics of said sample ascertained by the capping control device, per se. Accordingly, since the specification fails to describe what the characteristic(s) is/are, Applicant did not have possession of the claimed invention at the time of filing.
Furthermore, the original specification fails to describe what mechanical and/or physical quantities are detected by said one or more sensors of the capping control device during said application cycle, in order for the ascertaining to be performed. The original specification also fails to describe what detects the mechanical and/or physical quantities during the application cycle. For example, the specification fails to disclose what the sensors sense. Accordingly, since the specification lacks a description of the mechanical and/or physical quantities used for ascertaining the characteristics, and/or what detects these mechanical and/or physical quantities, Applicant did not have possession of the claimed invention at the time of filing.
Claim 1 contains new matter because the is no support in the originally filed specification for the limitation that the one or more sensors of the capping control device detect mechanical and/or physical quantities used for ascertaining the claimed one or more characteristics. The original specification is silent as to what the sensors sense.
Claim 1 further recites “wherein said electronic processor means (500) are implemented with software means configured for determining, on the basis of said characteristics of said sample, one or more parameters optimal for carrying out application of a cap to a vessel, said cap and said vessel having the same mechanical and physical characteristics as the cap (T) and preform (P) forming said sample, respectively.”
As discussed above, the specification fails to specify the claimed characteristics. Accordingly, Applicant did not have possession of the claimed invention at the time of filing.
Applicant did not have possession of claims 2-7 and 9 at the time of filing because claims 2-7 and 9 depend from claim 1.
Claim 10 recites “carrying out an operation of controlling the quality of said cap (T) and said preform (P).”
The original specification fails to disclose how the quality of the cap and preform are “controlled,” per se. The cap and preform are already made, and the disclosed system does not physically modify the cap and preform so as to control the quality thereof. Accordingly, Applicant did not have possession of claim 10 at the time of filing.
Claim 10 further recites “determining, on the basis of said characteristics of said sample, one or more parameters optimal for carrying out application of a cap to a vessel, said cap and said vessel having the same mechanical and physical characteristics as the cap (T) and preform (P) forming said sample, respectively.”
With respect to the claimed characteristics, Applicant did not have possession of claim 10 for the same reasons given with respect to claim 1 above.
Applicant did not have possession of claims 11-15 and 17 at the time of filing since claims 11-15 and 17 depend from claim 1.
Claim 18 recites “determining, on the basis of said characteristics of said sample, one or more parameters optimal for carrying out application of a cap to a vessel, said cap and said vessel having the same mechanical and physical characteristics as the cap (T) and preform (P) forming said sample, respectively.”
Claim 18 also recites “carrying out an operation of controlling the quality of said cap (T) and said preform (P).”
Accordingly, Applicant did not have possession of claim 18 at the time of filing, for substantially the same reasons given above with respect to claim 10.
Claim 19 recites “wherein said one or more characteristics of said sample are selected from the group consisting of a temperature of the environment in which capping is effected, materials forming the cap (T) and preform (P), a speed at which the cap (T) and preform (P) are coupled together, and applied tightening torque.”
Claim 19 contains new matter because there is no support in the original specification for the capping control device ascertaining the characteristics recited in claim 19.
Claim 20 recites “wherein said mechanical and/or physical quantities are selected from the group consisting of torque, force, speed, and position.”
Claim 1 requires the mechanical and/or physical quantities to be detected by one or more sensors of the capping control device. The original specification is silent as to what is specifically sensed by the sensors of the capping control device. Accordingly, the limitation that the one or more sensors of the capping control device detect mechanical and/or physical quantities selected from the group consisting of torque, force, speed, and position is new matter. Additionally, there is no support in the original specification for the limitation that these specific quantities are used for the claimed ascertaining.
Accordingly, claim 20 contains new matter.
Claims 21-22 recite “wherein said operation of controlling the quality of said cap (T) and said preform (P) includes measuring and checking a temperature of said cap (T) and said preform (P) or a cross-sectional ovalization of said cap (T) and said preform (P) to ensure quality thresholds are met before initiation of the at least one cycle of application of said cap (T) to said preform (P).”
As noted in the rejections of claims 10 and 18 above, there is no support for controlling the quality of the cap and preform. Accordingly, there is also no support for “wherein said operation of controlling the quality of said cap (T) and said preform (P) includes measuring and checking a temperature of said cap (T) and said preform (P) or a cross-sectional ovalization of said cap (T) and said preform (P) to ensure quality thresholds are met before initiation of the at least one cycle of application of said cap (T) to said preform (P).” Here, Applicant is narrowing an unsupported limitation (i.e., “controlling” the quality of the cap and preform), resulting in new matter.
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 10, 18 and 21-22 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 10 recites “carrying out an operation of controlling the quality of said cap (T) and said preform (P).”
The cap and preform are already made, and the disclosed system does not physically modify the cap and preform so as to control the quality thereof. This means there would be no way to control the quality of the cap and preform. Accordingly, it is unclear how the quality of the cap and preform are controlled.
Claim 18 is unclear for substantially the same reason as claim 10.
Claims 21-22 are indefinite for respectively depending from one of claims 10 and 18.
Allowable Subject Matter
Claim 1 would be allowable if the 112a and 112b rejections thereof are overcome without making the claim broader than originally filed.
Claims 2-5, 7-15 and 17-22 are 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, and if the 112a and/or 112b rejections thereof (as appropriate) are overcome.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 1, the prior art of record fails to anticipate or render obvious the features of “a first container (10) for containing a plurality of randomly arranged caps (T), a second container (20) for containing a plurality of randomly arranged preforms (P),” “a robotic device (100), configured for identifying, selecting and picking a cap (T) to be tested from said first container (10) and a preform (P) to be tested from said second container (20), and for subsequently placing said cap (T) and said preform (P) into corresponding seats (201) of said quality control device (200),” “a marking device (600), configured for affixing, to each tested sample, a marking identifying the characteristics ascertained in respect thereof” and “wherein said electronic processor means (500) are implemented with software means configured for determining, on the basis of said characteristics of said sample, one or more parameters optimal for carrying out application of a cap to a vessel, said cap and said vessel having the same mechanical and physical characteristics as the cap (T) and preform (P) forming said sample, respectively,” all in combination with the rest of the claimed device.
It is known to provide a system for checking the quality of a cap being screwed onto another object. For example, WO 2011030209 A1 (at station 40) and US 20120247064 A1 (¶60) each teach a station for checking removal torque and reclosing angle, and DE 102015112574 A1 teaches (title) a method for automatically measuring the closing angle of a container lid. It is also known to use vision-aided robotics to pick up randomly arranged objects from containers (see US 10360531 B1 and US 12064886 B1). Finally, EP 2581732 A1 teaches (¶20) a marking device to directly print a multi-dimensional code to a test container. However, there would have been no motivation to combine these references such that the cap and the object onto which the cap is installed are taken out of respective containers by a robotic device, and wherein a marking device affixes a marking identifying the claimed characteristics on the claimed sample.
Response to Arguments
Applicant's arguments filed 7/22/26 have been fully considered but they are not persuasive.
Regarding the 112a rejection of claim 1, Applicant argues on pgs. 10-11
“The "one or more characteristics of said sample" may include the environmental temperature during the application cycle, the materials of the cap and/or preform, the coupling speed of the cap to the preform, and the tightening torque used to apply the cap to the preform. For example, see the disclosures on page 1, lines 2-8, and page 8, lines 26-31, of the present application as filed, as follows:
"The present invention relates to an automated system for carrying out capping tests. More particularly, the present invention relates to a system configured for carrying out capping tests by removal torque analysis, in order to determine, on the basis of said characteristics of said sample, one or more parameters optimal for carrying out application of a certain cap (e.g., made of plastics or metal material such as aluminum) to a certain vessel (e.g., a bottle, a flask or the like, made of plastics, glass or metal material such as aluminum)."
…
"As stated above, the system 1000 according to the invention is configured for carrying out capping tests by means of removal torque analysis.
In this regard, it has to be noted that such removal torque is affected by a plurality of factors, differently combined with one another, such as the temperature present in the environment in which capping is effected, the materials forming the parts to be coupled, the speed at which the parts are coupled together, as well as the applied tightening torque."”
Applicant’s argument is not persuasive. The portions of the specification cited by Applicant above (and also the rest of the originally filed specification) fail to disclose what characteristics are ascertained by the capping control device, per se. Applicant has merely cited portions of the specification with alleged characteristics, but there is no disclosure that the capping control device is what ascertains them.
Applicant argues on at least pg. 11 and pgs. 13-14 that no new matter has been added.
Applicant’s argument is unpersuasive since claim 1 was amended to recite that the mechanical and/or physical quantities used for ascertaining the one or more characteristics are detected by one or more sensors of the capping control device, which is new matter, as explained in the 112a rejection of claim 1 above. Claims 19-20 contain new matter as explained in the 112a rejections thereof.
Applicant argues on pgs. 11-12
““In the Office Action, it is concluded that "the original specification fails to describe what mechanical and/or physical quantities are detected during said application cycle."
Applicant respectfully disagrees and respectfully requests reconsideration for the following reasons.
The capping control device (300) is required to carry out an application of a cap (T) to a preform (P) so as to obtain a sample. The capping control device (300) is required to ascertain one or more characteristics of the sample on the basis of mechanical and/or physical quantities detected during the application cycle. The "mechanical and/or physical quantities" may include torque, force, speed, and/or position, used during an application cycle of the cap to the preform. For example, see the disclosure on page 5, lines 2-30, of the present application as filed, as follows:
"The system according to the invention, thanks to the introduction of a robot into the working cycle, is completely automated, especially with regard to:
- the selection and picking of caps and preforms;
- the measurement of physical quantities associated with the picked items, which measurement takes place essentially without causing alterations, for example without causing ovalization, temperature variations, and by substantially nullifying the effect of human intervention on the measurement results;
- the repetitive application of the cap and corresponding subsequent removal thereof, based on statistical testing algorithms (torques-speeds- parameters);
- the measurement of physical quantities such as torque, force, speed, position, which take part in the closing cycle of the cap;
- the repetition of the behavior of the cap during application thereof to the vessel, according to which the torque-angle ratio during the step of application to the vessel, is determined by means of the physical quantities described before, by means of a specific motorization emulating the torque load;
- the automatic determination of the parameters optimal for carrying out capping;
- the ability of marking the preforms, for example by means of a printer, reading the codes thereof by means of an appropriate vision system and carrying out measurements also at a later stage."”
Applicant’s argument is not persuasive. Applicant’s understanding of the 112a rejection is incomplete. Applicant argues “In the Office Action, it is concluded that "the original specification fails to describe what mechanical and/or physical quantities are detected during said application cycle.” However, pg. 5 of the Non-Final Rejection states “the original specification fails to describe what mechanical and/or physical quantities are detected during said application cycle, in order for the ascertaining to be performed.” Accordingly, the rejection is not based merely on a lack of disclosed mechanical/physical quantities, but on a lack of support for what mechanical/physical quantities are used for the claimed ascertaining.
Claim 1 requires the mechanical and/or physical quantities to be used for ascertaining the claimed one or more characteristics. Applicant has merely pointed out physical quantities disclosed in the specification, but has failed to identify what mechanical and/or physical quantities are detected during the application cycle and used for the ascertaining of the claimed one or more characteristics. Accordingly, the rejection is still proper.
Applicant argues on pg. 13 that sensors of the capping control device detect the claimed mechanical and/or physical quantities used for the ascertaining step.
Applicant’s argument is not persuasive since the original specification is silent as to what is detected by the sensors of the turret disclosed on lines 5-7 of pg. 8. Accordingly, there is no support that the disclosed sensors detect the claimed mechanical and/or physical quantities used for the ascertaining step.
As to claims 10 and 18, Applicant argues on pg. 14 that “"Controlling the quality" refers to measuring and checking physical properties (such as temperature and cross-section ovalization) to ensure they meet quality thresholds before a capping test is initiated.”
Applicant’s argument is not persuasive. Www.merriam-webster.com defines “control” as “to exercise restraining or directing influence over.” Accordingly, one of ordinary skill in the art would not understand the phrase “controlling the quality” to mean “measuring and checking physical properties (such as temperature and cross-section ovalization) to ensure they meet quality thresholds before a capping test is initiated.”
Perhaps the phrase “measuring and checking physical properties” would be more appropriate.
Applicant argues that the claims are in full compliance with the requirements of §112(a) and (b), and that the pending claims are in condition for allowance.
Applicant’s argument is not persuasive since one or more claims are still rejected under §112(a) and/or (b), as detailed above.
Conclusion
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.
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/R.C.P./ Examiner, Art Unit 2853
/STEPHEN D MEIER/ Supervisory Patent Examiner, Art Unit 2853
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