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 .
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, “an annular stop for the cleaning elements of the second set being interposed between the first annular support and the second annular support” recited in claim 15 and the combination of using a disk and having a third support means recited in claim 1 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.
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 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:
“first annular support means” or “first support means” in claims 1-3, 7-9, and 15-16. Examiner finds that there is no function recited as the closest recitation to a function is “surrounding a first section of said shaft” which examiner finds describes an orientation of the “first annular support means” or “first support means” rather than describe the function.
“second annular support means” or “second support means” in claims 11 and 13-15. Examiner finds that there is no function recited as the closest recitation to a function is “surrounding a first section of said shaft” which examiner finds describes an orientation of the “second annular support means” or “second support means” rather than describe the 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, 6-10, 12, and 14-15 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 disk positioned consecutively to the second base along the rotation axis; the disk being separate from the first support means” and “a third support means, said third support means comprises a third group of seats in which a third set of cleaning elements being removably positioned; the third group of seats defining extensions of the grooves fashioned in the first support means”. Applicant’s specification and drawings do not support the combination of having the claimed disk and having the third support means in a single embodiment. Examiner finds that Fig. 22 of the originally filed drawings schematically shows a disk, but does not show there being a third support means below this disk. There is also not any further information in the specification on what shape the disk is or how it functions. Is the disk a solid annular disk which closes both the Examiner is interpreting the disk to be a solid annular disk which stops movement of the first set of cleaning elements and closes the bottom of the grooves of the first annular support means? Does the disk have the same shape as the rotatable element shown for example in Fig. 7? If so, what makes the disk different from the rotatable element? Examiner is interpreting the disk to be a solid annular disk which stops movement of the first set of cleaning elements and closes the bottom of the grooves of the first annular support means. Under this interpretation, it is unclear to examiner how the third set of cleaning elements would be installed onto the third support means as the bottom of the grooves of the first annular support means are closed. Examiner finds that there are two distinct embodiments, one which has three annular support means which requires the limit stop to be integrated into the first support means and one which has two annular support means which allows for the bottom of the first support means to have a solid annular disk. Examiner finds that Applicant is mixing embodiments in claim 1 and therefore examiner is unable to examine claim 1 as it is unclear which embodiment is attempting to be claimed.
Claims 6-10, 12, and 14 are also rejected and unable to be examined as they depend upon claim 1 which examiner is unable to examine.
Claim 15 recites “an annular stop for the cleaning elements of the second set being interposed between the first annular support and the second annular support”. Examiner finds this limitation to be new matter. Examiner finds that page 8 lines 21-23 of Applicant’s specification (which Applicant provided on page 9 of the arguments/remarks filed 12/5/2025) states the following: “Conveniently, every cleaning element of the second set 42 engages in a corresponding seat of the second group 320. Conveniently, the seats of the second group 320 comprise a stop bottom for the cleaning elements of the second set”. Examiner finds that Applicant’s specification fails to teach a single annular stop which is used to support each cleaning element of the second set as page 8 lines 21-23 of Applicant’s specification states that each seat comprises a “stop bottom” which is not specified or shown in the provided drawings as being annular. Examiner further finds that Applicant’s specification fails to teach that the annular stop is a separate element which is interposed between the first and second annular supports as page 8 lines 21-23 of Applicant’s specification states that each “stop bottom” is a subset of a corresponding seat of the second group, where the seats of the second group are a subset of the second annular support means and therefore the annular stop (i.e. stop bottom) cannot be interposed between the first and second annular supports as the second annular support cannot be between itself. Therefore, the limitation of “an annular stop for the cleaning elements of the second set being interposed between the first annular support and the second annular support” is considered new matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11932211. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the elements from claim 16 of the instant application are anticipated by claim 11 of U.S. Patent No. 11932211.
Claimed Subject Matter
Claim 15 is considered to read over the prior art of record because the prior art of record does not teach or suggest the claimed combination of features including “an annular stop for the cleaning elements of the second set being interposed between the first annular support and the second annular support”. However, this claim cannot be considered "allowable" at this time due to the rejection(s) under U.S.C. 112(a) set forth in this Office Action. Therefore, upon the claims being rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) set forth in this Office Action, further consideration of this claim with respect to the prior art will be necessary.
Allowable Subject Matter
Claim 16 would be allowable if a terminal disclaimer is filed or if claim 16 is rewritten to overcome the non-statutory double patenting rejection.
Claim 16 is allowable over the prior art since the prior art fails to disclose, suggest, or make obvious in combination with the additional elements or each respective claim the following features: “said first support means comprises a channel to the rear of the first seat; said channel and said first seat of the first group being separated by a wall having a connecting slot; said insert of the first cleaning element comprising an anchorage means that passes through said slot and widens in said rear channel so as to preclude the radial extraction of the first cleaning element from the first support means.”
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments filed 4/10/2026, with respect to the drawing objection and the rejection of claim 15 under 35 U.S.C. 102(a)(1), are not persuasive.
Applicant argues that Fig. 10 and newly added Fig. 23 shows “an annular stop for the cleaning elements of the second set being interposed between the first annular support and the second annular support”. Examiner respectfully disagrees. Examiner finds that Fig. 10 has no labeled element shown which would correspond to Applicant’s claimed annular stop. Examiner further finds that Fig. 23 is not being entered because it introduces new matter by mixing embodiments, and that even if Fig. 23 were entered, Fig. 23 shows the annular support between the first and third annular supports, not the first and second.
Applicant argues that the recitation of “What has been indicated in the course of the present description for the first support means 31 can be repeated for the second support means 32. What has been indicated for the interaction between the first support means 31 and the first set 41 of cleaning elements can be repeated for the interaction between the second support means 32 and the second set 42 of cleaning elements” provides support for the recitation in claim 15 of “an annular stop for the cleaning elements of the second set being interposed between the first annular support and the second annular support”. Examiner respectfully disagrees. Examiner finds that page 7 lines 16-19 of Applicant’s specification specifies that in the embodiment where a disk is used, “the disk 7 is separate from the first support means 31”. Because the disk is a separate structure from the first annular support means, this means that while similarities between the first and second support means are supported, it does not cover the disk as the disk is not part of any support means.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CALEB A HOLIZNA whose telephone number is (571)272-5659. The examiner can normally be reached Monday - Friday 8:00-4:30.
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, Monica Carter can be reached on 571-272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.A.H./Examiner, Art Unit 3723 /MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
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