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 .
Specification
The abstract of the disclosure is objected to because it states the term “theends” in l. 3. It is assumed this is a typographical error and applicants intended to state “the ends.” A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities:
The terms “noelectron” and “metalscanbe” in ¶[0003] should be changed to “no electron” and “metals can be” to correct typographical errors.
Appropriate correction is required.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested:
Apparatus for manufacturing a monocrystalline metal foil comprising a first and second fixing unit positioned to fix a polycrystalline metal foil and a distance adjustment unit
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: the “metal foil heating unit,” the “first fixing unit,” the “second fixing unit,” and the “distance adjustment unit” in claim 1, the “cooling device” in claim 5, and the “pressure adjustment unit” in claim 7.
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 claim limitations relating to the “metal foil heating unit,” the “first fixing unit,” the “second fixing unit,” and the “distance adjustment unit” in claim 1 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “unit” coupled with functional language “metal foil heating,” “first fixing,” “second fixing,” and “distance adjustment,” respectively, without reciting sufficient structure to achieve the function. Additionally, the claim limitation relating to the “cooling device” in claim 5 and the “pressure adjustment unit” in claim 7 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “device” and “unit” coupled with functional language “cooling” and “pressure adjustment,” respectively, without reciting sufficient structure to achieve the function. Furthermore, the generic placeholders are not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1, 5, and 7 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
35 U.S.C. 112(f) limitation:
Corresponding Structure in U.S. Patent Appl. Publ. No. 2024/0263262
metal foil heating unit
resistive heating or a separate heater as disclosed in ¶[0084] and ¶[0097]
first fixing unit
a first electrode as disclosed in ¶¶[0094]-[0096]
second fixing unit
a second electrode as disclosed in ¶¶[0094]-[0096]
distance adjustment unit
a movable stage connected to the first electrode as exemplified by ¶[0099]
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
The element of claims 1 and 7 which relate to a “cooling device” and “a pressure adjustment unit,” respectively, are limitations that 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 the claimed function. In ¶[0098] of the published application the specification refers to a “cooling device” and states that “[any cooling device may be used without limitation as long as it is included in the chamber and may lower a temperature of the chamber,” but does not explain in detail the actual structure of the cooling device or how the function of cooling is achieved.” Similarly, in ¶[0101] of the published application the specification refers toa “pressure adjustment unit” which adjusts a pressure inside the chamber by adjusting the amount and speed of the gas introduced into and removed from the chamber. However, no explanation is provided as to the actual structure of the pressure adjustment unit and how it actually controls the gas flow in order to achieve the function of adjusting the pressure.
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; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function 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 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.
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 5 and 7 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 5 recites that the metal foil heating unit includes a “cooling device” which is a term that is being interpreted under 35 U.S.C. 112(f) and, hence, is interpreted as covering the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. However, the specification as originally filed does not appear to teach or suggest the actual structure of the recited cooling device. Since the metes and bounds of patent protection sought cannot be readily determined the claim is therefore considered to be indefinite.
Claim 7 recites a “pressure adjustment unit” connected to the chamber which is a term that is being interpreted under 35 U.S.C. 112(f) and, hence, is interpreted as covering the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. However, the specification as originally filed does not appear to teach or suggest the actual structure of the recited pressure adjustment unit. Since the metes and bounds of patent protection sought cannot be readily determined the claim is therefore considered to be indefinite.
Claim Rejections - 35 USC §§ 102 and 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by U.S. Patent Appl. Publ. No. 2009/0120351 to Ciulik, et al. (hereinafter “Ciulik”) or, alternatively, under 35 U.S.C. 103 as being unpatentable over Ciulik in view of U.S. Patent No. 4,356,861 to Joseph Winter (“Winter”).
Regarding claim 1, Ciulik teaches an apparatus for manufacturing a monocrystalline metal foil (see the Abstract, Figs. 1-4, ¶¶[0019]-[0030], and the entire reference which teach an apparatus for manufacturing a monocrystalline metal foil), the apparatus comprising:
a chamber (see Figs. 1-2 and ¶[0020] which teach that a metal specimen is heated in a non-oxidizing environment such as a vacuum, inert gas, or a reducing environment which necessarily entails the use of a chamber to produce the desired ambient);
a metal foil heating unit (see Figs. 1-2 and ¶¶[0019]-[0020] which teach heat sources (12a) and (12b) which are capable of heating a polycrystalline metal specimen (11) which may be in the form of a sheet),
wherein the chamber includes:
a first fixing unit and a second fixing unit positioned to be spaced apart from each other and provided to fix a polycrystalline metal foil (see Figs. 1-2 and ¶[0019] which teaches that the two distal ends of the polycrystalline metal specimen (11) are secured to a mechanical device; see also ¶[0020]-[0024] which teach that the metal specimen (11) may be heated by direct resistive heating in which electrical current is passed through the specimen (11) which necessarily means that each end of the specimen is secured by an electrode which facilitates the flow of current therethrough); and
a distance adjustment unit connected to the first fixing unit, the second fixing unit, or the first fixing unit and the second fixing unit to adjust a spaced distance between the first fixing unit and the second fixing unit (see Figs. 1-2 and ¶[0019]-[0029] which teach that the mechanical device applies an initial plastic strain to the heated metal specimen (11) with ¶[0024] specifically teaching that plastic strain is generated by displacing the two ends of the metal specimen (11) which necessarily means that there is a distance adjustment unit in the form of a movable stage connected to at least one end of the metal specimen (11) which adjusts the spaced distance therebetween).
Even if it is assumed arguendo that Ciulik does not teach a chamber, this would have been obvious in view of Winter. In at least Fig. 1 and col. 4, l. 55 to col. 11, l. 31 Winter teaches an analogous system and method for recrystallizing thin strips of a material (12) by heating to produce a molten surface layer (16) with a solid core (18). The material (12) and associated heating and cooling equipment are provided within a chamber (24) which provides a controlled inert atmosphere comprised of, for example, argon gas supplied from a supply (26) via a conduit (28) and valve (30) in order to reduce the propensity for contamination. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to provide the heat sources (12a) and (12b) and metal specimen (11) utilized in the apparatus of Ciulik within a chamber in order to provide a controlled inert atmosphere which minimizes contamination of the metal specimen (11) during crystal growth.
Regarding claim 2, Ciulik teaches that the first fixing unit and the second fixing unit include a first electrode and a second electrode, respectively, to be electrified, and the metal foil heating unit is connected to the first electrode and the second electrode (see Figs. 1-2 and ¶¶[0019]-[0020] which teach that the metal specimen (11) is capable of being heated by direct resistive heating which necessarily means that each end of the metal specimen (11) is secured to a first and second electrode which facilitates the flow of electric current therethrough such that the metal specimen (11) may be uniformly heated by resistive heating; alternatively, a PHOSITA prior to the effective filing date of the invention would be motivated to provide first and second electrodes on opposite ends of the metal specimen (11) to facilitate uniform resistive heating).
Regarding claim 3, Ciulik teaches that the metal foil heating unit includes a heater separated from the first fixing unit and the second fixing unit and that is placed inside or outside the chamber (see Figs. 1-2 and ¶¶[0019]-[0020] of Ciulik which teach separate heat sources (12a) and (12b) which are capable of heating a polycrystalline metal specimen (11) which necessarily are placed either inside or outside the chamber).
Regarding claim 4, Ciulik teaches that the metal foil heating unit is heated by resistive heating (see Fig. 1 and ¶[0020] which teach that the metal specimen (11) may be heated by direct resistive heating).
Regarding claim 5, Ciulik does not teach that the metal foil heating unit further includes a cooling device. However, as noted supra with respect to the rejection of claim 1, in Fig. 1 and col. 4, l. 55 to col. 11, l. 31 Winter teaches an analogous system and method for recrystallizing thin strips of a material (12) by heating to produce a molten surface layer (16) with a solid core (18). In col. 7, ll. 32-41 Winter specifically teaches that a suitable coolant from a coolant supply (50) may be applied to the heated material (12) by a spray manifold (52) in order to control the cooling rate of the molten surface layer (16). Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to incorporate a cooling device such as the coolant supply (50) and spray manifold (52) of Winter within the crystal growth apparatus of Ciulik in order to obtain greater control over the cooling rate of the metal specimen (11) during and/or after crystal growth.
Regarding claim 7, Ciulik does not teach a pressure adjustment unit connected to the chamber. However, as noted supra with respect to the rejection of claim 1, in Fig. 1 and col. 4, l. 55 to col. 11, l. 31 Winter teaches an analogous system and method for recrystallizing thin strips of a material (12) by heating to produce a molten surface layer (16) with a solid core (18). The material (12) and associated heating and cooling equipment are provided within a chamber (24) which provides a controlled inert atmosphere comprised of, for example, argon gas supplied from a supply (26) via a conduit (28) and valve (30) in order to reduce the propensity for contamination. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to supply the apparatus of Ciulik with a gas inlet in the form of a conduit (28) which is connected to a gas supply (26) with the gas flow into the chamber and, consequently, the pressure therein being controlled by a valve (30) which acts as a pressure adjustment unit in order to provide a controlled inert atmosphere which minimizes contamination of the metal specimen (11) during crystal growth.
Claim Rejections - 35 USC § 103
Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ciulik in view of Winter and further in view of U.S. Patent Appl. Publ. No. 2013/0213536 to Hiroshi Yamashita (“Yamashita”).
Regarding claim 6, Ciulik does not teach a gas inlet injecting gas to the chamber; and a gas outlet discharging the gas from the chamber. However, as noted supra with respect to the rejection of claim 1, in Fig. 1 and col. 4, l. 55 to col. 11, l. 31 Winter teaches an analogous system and method for recrystallizing thin strips of a material (12) by heating to produce a molten surface layer (16) with a solid core (18). The material (12) and associated heating and cooling equipment are provided within a chamber (24) which provides a controlled inert atmosphere comprised of, for example, argon gas supplied from a supply (26) via a conduit (28) and valve (30) in order to reduce the propensity for contamination. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to supply the apparatus of Ciulik with a gas inlet in the form of a conduit (28) which is connected to a gas supply (26) in order to provide a controlled inert atmosphere which minimizes contamination of the metal specimen (11) during crystal growth.
Ciulik and Winter do not teach a gas outlet discharging the gas from the chamber. However, in Figs. 1-2 and ¶¶[0039]-[0066] as well as elsewhere throughout the entire reference Yamashita teaches an analogous embodiment of a vacuum furnace (1) for heat treating a metallic material in a controlled atmosphere. The furnace (1) includes, inter alia, an electric furnace (11) provided in a casing (10) with a heating element (12) which surrounds a heat treatment space (15). The furnace includes an intake port (30) for supplying a gas and an exhaust port (40) for exhausting gas. As detailed specifically in ¶[0043] the exhaust port (40) is connected to a pump via a pipe (41) and a valve (46) which allow the atmosphere inside the heat treatment space (15) to be discharged. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to provide the chamber of Ciulik and Winter with a gas outlet that discharges the gas from the chamber at a predetermined rate in order to, for example, provide greater control over the gaseous ambient within the chamber during crystal growth.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH A BRATLAND JR whose telephone number is (571)270-1604. The examiner can normally be reached Monday- Friday, 7:30 am to 4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kaj Olsen can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714
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