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 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 1-3, 5-14, and 16-25 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.
Independent claims 1 and 12 each recite the newly added limitation “wherein adjusting the operation comprises: activating ACTs in a staged sequence based on spatial grouping within the ASRS; and preventing ACTs located adjacent to each other from simultaneously operating in a pulldown-state, such that formation of a column of hot exhaust air or thermal plume generated by the ACTs is reduced.” However, there is no support for this limitation in the original disclosure. While the original specification does mention preventing “mass turn-on of a cluster of ACTs physically close together,” the newly added claimed subject matter is substantially narrower in scope and not supported by the original disclosure, and thus constitutes 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 3, 7, 10, 14, 18, and 21 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.
Claims 3 and 14 each recites “turning off the one or more… in an ordered method….” It is unclear how the option of “one” ACT alone can be controlled “in an ordered method.” For purposes of examination, in the case where only one ACT is turned off, such single turn off is considered simply an ordered method of one.
Claim 7 recites the limitation "the goods" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. Again, the term “the” should be removed from the limitation.
Claim 10 recites the limitation "the ACTs that are empty" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. Again, the term “the” should be removed from the limitation.
Claim 18 recites the limitation "the goods" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. Again, the term “the” should be removed from the limitation.
Claim 21 recites the limitation "the ACTs that are empty" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. Again, the term “the” should be removed from the limitation.
Allowable Subject Matter
Due to the new matter issues described above under 35 U.S.C. 112(a), there is no allowable subject matter. However, it is noted that the newly added limitations to independent claims 1 and 12 would overcome the prior art rejection of record.
Response to Arguments
Applicant’s amendments to claim 1 and 12 overcome the previously rejections under 35 U.S.C. 112(a) and (b) regarding those claims as set forth in the previous Office Action. However, those claims remain rejected due to the new matter issues discussed above. Applicant failed to address the rejections under 35 U.S.C. 112(b) regarding claims 3, 7, 10, 14, 18, and 21. Accordingly, those rejections are maintained as set forth 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC E NORMAN whose telephone number is (571)272-4812. The examiner can normally be reached 8:00-4:30 M-F.
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, Frantz Jules can be reached at 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC E NORMAN/Primary Examiner, Art Unit 3763
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