DETAILED ACTION
Application Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is in response to Applicant’s submission dated 07/27/2026. Claim(s) 1–17 are pending.
Election/Restrictions
Claims 4, 6–14, & 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim at this time.
Applicant's election with traverse of Group I, claims 1–3, 5, 15, & 17 in the reply filed on 07/27/2026 is acknowledged. The traversal is on the ground(s) that claims 1 & 17 serve as linking claims because they appear in each of the seven groups (Groups I–VII). This is not found persuasive because the MPEP requires that a linking claim be allowable. As previously discussed in the PCT Search Report and as discussed in greater detail below, claims 1 & 17 are not allowable in their present form. Should claims 1 & 17 be amended to become allowable, the restriction requirement will be reevaluated and rejoinder of the non-elected claims is likely.
Applicant also argues that unity of invention is present in the claims because claims 1 & 17 are allowable. As discussed above, and below in greater detail, claims 1 & 17 are not presently allowable.
The requirement is still deemed proper and is therefore made FINAL.
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:
“a manufacturing system for manufacturing the cans using thermal energy and/or electrical energy” in claim 1 (and its equivalent in claim 17), which has been interpreted to mean “a can interior drying device (IBO) and a can cleaning device;”
“an energy generation device for generating electrical and thermal energy” in claim 1 (and its equivalent in claim 17), which has been interpreted to mean “a heat engine and a generator;” and
“a heating unit for tempering the energy carrier to increase the thermal energy” in claim 5, which has been interpreted to mean “a heating coil”.
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.
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 1–3, 5, & 15 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. Specifically, claim 1 states that “the efficiency of the manufacturing system is increased,” but it is unclear how. It appears that Applicant is claiming an energy production device that produces both heat and electricity, but engines that produce both electricity and heat are old and well-known (an automobile engine supplies both thermal energy to the ventilation system and electricity through the alternator, for instance). It is unclear how efficiency is being increased when it is known to recover both heat and electricity from engines. In other words, the claims seems to simply claim supplying energy to a manufacturing process with an intended purpose being increased efficiency without disclosing any means by which efficiency is increased. Appropriate action is necessary.
Claim 15 is separately 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. The claim recites the limitation "the heat engine" in line 1. There is insufficient antecedent basis for this limitation in the claim. Appropriate action is necessary.
Claim Rejections - 35 USC § 103
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 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.
Claims 1–3, 5, 15, & 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0014406 to Weschke et al in view of Official Notice.
With regard to claim 1 & 17, Weschke discloses a production system capable of manufacturing metal cans and its associated method of use (abstract; “metallic workpieces”), the system comprising: a manufacturing system using thermal energy and/or electrical energy (¶¶ 0011–0012, 0031–0032, 0039); an energy generation device (25) for generating electrical energy and thermal energy (¶¶ 0031, 0039); and the manufacturing system being thermally and electrically coupled to the energy generation device (25) in order to provide thermal energy and electrical energy to the manufacturing system so that the efficiency of the manufacturing system is increased (¶¶ 0011–0012, 0031–0032, 0039).
Weschke fails to explicitly disclose manufacturing cans. However, the manufacture of cans is very old and well-known in the art. As such, it would have been obvious to one of ordinary skill in the art at the time the application was filed to the use the same components and methods of Weschke and apply them to the manufacture of cans.
With regard to claim 2, Weschke further discloses the energy generation device comprises a heat engine (25) arranged to provide the thermal energy and a generator (45) arranged to provide the electrical energy (¶¶ 0011–0012, 0031–0032, 0039).
With regard to claim 3, Weschke further discloses the energy generation device (25) has a power of between 0.1 MW and 10 MW (¶ 0008).
With regard to claim 5, Weschke further discloses the energy generation device has a heating unit for tempering the energy carrier to increase the thermal energy (¶¶ 0014, 0043).
With regard to claim 15, Weschke further discloses the heat engine is designed to be operated with hydrogen and/or biogas (¶ 0010; “methane”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: see attached PTO-892. Applicant is encouraged to review the cited references prior to submitting a response to this office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J LAUX whose telephone number is (571)270-7619. The examiner can normally be reached 8:30-5:30 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, Helena Kosanovic can be reached at (571) 272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J LAUX/Primary Examiner, Art Unit 3762
August 17, 2026
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