DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA . 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.
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, the “spice jar” (clm. 24, 35) and the “links inspired by a chain of a bicycle” (clm. 26) must be shown or the features canceled from the claims. No new matter should be entered.
The drawings are objected to because they do not include any reference signs/numbers.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the reference signs mentioned in the description.
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.
Abstract Objections
The abstract is objected to because of the following informalities: the abstract is too short and includes “The invention disclosed herein relates generally to”, which is language that can be implied.
The applicant is reminded of the proper language and format for an abstract of the disclosure:
the abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length;
the abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details;
the language should be clear and concise and should not repeat information given in the title;
it should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc.;
in addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Appropriate correction is required.
Specification Objections
The specification is objected to because of the following informalities.
In re ¶ 18: it is improper to refer to particular claim numbers within the specification. Appropriate correction is required.
Claim Objections
Claim 22, 28-29 and 39-41 are objected to because of the following informalities.
In re claim 22: a colon should be inserted after “comprising” in line 1 to remove any potential doubt as to where the preamble ends and the body of the claim begins.
In re claims 28-29 and 39: the claims would be in better form if “ground material” read as –the ground material–.
In re claim 39: there is no antecedent basis in the claim for “the need”.
In re claim 40: “activating” should be –the step of activating– since it is referring to the activating step of claim 22.
In re claim 41: the claim would be in better form if “the device of claim 1” read as –the device–.
Appropriate correction for the above list of issues is required.
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 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) 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):
(A) the claim limitation uses the term “means” 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 entirely performing the claimed function;
(B) the term “means” 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 the generic placeholder is not modified by sufficient structure for entirely performing the claimed function.
Use of the word “means” 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). The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites sufficient structure to entirely perform the recited function.
Absence of the word “means” 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). The rebuttable presumption that the claim limitation is not to be interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites a function without reciting sufficient structure to entirely perform the recited function, and when there is no evidence from the prior art that the claim limitation is a term of art known to be used to represent sufficiently definite structure.
Claim limitations in this application that use the word “means” are being interpreted under 35 U.S.C. § 112(f) except as otherwise indicated in an Office Action. Conversely, claim limitations in this application that do not use the word “means” are not being interpreted under 35 U.S.C. § 112(f) except as otherwise indicated in an Office Action.
Claim Rejections - 35 U.S.C. § 112(b)
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.
Claims 22-41 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Any claims not directly addressed are only rejected under 35 U.S.C. § 112(b) for being dependent on a rejected base claim.
In re claims 22 and 32-33: “desired” is a subjective and/or relative term that renders the claims indefinite since metes and bounds for the term have not been established. The claims are being interpreted as though the term were deleted. Further, it is unclear if the “two or more desired receptacles” in claim 32 include, or are additional to, the desired receptacle of claim 22.
In re claim 26: the scope of “inspired by” is unclear, thereby rendering the claim indefinite. The claim is being interpreted in accordance with the specification (¶ 56) as “the one or more chains comprise a bike or bicycle chain”.
In re claims 28 and 29: it is unclear if “the receptacle” is intended to be a required feature in the claims since it was merely introduced in the intended use limitation of claim 22. It is being interpreted to be required.
In re claim 33: the claim recitations “placing the starting material in the grinder portion of the device of claim 1” and “placing a desired receptacle into the reservoir portion of the device of claim 1” render the claim indefinite since a step of providing the device of claim 1 has not been set forth. Should the applicant’s intension be to rely on any structural part of the device per se, in support of patentability, then a step of providing/utilizing such device and its components must be included in the method claim.
Further, there is no antecedent basis in the claim for “the one or more cutting means”. The phrase is being interpreted as –one or more chains–, thereby providing proper antecedent basis for “the one or more chains” recited later in lines 9-10.
In re claim 38: the intended difference in scope between “uniformly” and “evenly” is unclear. They are being interpreted as having the same scope.
Further, claim limitation “vibration means” invokes 35 U.S.C. 112(f). Note that “vibration” is a function, not a structural modifier. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification at ¶ 106 recites a “vibration device”, but “device” is merely a generic placeholder. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b). The examiner suggests replacing “vibration means” with –vibrator–.
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);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, 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 and clearly links them to the function 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.
In re claim 39: it is unclear what is meant by “an additional or separate packing means” since none were previously recited in the claims. The phrase is being interpreted as –a packing means–.
In re claim 41: “the device of claim 1” renders the claim indefinite because a step of providing the device of claim 1 is not set forth in either claim 41, or claim 22 from which 41 depends. Claim 41 is being interpreted as though such a step were included in claim 22.
Appropriate correction for the above list of issues is required.
Claim Rejections - 35 U.S.C. § 103
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 22-23, 25-34, 36 and 39-41 are rejected under 35 U.S.C. § 103 as being unpatentable over Richmond et al. (US 2018/0213838), in view of Reyes et al. (US 2021/0345828).
In re claim 22: Richmond discloses a combination grinding and filling device 200 (fig. 6-9) comprising:
a grinder portion (the upper portion having hinge 152) comprising grinding means 226, 230 coupled to a motor 246 and capable of circular or rotational motion (fig. 9), wherein the grinder portion can be removably attached to a reservoir portion 110 (note that the claim does not require direct connection of the grinder portion to the reservoir portion), wherein the reservoir portion is adapted to hold a desired receptacle 120 to be filled with a ground material received from the grinder portion (see fig. 9).
Richmond does not disclose the grinder portion comprises one or more chains coupled to the motor.
Reyes is in the same field of endeavor and teaches a grinding device comprising a grinder portion having a chain coupled to a motor (abstract and fig. 2, 8). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to replace the size reducer 230 of Richmond with a chain, as taught by Reyes, because selecting from known grinding means allowing for sufficient grinding functionality would be obvious to the ordinary artisan.
In re claim 23, which depends on claim 22: Richmond discloses the receptacle 120 to be filled with ground material is a preformed cone (fig. 9, 19-21; it is formed at least when it is supported within the support 110, and then it is filled with ground material).
In re claim 25, which depends on claim 22: modified Richmond teaches the one or more chains 128 can comprise a plurality of balls 130 and chain links 132 (fig. 2, 8 and ¶¶ 90-91 of Reyes).
In re claim 26, which depends on claim 22 and is being examined as best understood: modified Richmond does not explicitly teach the one or more chains comprise links inspired by a chain of a bicycle.
However, the examiner notes that there is no criticality established within the applicant’s disclosure for the use of a chain, let alone a chain having links inspired by a chain of a bicycle (regardless of whatever scope “inspired” is supposed to impart). Fig. 11 of the drawings “depicts various blades that can be used with the invention” (see ¶ 30 of the specification). Also see ¶¶ 49-67 which describe all the different types of chains that the applicant considers acceptable and different variations of features of each type of chain. For at least these reasons, the claimed feature cannot be the basis for patentability and, accordingly, the claim is not being given patentable weight.
In re claim 27, which depends on claim 22: modified Richmond does not explicitly teach the one or more chains are between 25 mm and 125 mm.
However, both the applicant’s device and that of Richmond are handheld devices and as such it is obvious that the length of the one or more chains is constrained at least by that fact. Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Richmond in the claimed manner, since it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device does not patentably distinguish over the prior art device (MPEP § 2144.04, subsection IV.A).
In re claims 28 and 29, which depend on claims 22 and 28: modified Richmond does not explicitly teach the circular or rotational motion creates a vortex in the device that facilitates movement of ground material from the grinder portion to the receptacle in the reservoir portion and, from claim 29, wherein the vortex uniformly and evenly distributes ground material in the receptacle.
However, because modified Richmond comprises all the claimed structure it must be considered to operate in the same manner as the applicant’s claimed invention. In other words, no structure has been claimed that distinguishes the claimed invention from modified Richmond and, thus, it can reasonably be assumed that two devices having the same features will operate in the same manner.
In re claim 30, which depends on claim 22: Richmond discloses a filter portion 112 removably attached between the grinder portion (the upper portion having hinge 152) and the reservoir portion 110 (fig. 9 and ¶ 74).
In re claim 31, which depends on claim 22: Richmond discloses device is a handheld device (¶ 4).
In re claim 32, which depends on claim 22: modified Richmond does not explicitly disclose the reservoir portion is adapted to hold two or more desired receptacles.
However, Richmond discloses the receptacle is a wrapper 120 (best seen in fig. 19-21, but also in fig. 9) to be filled with smokable ground material (abstract, fig. 9), and an ordinary artisan understands that multiple wrappers can be held simultaneously within the reservoir 110 (fig. 9), at least in a stacked state (i.e., similar to how paper cups are stacked). Therefore, although not explicitly disclosed in Richmond, an obvious inference from fig. 9 and 19-21 is that the reservoir portion is capable of holding two or more desired receptacles simultaneously.
In re claim 33: Richmond discloses a method of grinding a starting material and filling a receptacle with ground material comprising:
obtaining a starting material to be ground (abstract, “smokeable material”);
placing the starting material in the grinder portion (the upper portion having hinge 152, fig. 9) of the device of claim 1;
placing a desired receptacle 120 into the reservoir portion 110 of the device of claim 1;
removably attaching the reservoir portion to the grinder portion (note that the claim does not require direct attachment);
positioning the grinder portion such that the one or more cutting means 230 contact the starting material;
activating the grinder portion (via motor 246) to cause rotational or reciprocal motion of the one or more cutting means within the grinder portion;
disengaging the reservoir portion 110 from the grinder portion; and
removing the receptacle 120 filled with ground material (fig. 9).
Richmond does not disclose the cutting means comprises one or more chains within the grinder portion.
Reyes is in the same field of endeavor and teaches a grinding device comprising a grinder portion having a chain as a cutting means coupled to a motor (abstract and fig. 2, 8). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to replace the cutting means 230 of Richmond with a chain, as taught by Reyes, because selecting from known grinding means allowing for sufficient grinding functionality would be obvious to the ordinary artisan.
In re claim 34, which depends on claim 33: Richmond discloses the receptacle 120 to be filled with ground material is a preformed cone (fig. 9, 19-21; it is formed at least when it is supported within the support 110, and then it is filled with ground material).
In re claim 36, which depends on claim 33: Richmond discloses a filter portion 112 removably attached between the grinder portion (the upper portion having hinge 152) and the reservoir portion 110, wherein the starting material is placed between the grinder portion and the filter portion (fig. 9 and ¶ 74).
In re claim 39, which depends on claim 33: Richmond discloses the receptacle is filled with ground material without the need for packing means (see fig. 9, ground material falls through the filter portion 112 and into the receptacle 120 to thereby fill the receptacle; the use of the tamper 142 is optional since it is removably secured to the filter portion 112 by, e.g., a magnet; also see ¶ 112).
In re claim 40, which depends on claim 33: modified Richmond does not explicitly teach activating the grinder portion results in grinding of the starting material and filling of the receptacle in the reservoir with ground material substantially simultaneously. However, such is an obvious inference from fig. 9 of Richmond as it can be readily deduced that the only lag between the start of grinding the material and the start of filling the receptacle 120 with ground material is the time it takes for material to fall from the filter portion 112 into the receptacle 120. And note that it is entirely possible that some of the starting material is already of a sufficient size to pass through the filter portion without even being ground, such that the filling of the receptacle begins immediately before the grinder portion is activated.
In re claim 41, which depends on claim 33: Richmond discloses device is a handheld device (¶ 4).
Claims 24 and 35 are rejected under 35 U.S.C. § 103 as being unpatentable over Richmond, in view of Reyes, and further in view of Spielman (US 2021/0100277).
In re claim 24, which depends on claim 22: modified Richmond does not teach the receptacle to be filled with ground material is a spice jar.
Spielman is in the same field of endeavor and teaches a receptacle 16 to be filled with ground material is a jar capable of storing spices (fig. 2 and ¶ 66). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to provide Richmond with a spice jar for receiving and storing the ground material thereby providing Richmond a means for storing ground material for future use, as taught by Spielman.
In re claim 35, which depends on claim 33: modified Richmond does not teach the receptacle to be filled with ground material is a spice jar.
Spielman is in the same field of endeavor and teaches a receptacle 16 to be filled with ground material is a jar capable of storing spices (fig. 2 and ¶ 66). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to provide Richmond with a spice jar for receiving and storing the ground material thereby providing Richmond a means for storing ground material for future use, as taught by Spielman.
Claims 37 and 38 are rejected under 35 U.S.C. § 103 as being unpatentable over Richmond, in view of Reyes, as evidenced by Wabnig (EP 1 479 441 A2) and Cheng et al. (CN 112 206 874 A), and further in view of Bildstein et al. (WO 2011/127500 A1).
In re claims 37 and 38, which depend on claims 33 and 37: modified Richmond does not explicitly teach the rotational or reciprocal motion of the one or more chains within the grinder portion creates a vortex in the device that facilitates movement of ground material from the grinder portion to the receptacle in the reservoir portion and, from claim 38, wherein the vortex uniformly and evenly distributes ground material in the receptacle without the need for a tamper, or blender, or mixer, or spreader, or vibration means.
However, it is well known in the particular comminuting art wherein chains are used as the comminuting means that one or more chains create a vortex within a comminuting chamber that facilitates movement of ground material, as evidenced by Wabnig (see § [0009]) and Cheng (see § [0041]).
Bildstein provides a device for producing cigarettes (title) and teaches a grinder portion that creates a vortex that facilitates movement of ground material from the grinder portion to a receptacle evenly and uniformly without the need for a tamper, or blender, or mixer, or spreader, or vibration means (§ [0003], ¶ 3; and § [0004]; although Bildstein teaches pressing a strand of tobacco with a pressing device, note that the pressing is not required to achieve even distribution of the material as the pressing comes after the even distribution has already been achieved). Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to further modify Richmond such that ground material is evenly and uniformly distributed by the vortex created in the grinder portion of Richmond, thereby ensuring the smokable products of Richmond are neither filled with too much nor too little ground material, as taught by Bildstein.
Note that if taking Spielman (US 2021/0100277) as the base reference, modifications of Spielman using the other references listed above can be made which also render each of the claims obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jared O. Brown whose telephone number is 303-297-4445. The examiner can normally be reached on Monday - Friday: 8:00 - 5:00 (Mountain Time).
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/JARED O BROWN/Primary Examiner, Art Unit 3725