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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
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.
Claim limitation “casing housing means” in claim 11 invokes 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 performing the entire claimed function and to clearly link the structure, material, or acts to the function. The phrase only appears in para 10 of the specification and it isn’t clear what structure corresponds to this structure. Similarly, “monitoring means” in claim 11 is only described as “for managing the measured parameters”. Figure 9 only shows monitoring means 9 as a rectangle. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
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;
(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.
Claims 11-19 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.
Many limitations are inconsistently named and/or lack antecedent basis. While the examiner could understand the invention as a whole, for purposes of doing a prior art search, the scope of many limitations are unclear.
In claim 11, line 6 “the casing” lacks antecedent basis. Line 1 recites “a casing housing means”. “a casing housing means” only appears in para 10 of applicant’s specification. “a casing housing means for analyzing the liquid medium for measuring physico-chemical parameters” isn’t clear because the specification shows analysis means 8 as the element that is “measuring physico-chemical parameters” of the water. It isn’t clear if “a casing housing means” is intended to just be “a casing” corresponding to casing 2 in para 38 and figure 8 or if it also encompasses the “analysis means”.
Claim 11, line 3 recites “monitoring means for managing the measured parameters”. “the measured parameters” lacks antecedent basis and should possibly be --the measured physico-chemical parameters”. The metes and bounds of the monitoring means isn’t clear. There is no corresponding structure described in the claims and the figures only shows the element as a rectangle. Would a metal wire that transfers a measured output directly to the communication means count as “monitoring means”?
In claim 11, line 4, “the analysis means” lacks antecedent basis. Since lines 1 and 2 describe the “casing housing means” as performing the analysis, it isn’t clear if “the analysis means” is intended to be a subcomponent of “the casing housing means” or if “the analysis means” is performing some additional analysis.
Claim 13, line 2 recites “the photovoltaic panel”, while claim 11, line 4 recites “at least one photovoltaic panel”. Either claim 11 needs to be changed to recite a single panel or claim 13 needs to be clarified if it refers to at least one panel.
Allowable Subject Matter
Claim 11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The examiner’s position can best be understood through a comparison with the closest prior art references.
There are many free-floating liquid analysis devices that has photovoltaic panels on top, such as U.S. Publication No. 2019/0136557 and U.S. Publication No. 2019/0257807 but none disclose “the casing comprising a gripping member which is arranged in a U-like fashion and which delimits a space capable of receiving one end of a protective flap, wherein the gripping member comprises a constituent first wall of a first sealed portion, a constituent second wall of a second immersed portion comprising a base provided with a plurality of apertures and housing the analysis means, and a third wall provided with a flap stop arranged so as to receive the end of the protective flap”. Since the “protective flap” isn’t a positively recited element of claim 11, one could argue that U.S. Patent No. 11,345,611 teaches this limitation in figure 1, except that it would not be reasonable to modify this reference to have an underwater photovoltaic panel on its top surface.
The closest prior art is WO 2019186186. This shows a similar liquid analysis device that is built into the pool cover [fig 4, solar panel 50, connected to sensor 308]. It wouldn’t be reasonable to modify this reference that is integrated into pool cover to have the gripping member as claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX T DEVITO whose telephone number is (571)270-7551. The examiner can normally be reached 12pm- 8 pm EST M-S.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Breene can be reached at 571-272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX T DEVITO/Examiner, Art Unit 2855
/JOHN E BREENE/Supervisory Patent Examiner, Art Unit 2855
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