DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16th, 2013 is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Sheet
The information disclosure statement (IDS) submitted on 03/25/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation – 35 USC §112f
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) 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.
The following elements are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
Regarding claim 1, “feeding unit” (because A – “unit” is the placeholder/nonce term, B – “enables the materials (M) to be transmitted” designates the function, and C – no additional structure is provided in the claim body, thus “feeding unit” is understood as equivalent to “means for enabling the materials to be transmitted”). A review of the specification suggests that the corresponding structure is a peristaltic pump for liquids, flow meters for gases, as described on page 2, lines 31-34 of the specification, or equivalent.
Regarding claims 6-9, 11-12, and 14, “control unit” (because A – “unit” is the placeholder/nonce term, B – “controls the process for changing the feed rate” (claim 6), “uses a machine learning method… and simultaneously changes the input data” (claim 7), “compares… the composition data” (claim 12), and “controls individual storage” (claim 14), designates the function, and C – no additional structure is provided in the claim body, thus “control” is understood as equivalent to “means for controlling the process for changing the feed rate”). A review of the specification does not provide the requisite structure required under 35 USC 112(a). Therefore, claims 6-9, 11-12, and 14 are rejected under 35 USC 112(a) and 35 USC 112(b) outlined below.
If the 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 Objections
Claims 13 and 14 are objected to because of the following informalities:
Regarding claim 13, the claim recites “comprising a feeding unit (2)”. Claim 1 already introduces “at least one feeding unit (2)”. To properly further limit this element, the claim should be amended to read, “wherein the feeding unit (2)…”
Regarding claim 14, the claim uses the colloquial phrase “thanks to”. This is imprecise and informal patent language. It should be replaced with “by”, “via”, or “by means of”.
Appropriate correction is required.
Claim Rejections – 35 USC §112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
Claims 6-9, 11, 12, and 14 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. Specifically, the claims recite a “control unit (K)”. The term “unit” is a generic placeholder (nonce word) that fails to impart sufficient structure. The claims further recite a variety of computer-implemented functions for this unit, such as “controls the process for changing the feed rate” (claim 6), “uses a machine learning method… and simultaneously changes the input data” (claim 7), “compares… the composition data” (claim 12), and “controls individual storage” (claim 14). Because the claims recite functional language without corresponding structure, the limitation invokes 35 USC 112(f) identified above. When a claim invokes 112(f) for a computer-implemented function, the specification must disclose a specific algorithm (e.g., a flowchart, a mathematical formula, or detailed prose) to perform eh claimed function. The specification merely restates the functions of the control unit (e.g., changing feed speeds, utilizing an “ideal data reference machine learning method”, comparing data) in paragraphs [0016]-[0021] and [0078]-[0084] of the application US PG Pub document, but completely fails to disclose the algorithm, logic, or steps determining how the control unit performs these functions. Consequently, the specification fails to enable the full scope of the claims, fails to provide adequate written description, and renders the claims indefinite because the metes and bounds of the corresponding structure cannot be determined.
Claim Rejections – 35 USC §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 1-14 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 Rejection – 35 U.S.C. 112(b) (Improper Mixing of Statutory Classes)
Regarding claim 1, the claim is indefinite because it mixes two different statutory classes of invention (an apparatus and a method of using the apparatus) within a single claim, rendering it unclear whether infringement occurs when the apparatus is manufactured/sold, or only with it is operated. Specifically, claim 1 recites structural system components (a powder coating system comprising a feeding unit, plasma torch, etc.) but limits those components with active method steps of operation, namely “which enables the form of the material (M) to be converted by the atomization method” and “allows the process of coating the part (P) in the reservoir (4) to be continued while the synthesis of the material… and the separation process in the reservoir (4) to continue.”
Claim Rejection – 35 U.S.C. 112(b) (Claiming the Workpiece/Byproduct)
Regarding claim 1, the claim positively recites “a material (M),” “a powder (T),” and “at least one part (P)” as components that the claimed system comprises. Apparatus claims must be defined by their own physical structure, not by the environmental workpiece they operate upon or the byproduct they produce. Therefore, the environmental workpieces of “a material (M),” “a powder (T),” and “at least one part (P)” are being processed by the system and cannot be claimed as structural components of the machine itself. Applicant should amend the claims to recite a system “configured to” process the material/powder/part.
Regarding, claim 10 positively recites “a waste gas (G)” as a component comprised by the system. A waste byproduct cannot be a structural limitation of the claimed apparatus.
Claim Rejection – 35 U.S.C. 112(b) (Subjective Terminology)
Regarding claims 1, 5, 7, and 12, these claims utilize subjective or unbounded terminology that fails to provide objective metes and bounds. Specifically, claims 1, 4, 7, and 12 rely on the subjective intent of an end-user to define the boundaries of the claim. The phrases “predetermined by the user (claims 1, 4, 12) and “ideal data reference predefined by the user” (claim 7) do not structurally limit the apparatus. The physical structure and scope of the claim cannot be ascertained because they rely entirely on unknown, varying user preferences. Claim 1 further recites material “used in engineering applications.” This phrase is unbounded and fails to impart any specific structural or compositional limitation on the material or the system.
Claim Rejection – 35 U.S.C. 112(b) (Lack of Antecedent Basis)
Regarding claim 1, the claim recites “a plurality of reservoirs (4)” but subsequently recites “the reservoir (4)” in the singular, making it unclear which specific reservoir is being referenced. Furthermore, claim 1 recites “each chamber (4)”; however, the elements designated as (4) were previously defined as “reservoirs”, not chambers.
Further regarding claim 1, the claim recites “the atomization method” and “the coating process” without previously introducing an atomization method or a coating process.
Further regarding claim 1, the claim introduces “a vacuum unit (6)” and subsequently introduces “a vacuum unit (6)” a second time. It is unclear if the system comprises two distinct vacuum units, or if the second occurrence is referring to the first and merely lacks the proper definite article (“the”). Claim 2 exacerbates this ambiguity by reciting “a single vacuum unit (6)”.
Regarding claim 6, the claim recites “the gases (G)”, which lacks antecedent basis.
Further regarding claim 6, the claim recites “at least one composition meter (10)” twice as newly introduced elements; the second occurrence should refer back to the first (e.g., “the composition meter”).
Regarding claim 12, the claim depends on claim 10. However, claim 12 requires receiving data form “the composition meter (10)” and transferring data to “the control unit (K)”. Neither claim 10 nor its parent claim 1 recites these elements (they are introduced in claim 6). Therefore, claim 12 lacks antecedent basis for these components.
Claim Rejection – 35 U.S.C. 112(b) (Logical Contradictions & Alternative Language)
Regarding claim 2, the claim recites that “the powders (T) with larger particle sizes than the powders (T) in the first reservoir (401) are collected at the base of the first reservoir (401).” This is a logical paradox; powders located inside the first reservoir cannot be physically larger than the powders inside that same first reservoir.
Regarding claim 11, the claim uses the alternative language “that can be in different phases.” The use of optional language renders the structural boundaries of the claim indefinite, as it is unclear whether this feature is a required limitation of the system.
Claim Rejection – 35 U.S.C. 112(b) (Result of 35 U.S.C. 112(f) Interpretation)
Regarding claims 6-9, 11, 12, and 14, claim limitation “control unit” 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 specification merely restates the functions of the control unit (e.g., changing feed speeds, utilizing an “ideal data reference machine learning method”, comparing data) in paragraphs [0016]-[0021] and [0078]-[0084] of the application US PG Pub document, but completely fails to disclose the algorithm, logic, or steps determining how the control unit performs these functions. Consequently, the specification fails to enable the full scope of the claims, fails to provide adequate written description, and renders the claims indefinite because the metes and bounds of the corresponding structure cannot be determined. 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.
Allowable Subject Matter
If the above rejections under 35 USC 112(a) and 112(b) are overcome, claims 1-14 would be deemed allowable.
The following is a statement of reasons for the indication of allowable subject matter:
Marantz (US 5,808,270) and Prichard (US 5,939,151) both teach relevant aspects of a spray apparatus including elements claimed in claim 1. However, these prior arts do not specifically teach the elements outlined in claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB A SMITH whose telephone number is (571) 272-3974 and email address is Jacob.Smith@uspto.gov. The examiner can normally be reached on M-F 7:30AM - 5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571) 270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB A SMITH/Examiner, Art Unit 3731
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