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, 2 and 4-13 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 new limitation in independent claim 1 “a first bevel wheel connected to the respective support in a rotating manner about the respective vertical axis” is new matter. One skilled in the art would understand the application as filed, including the drawings, as not describing the first bevel wheel (25) to be rotatable above the vertical axis. Instead, it would be understood that the support (30) and toothed wheel (22) rotate relative to the stationary first bevel wheel. For the invention to be operational, it is essential that first bevel wheel (25) is fixed. Only by the first bevel wheel (25) being fixed is the second bevel wheel forced to rotate as the support (30) rotates. Dependent claims 2 and 4-13 fall with claim 1 concerning this issue.
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 7, 8, 12 and 13 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. In claim 7, “a second conical wheel” is confusing because in the specification and drawing the second conical wheel is the same as the second bevel wheel (26), which is already required in independent claim 1, from which claim 7 depends. Reciting a second conical wheel as if it were an additional element is confusing. Claims 8, 12 and 13 fall with claim 7 concerning this issue.
Claim Rejections - 35 USC § 101
Claims 1, 2 and 4-13 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility. Specifically, the new recitation in independent claim 1 “a first bevel wheel connected to the respective support in a rotating manner about the respective vertical axis” causes the claims to recite an inoperative invention. For the invention to be operational, it is essential that first bevel wheel (25) is fixed. Only by the first bevel wheel (25) being fixed is the second bevel wheel forced to rotate as the support (30) rotates. Dependent claims 2 and 4-13 fall with claim 1 concerning this issue.
Response to Arguments
Applicant correctly points out that in Schulz “Rotation of the holder about spin axis 14 is
produced through stationary bevel ring gear 30 and pinion gear 32”. Applicant has distinguished claim 1 over this stationary bevel gear aspect of Schulz by reciting “a first bevel wheel connected to the respective support in a rotating manner about the respective vertical axis”. However, were applicant’s first bevel wheel (25) rotatable about the vertical axis, the rotation of the support would not force the second bevel gear to rotate about the inclined access. In summary, applicant has overcome Schulz by limiting the claimed invention to an inoperable device.
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 DAVID L SORKIN whose telephone number is (571)272-1148. The examiner can normally be reached 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire X Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID L. SORKIN
Examiner
Art Unit 1774
/DAVID L SORKIN/Primary Examiner, Art Unit 1774
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