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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in Application No. 18703868, filed on 4/23/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/23/2024 was filed after the filing date of the application on 4/23/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
Claims 2-9 and 11-16 are objected to because of the following informalities:
Regarding claim 2-9, “A system” should be “The system” to avoid antecedent basis issues.
Regarding claim 11-16, “A utensil” should be “The utensil” to avoid antecedent basis issues.
Appropriate correction 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 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:
“notification means” as recited in claim 7 (first, “means” is a generic placeholder for “means”; second, the generic placeholder is modified by the functional language “notification”; third, the generic placeholder is not modified by sufficient structure for performing the claimed function – e.g., the term “notification” preceding the generic placeholder describes the function, not the structure, of the means)
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 4 and 11 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.
The term “the like” in claim 4 line 3 is a relative term which renders the claim indefinite. The term “the like” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination, the limitation is treated as any area.
The term “sufficient” in claim 11 line 2 is a relative term which renders the claim indefinite. The term “sufficient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination, the limitation is treated as necessary.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10-11 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Araki (JP 2020117635 A).
Regarding claim 10, Araki teaches a utensil (see Figure 1) provided for use in an intended purpose in a secure area (can be used with in a detected gate area),
said utensil formed of a plastics or other polymeric material and in a manner to allow the same to be useable for its intended purpose (paragraph 0017 of the translation), and
said utensil further including embedded within the plastics material, a plurality of metal detectable particles and/or X-ray detectable material (paragraph 0018 of the translation), such that when an attempt is made to remove the same from the secure area, detection apparatus located at exits from the secure area will detect the presence of said utensil, in use (examiner notes that the limitation after “such that” is treated as intended function of the device, therefore “detection apparatus” is not required by the utensil, only that the utensil can be detected by a detection apparatus, paragraph 0022 of the translation of Araki).
Regarding claim 11, Araki teaches the level of metal detectable particles and/or X-ray detectable material will be sufficient so as to ensure that the utensil and a predefined size or portion of the material, is detectable by metal detection and/or X-ray detection apparatus, in use (paragraph 0018 of the translation of Araki).
Regarding claim 17, Araki teaches a set of culinary utensils:
said utensils provided for the preparation (see Figures 1, 2 and 12), serving and/or consumption of food and/or drink in a secure area (as the secure area is not required by the device, only that the device can be used in the secure area, see Figure 1);
said utensils formed of a plastics or other polymeric material and in a manner to allow the same to be useable for their intended purpose (paragraph 0017 of the translation;
said utensils further including embedded within the plastics material, a plurality of metal detectable particles and/or X-ray detectable material (paragraph 0018 of the translation,
arranged such that when an attempt is made to remove the same from the secure area, detection apparatus located at entrances and/or exits from the secure area will detect the presence of said utensils (examiner notes that the limitation after “such that” is treated as intended function of the device, therefore “detection apparatus” is not required by the utensil, only that the utensil can be detected by a detection apparatus, paragraph 0022 of the translation of Araki).
Claim Rejections - 35 USC § 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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Araki (JP 2020117635 A) in view of Caulfield (US 20050052948 A1).
Regarding claim 1, Araki teaches an item (Figure 1ab) or items that is detectable from a sensor,
one or more items, said items provided to be formed of a plastics or other polymeric material (paragraph 0017 of the translation);
said item or items further including a plurality of metal detectable particles and/or X-ray detectable material embedded within the plastics material (paragraph 0018 of the translation).
Araki fails to teach a system for detecting the removal of an item or items from a secure area, said system including: said system including: a secure area in which said item or items are located; one or more entrances to and/or exits from said secure area; detection or sensor apparatus located at the one or more entrances to and/or exits of said secure area, arranged to detect or sense the passage of metal detectable particles and/or X-ray detectable material therethrough, in use.
Caulfield teach a system for detecting the removal of an item or items from a secure area (see Figure 2), said system including: said system including: a secure area in which said item or items are located; one or more entrances to and/or exits from said secure area (paragraph 0086, see Figure 2); detection or sensor apparatus (13d) located at the one or more entrances to and/or exits of said secure area (see Figure 2), arranged to detect or sense the passage of metal detectable particles and/or X-ray detectable material therethrough, in use (paragraph 0086-0087, see Figure 2).
It would have been obvious to one of ordinary skill in the art to modify the system of Araki to use the metal detectable device of Araki to be used in the secure area, as taught by Caulfield, in order to provide a save zone (abstract of Caulfield).
Regarding claim 2, modified Araki further teaches when an attempt is made to remove the item or items from the secure area, the said detection or sensor apparatus located at the entrances and/or exits from the secure area will detect their presence, in use (as modified, paragraph 0005 of Caulfield).
Regarding claim 3, modified Araki further teaches said item or items are formed as utensils to be used during the preparation, serving and/or consumption of food and/or drink within the secure area (see Figure 1 of Araki).
Regarding claim 4, modified Araki further teaches said secure arca is provided to be a canteen, dining area, workshop or specific room or rooms in which said item or items may be required to be utilised or the like within a prison, jail, penitentiary, or other such restricted location (as modified, paragraph 0075 of Caulfield).
Regarding claim 5, modified Araki further teaches said secure area is provided to be within an airport location after the point where standard security checks are carried out (as modified, abstract of Caulfield).
Regarding claim 6, modified Araki further teaches said metal detectable particles and/or X-ray detectable material is embedded throughout the item or items such that after any attempt to shave, snap, cut, sharpen, reshape or otherwise alter the shape, size or appearance of the item or items, the said metal detectable particles and/or X-ray detectable material will remain present within the altered item or items, and thus be detectable by the detection or sensor apparatus, in use (paragraph 0018 of the translation of Araki).
Regarding claim 7, modified Araki further teaches notification means are provided associated with said detection or sensor apparatus (as modified, paragraph 0005 of Caulfield).
Regarding claim 8, modified Araki further teaches in use, as an item or items comprising the metal detectable particles and/or X-ray detectable material is attempted to be taken from the secure area, said item or items will be detected and the apparatus will notify security personnel of the detection, enabling them to prevent or deter the removal of the item from the secure area (as modified, paragraph 0005 of Caulfield).
Regarding claim 9, modified Araki further teaches the detection or sensor apparatus used to attempt to detect said utensils or portions thereof, will be known and have known detection parameters such that only utensils which are known to be detectable by said apparatus will be made available in the secure area and thereby ensure that the utensils or portions thereof are detected by the detection apparatus which is in use at that time, in use (as modified, paragraph 0005 of Caulfield).
Claims 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Araki (JP 2020117635 A) in view of Boury (US 20090087491 A1).
Regarding claims 12-13, Araki teaches all elements of the current invention as set forth in claim 10 above.
Araki fails to teach the metal particles which are used are ferrous metals or metal-compounds (as required by 12), said ferrous metals or metal compounds may include iron oxide derivatives (as required by claim 13).
Boury teaches using iron oxide as x-ray detectable material (paragraph 0125 and 0061).
It would have been obvious to one of ordinary skill in the art to modify the system of Araki to use the iron oxide as the detectable material, as taught by Boury, in order to provide a suitable x-ray detectable material (paragraph 0125 and 0061 of Boury).
Regarding claim 14, Araki teaches all elements of the current invention as set forth in claim 10 above.
Araki fails to teach said metal-detectable particles are provided as particles of magnetite (Fe₂O₃).
Boury teaches using magnetite (Fe₂O₃)as x-ray detectable material (paragraph 0125 and 0061).
It would have been obvious to one of ordinary skill in the art to modify the system of Araki to use the magnetite (Fe₂O₃) as the detectable material, as taught by Boury, in order to provide a suitable x-ray detectable material (paragraph 0125 and 0061 of Boury).
Regarding claim 15, Araki teaches all elements of the current invention as set forth in claim 10 above.
Araki fails to teach said X-ray detectable material is provided from iodine or barium derivatives.
Boury teaches using barium as x-ray detectable material (paragraph 0125 and 0061).
It would have been obvious to one of ordinary skill in the art to modify the system of Araki to use the barium as the detectable material, as taught by Boury, in order to provide a suitable x-ray detectable material (paragraph 0125 and 0061 of Boury).
Regarding claim 16, Araki teaches all elements of the current invention as set forth in claim 10 above.
Araki fails to teach said X-ray detectable material is barium sulphate (BaSO₄).
Boury teaches using barium sulphate (BaSO₄) as x-ray detectable material (paragraph 0125 and 0061).
It would have been obvious to one of ordinary skill in the art to modify the system of Araki to use the barium sulphate (BaSO₄) as the detectable material, as taught by Boury, in order to provide a suitable x-ray detectable material (paragraph 0125 and 0061 of Boury).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIANG DONG whose telephone number is (571)270-0479. The examiner can normally be reached Monday - Thursday 8 AM-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashley Boyer can be reached at 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIANG DONG/Examiner, Art Unit 3724 1/01/2026