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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on 05/14/2026 is acknowledged. Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Claims 1-10 are currently examined on the merits.
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.
Use of the word “means” (or “step for” or a generic placeholder) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The word “means” may be substituted by a term that serves as a generic placeholder and still invoke 112(f) paragraph. The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for” or a generic placeholder) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for” or a generic placeholder) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
Claim 1 recites “a transport device” limitation which has been analyzed under 35 U.S.C. 112(f), because they use the non-structural terms “transport device” coupled with functional language “transports the metal compound and the flux or a metal oxide”. However, per the specification, the “transport device” has no corresponding description of the structural elements associated with it.
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 1-10 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 1 recites “a transport device”, but there is no corresponding structure in the specification could be identified as the “transport device”. Claim elements “a transport device” are limitations that invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. Therefore, the metes and bounds of claim 1 are not clearly defined. Claims 2-10 are rejected because they depend on claim 1.
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, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function 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 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.
The term “closer” in claims 1-3 is a relative term which renders the claim indefinite. The term “closer” 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.
Claim Rejections - 35 USC § 103
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.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kamei et al (US 20200180971 A1, “Kamei”), and further in view of Funahashi et al (US 5096685 A, “Funahashi”).
Regarding claim 1, Kamei teaches a device for manufacturing a metal oxide by flux evaporation method, the device comprising a firing furnace 2 that fires a metal compound in presence of a flux (figs 1-3, abstract, 0019-0030, 0083, 0084); one or more gas inlet ports (a first gas inlet) that is disposed in any position (closer to a first end) of the firing furnace and introduces gas into the firing furnace (0019, 0034-0039, 0061-0065); one or more gas outlet ports (a gas outlet) that is disposed a face opposing position where the gas inlet port is provided (closer to a second end) of the firing furnace and discharges gas inside the firing furnace to outside (0019, 0031-0033, 0039, 0057-0060, 0083, 0084); and blowing means (a transport device) that is placed inside the firing furnace and transports the metal compound and the flux or a metal oxide obtained through reaction therebetween from a point closer to one of the first gas inlet (gas inlet port) or the gas outlet (gas outlet port) to a point closer to the other (0023, 0044-0049, 0139), wherein the firing furnace has a heat dissipating section/cooling mechanism (cooling region) (0070-0076), and an elevated temperature/vaporizing/ reaction position/heat receiving section (heading/reaction region) in which the metal compound and the flux react (0003, 0023, 0074, 0135-0140); and with use of airflow generated by the gas introduced through the first gas inlet, the flux vaporized in the reaction region is converted into powder in the heating region or the cooling region, and gas containing the powder of the flux is delivered to the gas outlet (abstract, 0009, 0017, 0019, 0020, 0035-0037, 0051, 0052, 0062, 0073, 0076, 0083-0087, 0109, 0189, 0190).
Kamei teaches the inlet disposed in a face opposing position, the firing furnace having a cooling region and a reaction/heat region as addressed above, and further teaches that the positions of the one or more gas inlet port is not limited and the one or more gas inlet port may be positioned in any position (0039), the positions of the one or more gas outlet port is not limited and the one or more outlet ports is not particular limited and may be positioned any of side portion, upper portion, bottom portion (0033). Therefore, it is reasonably expected that the heating region of Kamei is capable of “being defined closer to one of the gas outlet or the first gas inlet,” the cooling region of Kamei is capable of “being defined closer to the other of the gas outlet or the first gas inlet,” and the reaction region of Kamei is capable of “being defined between the heating region and the cooling region, in which temperature is higher than in both of the heating region and the cooling region” since the positions of the gas inlet port and the gas outlet port can be positioned in any position. Kamei does not explicitly teach the reaction region is between the heating region and the cooling region, in which the temperature is high than in both of the heating region. However, Funahashi teaches a furnace of making metal oxide, wherein the furnace a pre-heating chamber/zone (heating region) defined closer to a gas inlet, a cooling chamber/zone (cooling region) defined closer to an exhaust port (gas outlet), and a reaction chamber (reaction region) that is defined between the heating region and the cooling region, in which temperature is higher than in both of the heating region and the cooling region, and in which a metal compound and a flux/gas react (figs 4-9, col 9 line 56 to col 16 line15). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Kamei per teachings of Funahashi in order to effectively produce a large amount of oxide power (Funahashi col 1 line 65 to col 2 line 2). The court has also held that the configuration of the claimed apparatus is a matter of choice, which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus is significant, as per In re Dailey, 357 F. 2d 669,149 USPQ 47 (CCPA 1966). Also, it is well established that a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114.
Regarding claims 2 and 3, Kamei/Funahashi teaches that the heating region is defined closer to the gas inlet, and the cooling region is defined closer to the gas outlet as recited in the instant claim 1 above, e.g., the criticality of the claimed the heating region being defined closer to the gas outlet, and the cooling region being defined closer to the first gas inlet is not currently established. Kamei/Funahashi also teaches that the positions of the gas inlet port and the gas outlet port can be positioned in any position as addressed above. The court held that the configuration of the claimed apparatus is a matter of choice, which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus is significant, as per In re Dailey, 357 F. 2d 669,149 USPQ 47 (CCPA 1966). It has also previously been held that the mere rearrangement of parts without modifying the operation of a device is prima facie obvious. See, e.g., In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); see also MPEP 2144.04(VI)(C). Kamei/Funahashi further the flux vaporized in the reaction region is converted into powder in the heating region (Kamei abstract, 0009, 0017, 0019, 0020, 0035-0037, 0051, 0052, 0062, 0073, 0076, 0083-0087, 0109, 0189, 0190; Funahashi col 9 line 56 to col 16 line15).
Kamei/Funahashi teaches the gas inlet/outlet ports, the airflow, the transport device, the cooling region, the reaction region, the heating region and gas inlet/outlet ports being positioned any position as addressed above, therefore it is it is reasonably expected that the apparatus of Kamei/Funahashi is capable of performing the instantly claimed “the airflow being countercurrent with respect to a direction of transport by the transport device and passing through the cooling region, the reaction region, and the heating region in this order” and “the airflow being co-current with respect to a direction of transport by the transport device and passing through the heating region, the reaction region, and the cooling region in this order”. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 4, Kamei/Funahashi teaches that the flux obtained from the metal compound, the flux being transported by the transport device and as addressed above, and gas inlet/outlet ports being positioned any position as addressed above, therefore it is it is reasonably expected that the apparatus of Kamei/Funahashi is capable of performing the instantly claimed “a vapor of the flux obtained from the metal compound and the flux located upstream of the reaction region with respect to the direction of transport, out of the metal compound and the flux transported by the transport device, is supplied to the metal compound and the flux located downstream of the reaction region.” A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 5, Kamei/Funahashi teaches that at least two gas inlet ports (a second gas inlet) that is disposed at the cooling region in the firing furnace and supplies gas to the airflow that passes through the cooling region (Kamei 0034-0035, 0061-0062; Funahashi figs 4 and 6). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 6, Kamei/Funahashi teaches that the gas outlet includes a pipe/duct (main duct) through which the gas inside the firing furnace is discharged out of the furnace and at least two gas inlet ports (third gas inlet) that is provided to the main duct and through which gas is supplied from outside to the gas containing the powder of the flux that flows through the main duct (Kamei 0057-0060; Funahashi figs 4-9, col 9 line 56 to col 16 line15). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 7, Kamei/Funahashi teaches that the firing furnace includes an anticorrosive heat insulator attached to an inner surface of the firing furnace (Kamei 0055, 0056, 0107; Funahashi col 10 lines 28-36 and col 11 lines 7-18). Further, it is well-established that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also see MPEP 2144.07.
Regarding claim 8, Kamei/Funahashi teaches that a collection device that is coupled to the gas outlet and collects the powder of the flux contained in the gas (Kamei 0019-0020, 0083-0090, 0097, 0188-0190; Funahashi abstract, col 2 lines 45-59, col 3 lines 1-57, col 4 lines 3-48, col 5 line 46 to col 6 line 55, col 11 lines 33-61, col 12 line 60 to col 16 line 11). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 9, Kamei/Funahashi teaches that the collection device includes a dust collector that collects the powder of the flux (Kamei 0019-0020, 0083-0090, 0097, 0188-0190; Funahashi abstract, col 2 lines 45-59, col 3 lines 1-57, col 4 lines 3-48, col 5 line 46 to col 6 line 55, col 11 lines 33-61, col 12 line 60 to col 16 line 11). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 10, Kamei/Funahashi teaches that the collection device further includes a cyclone/filter (classifier) that is disposed between the gas outlet and the dust collector and classifies the powder of the flux (Kamei 0087, 0089, 0190; Funahashi col 12 line 67 to col 13 line 2, col 13 line 55 to col 14 line 2). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hua Qi whose telephone number is (571)272-3193. The examiner can normally be reached 9am-6pm.
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/HUA QI/ Primary Examiner, Art Unit 1714
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