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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: (R) (D). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. The specification appears to be a literal translation. Applicant’s assistance in correcting grammatical and idiomatic errors is requested.
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 1-4 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In the instant case, at least (F), (G), and (H) are not met by the specification. The specification fails to shed light as to how this invention works in a toilet, and the drawings fail to illustrate how the invention would be installed and function in or around a toilet tank. For example, when reading the disclosure, the following paragraph does not give sufficient direction, working examples, or clear guidance on how to make or use the invention. “At the top of the main body 1, inside it is mounted a cylindrical protection 4, fixed, making common body with the main body 1. Protection 4 has an identical profile to a movable shutter 3 of the air circuit, which is arranged in the middle of the main body 1. Cylindrical protection 4 prevents the flow of water from the R tank pressing on the 3 movable shutter and moving it down, along with the entire water actuator, which would stop the water leakage circuit from the R water tank. In the middle part of the main body 1 are made several radially located windows, for the passage of the foul air and its exit on the ventilation circuit. The radial windows a have a height lower than that of the movable shutter 3, the secondary body 2 being fixed in front of them to the outside. It will allow to extract the foul air through all windows a, radially, so that the resultant of the radial depressive forces acting on the 3 slide is null and the movable shutter is mobile, functioning without friction with the walls of the main body 1.” It is unclear to the Examiner what some of these elements actually are, and furthermore how they would work together to ventilate a toilet and perform the recited functions? For example, “a cylindrical protection,” “a movable shutter,” and “a T-square” are not art recognized terms in the field of toilet ventilation, and neither the written description nor the drawings provide sufficient support for detailing what these parts are and how they operate within the system. An exhaust circuit has not been clearly defined; it is unclear what a “water leakage circuit” entails, and how and when the “shutter” moves, and for what purpose? Furthermore, the portion describing the float (9) and counterweight (10) is also non-enabling, and although toilets in general are known to have floats, counterweights, or pulleys to operate various elements within the toilet, it is unclear how and where these elements exist in the invention to perform the recited functions, and additionally what their role is during the ventilation or flushing process.
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 1-4 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 claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. The narrative nature of the claims makes it impossible to determine when and where infringement would occur. Some specific examples in claim 1:
the phrase “a ventilation tube for exhausting of the foul air driven by a fan, wherein a ventilation device for the cavity of the toilet, mounted between the water tank and the water drain pipe, or inserted into the water drain pipe, consists of:” makes it unclear what is being further defined by the “consists of” phrase. Is it the ventilation tube or the ventilation device?
The phrase “a main body of cylindrical shape centered in a secondary body, wherein in a middle area of the main body there are made some radial windows through which the foul air from the toilet vessel is exhausted through the secondary body outwards” is narrative, confusing, and it is unclear how the structure performs the recited functions.
The phrase “inside the main body at an upper part a fixed cylindrical protection is mounted, under which is arranged a movable shutter of an air circuit is connected by a threaded rod and nuts by a stopper placed at a top of a float, and in the upper part of the air circuit there is arranged a T-square with an access lid for periodic cleaning of the foul air circuit” is narrative, confusing, and it is unclear how the structure performs the recited functions.
Regarding claim 2, it is unclear how a counterweight is arranged to prevent leakage of water and what the phrase “by the flap arm of the drain system flap” is referring to?
Regarding claim 3, it is unclear how a pulley prevents leakage of water from the tank, and what the phrase “over the pulleys is fixed a thread having a counterweight at one end, thread which is fixed at the opposite end of the float by a support and an end-piece” is referring to?
Regarding claim 4, it is unclear what ventilation-cooling windows are in light of the specification, and how spacer rings perform the recited function of “better ventilation of the van housing”?
The claims are replete with antecedent basis issues. See MPEP 2173.05(e) for a discussion of how to avoid antecedent basis issues, particularly when introducing a feature for the first time. Some examples in claim 1 include:
the toilet, line 1
the foul air, line 3
the cavity, line 4
the water tank, line 5
the water drain pipe, line 5
the middle area, line 7-8
the toilet vessel, line 9
its upper part, line 11
the upper part of the air circuit, line 17
the foul air circuit, line 18
the air exhaust circuit, line 18
Some examples in claim 2 include:
the flap arm, line 3
the drain system flap, line 3
Some examples in claim 3 include:
the support, line 3
the wall, line 3
Some examples in claim 4 include:
the end, line 4
The Examiner requests Applicant’s assistance in correcting all antecedent basis issues.
Claims 2-4 are indefinite because the scope of the claims is unclear. Claim 1 uses the transitional phrase “consisting of” which excludes any element, step, or ingredient not specified in the claim (see MPEP 2111.03, II). Claims 2-4 depend from claim 1 and recite additional elements not specified in claim 1: a counterweight, a flap arm, a pulley, a support, the wall of the water tank, and a thread having a counterweight, ventilation cooling windows, and spacer rings. Accordingly, the claim is indefinite because additional elements cannot be excluded from claim 1 through the use of the “consisting of” transitional phrase but then later added as part of the invention in dependent claims. Examiner recommends changing the preamble to “comprising” to address this inconsistency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. As best understood, US Patent Application Publication 2017/0198465 is considered pertinent to Applicant’s inventive concept; the prior art shows a ventilation system (100) mounted in a toilet tank with a fan (102) with radial slits, an air admittance valve (103) mounted to the top of an intake pipe (101) for exhausting air through the toilet bowl. US Patent Application Publication 2009/0126089 is similarly considered pertinent to Applicant’s invention concept as best understood: the prior art shows a ventilation system with a collar (36) that has a cylindrical main body (46), protection rings (52, 48), a secondary housing (80), and a plurality of radial windows (49) in the main housing for exhausting air from a toilet bowl connected to an exhaust fan (60).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANIE M LOEPPKE whose telephone number is (571)270-5208. The examiner can normally be reached M-F 9AM-5PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Angwin can be reached at (571) 270-3735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANIE M LOEPPKE/Primary Examiner, Art Unit 3754