Detailed Action
Amendment
1. This office action is in response to applicant’s amendments dated 8-7-25 and this office action is a non-final rejection.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
2. 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.
Regarding claim 31, applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed control device and as seen in applicant’s originally filed disclosure the control device is detailed as the apparatus 57 comprises a control unit 66 that is configured and adapted for controlling the working stations 49, 59 to 63 on the basis of the measurement data established by the measuring head 10, the control unit 66 comprising at least an evaluation unit and a storage device. The control device 15 of the measuring head 10 can be formed separately from the control unit 66 of the apparatus 57 or be part of the control unit 66, as seen in paragraph [0068] of applicant’s specification.
Regarding claims 53, 56 and 60 applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed transport device and as seen in applicant’s originally filed disclosure the transport device is detailed as the fish 12 being processed are transported from working station 49 to working stations 59 to 63 by means of the transport device 58. In the embodiment shown, two spike chains 64, 65 driven in a circulatory manner and guided around deflection and/or drive elements are preferably used as the transport device 58. The spike chains 64, 65 grip the fish 12 on both sides and hold it during the transport along the transport path. Other transport systems, belts or conveyors having corresponding holding elements for the fish 12 can also be used, as seen in paragraph [0067] of applicant’s specification.
Regarding claim 55, applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed control unit and as seen in applicant’s originally filed disclosure the control unit is detailed as the apparatus 57 comprises a control unit 66 that is configured and adapted for controlling the working stations 49, 59 to 63 on the basis of the measurement data established by the measuring head 10, the control unit 66 comprising at least an evaluation unit and a storage device. The control device 15 of the measuring head 10 can be formed separately from the control unit 66 of the apparatus 57 or be part of the control unit 66, as seen in paragraph [0068] of applicant’s specification.
Claim Rejections - 35 USC § 112
3. 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 31-60 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.
Claim 31 is 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. Applicant has invoked 35 U.S.C. 112(f) analysis with respect to the claimed control device and as seen in applicant’s originally filed disclosure the control device is detailed as the control device 15 of the measuring head 10 can be formed separately from the control unit 66 of the apparatus 57 or be part of the control unit 66 and the control unit is detailed as an evaluation unit and storage device, but the language of control device being separate from the control unit renders the claim indefinite in that it is unclear to what structure forms the control device when it is not part of the control unit.
Claims 53, 56 and 60 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. Applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed transport device and as seen in applicant’s originally filed disclosure the control device is detailed as two spike chains 64, 65 driven in a circulatory manner and guided around deflection and/or drive elements are preferably used as the transport device 58. The spike chains 64, 65 grip the fish 12 on both sides and hold it during the transport along the transport path. Other transport systems, belts or conveyors having corresponding holding elements for the fish 12 can also be used. The phrase “preferably used” renders the claims indefinite in that is unclear to whether other types of transport devices than those disclosed in applicant’s specification are being contemplated by the claims.
Claim 60 is 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. It is unclear to whether the transport device, knife assembly and measuring head detailed in claim 60 is the same or different than the transport device, knife assemblies and measuring head detailed in parent claim 56.
Allowable Subject Matter
4. Claims 31-60 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Response to Arguments
5. Regarding
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PARSLEY whose telephone number is (571)272-6890. The examiner can normally be reached Monday-Friday, 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached at (571) 272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J PARSLEY/Primary Examiner, Art Unit 3643