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 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:
“the submerged burner (F) and the electric heater (E) are configured such that, of the energy used to heat and melt material, 50% or more and preferably 70% - 80% comes from the electric heater, and less than 50% and preferably 70%-80% comes from the electric heater, and less than 50% and preferably less than 20% comes from the submerged burner.” in claim 19. For the purpose of this examination any submerged burner or electric heater is considered a structural equivalent configured.
“the submerged burner (F) and the electric heater (E) are configured such that, of the energy used to heat and melt material, 50% or more and preferably 70% - 80% comes from the electric heater (E), and less than 50% and preferably 70%-80% comes from the electric heater, and less than 50% and preferably less than 20% comes from the submerged burner.” in claim 20. For the purpose of this examination any submerged burner or electric heater is considered a structural equivalent configured.
“The melting device as claimed in claim 19, characterized in that the melting device further comprises a burner (R) disposed above a surface (S) of a material melt, the burner being configured to supply a portion of the energy used to heat and melt material other than energy supplied by the submerged burner (F) and the electric heater (E), said portion being 10% for example” in claim 21 For the purpose of this examination any submerged burner or electric heater is considered a structural equivalent configured.
“The melting device of claim 16, wherein the submerged burner (F) is configured such that fuel and oxidant supplied thereto are split into a first portion supplied continuously and a second portion supplied intermittently, a flow rate of the first portion being less than a flow rate of the second portion, and preferably, a ratio of flow rates of the first portion and the second portion being adjustable, and/or a supply frequency and/or supply duration of the second portion being adjustable.” In claim 22.
For the purpose of this examination a submerged burner with fuel and oxidant supplied separately is considered a structural equivalent.
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.
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.
Claim 19 is rejected as indefinite because it recites, wherein the submerged burner (F) and the electric heater (E) are configured such that, of the energy used to heat and melt material, 50% or more and preferably 70% - 80% comes from the electric heater, and less than 50% and preferably less than 20% comes from the submerged burner.
This is indefinite because the phrase "such that" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 19 recites the broad recitation 50% or more…comes from the electric heater, and the claim also recites and preferably 70% - 80% comes from the electric heater which is the narrower statement of the range/limitation. claim 19 also recites the broad recitation 50% or more…comes from the electric heater, and the claim also recites the broad limitation less than 50%...comes from the submerged burner and preferably less than 20% comes from the submerged burner which is the narrower statement of the range/limitation.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 20 is rejected as indefinite because it recites, wherein the submerged burner (F) and the electric heater (E) are configured such that, of the energy used to heat and melt material, 50% or more and preferably 70% - 80% comes from the electric heater (E), and less than 50% and preferably less than 20% comes from the submerged burner.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 22, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
“a flow rate of the first portion being less than a flow rate of the second portion”, and the claim also recites preferably, a ratio of flow rates of the first portion and the second portion being adjustable, and/or a supply frequency and/or supply duration of the second portion being adjustable which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the features introduced after preferably are merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 16 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(b) as being anticipated by Lewis (US 2018/0237322).
Regarding claim 16, Lewis discloses a melting device (10), comprising a melting space in which material (18) can be melted and which is enclosed by at least a bottom wall and a side wall as depicted in at least Fig 1-2.
Lewis discloses the melting device further comprises at least one electric heater, electrodes (26), and at least one submerged burner (22) disposed in the melting space to heat material.
Claim(s) 16 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(b) as being anticipated by Cook (US 20200262731).
Regarding claim 16, Cook discloses a melting device, comprising a melting space in which material (Abstract, 14) can be melted and which is enclosed by at least a bottom wall and a side wall as depicted in at least Fig 2-3, Abstract.
Cook discloses the melting device further comprises at least one electric heater [0054], [0059], electrodes (120), and suggests at least one submerged combustion burner disposed in the melting space to heat material [0066].
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claim(s) claims 17-21, 23 and 33, are primarily rejected under 35 U.S.C. 103 as being unpatentable over Cook (US 20200262731).
Regarding claims 17-18, Cook does not indicate the placement of the submerged combustion [0066] burners relative to the electrodes.
In re Kuhle, 526 F.2d 553, 188 USPQ7 (CCPA 1975) The particular placement of an element was held to be obvious.
It has generally been recognized that to shift location of parts when the operation of the device is not otherwise changed is within the level of ordinary skill in the art, In re Japikse, 86 USPQ 70; In re Gazda, 104 USPQ 400.
Cook discloses the claimed invention using submerged combustion burners instead of burners (114) [0066].
It would have been obvious to one having ordinary skill in the art at the time the invention was made to place the submerged combustion burners upstream the electrodes, downstream the electrodes or both , since it have been held that a mere rearrangement or placement of an element without modification of the operation of the device involves only routine skill in the art. One would have been motivated to place the submerged burners for the purpose of further heating and melting at locations within the melting space.
Regarding claims 19-20, Cook discloses a melting device with electrodes and submerged combustion therefore this device is structurally configured to have 70-80% electric heating via the electrodes and less than 20% energy via the submerged combustion via operation of the heating elements.
Regarding claim 21, Cook also suggests the burners may be disposed in the upper wall ports (114). The level of the melt is dependent on the amount of material being worked on by the melting device.
MPEP 2115 indicates material or article worked upon does not limit apparatus claims.
A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), "the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself." Id. at 580
Therefore the burners being above a surface (S) of a material melt is dependent on the use of the claimed melting device and the amount of melting material input and flowing out of the melting device during any given operation.
Regarding claim 23, hydrogen is a known combusting fuel. MPEP 2115 indicates material or article worked upon does not limit apparatus claims.
A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), "the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself." Id. at 580
Therefore the burners using hydrogen fuel does not limit the device but the operation of the device and type of fuel used.
Regarding claim 33, MPEP 2115 indicates material or article worked upon does not limit apparatus claims.
A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), "the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself." Id. at 580
However Cook discloses the melting device is suitable for melting glass (abstract)
Claim(s) 24-29 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cook (US 20200262731) as applied above and further in view of Knavish (US 4001001)
Regarding claims 27-29, Cook suggests submerged combustion melters as indicated above however fails to state multiple protrusions in the bottom wall of the melting device that increase successively in the melt flow direction.
In an analogous art of an electric and combustion glass melting furnace (abstract), Knavish discloses multiple protrusions, of steps 67 and or planes 69 (Col 4; line 43-48, Fig 1) in the bottom wall of the melting device that increase successively in the melt flow direction .
It would be obvious to one of ordinary skill in the art to modify the melter of Cook with steps, or protrusions, as motivated to aid in establishment of desirable flows in a pool of glass.
Regarding claims 24-26 and 30, the combined teachings of Cook and Knavish disclose a furnace with electrodes and submerged burners with protrusions that increase successively.
In re Japikse, 181 F.2d 1019,86 USPQ 70 (CCPA 1950)
Shifting the location of an element would not have modified the operation of device. In re Kuhle, 526 F.2d 553, 188 USPQ7 (CCPA 1975) The particular placement of an element was held to be obvious.
It would be obvious to one of ordinary skill in the art to determine placement of the submerged burner absent any unexpected results.
Claim(s) 31-32 and 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cook (US 20200262731) as applied above and further in view of Baker (US 20160107914)
Regarding claims 31-32 and 34-35, Cook suggests submerged combustion melters as indicated above however fails to state the details of the submerged burners
In an analogous art of submerged combustion burners suitable for melting devices Baker discloses submerged combustion burners where burners are jacketed with a cooling system [0027], [0057] and a fuel and oxygen and supply control [0110] and delivering a rotational flow. Where Cook is silent as to the details of the construction of the burner it would be obvious to one of ordinary skill in the art to be motivated to look to available submerged combustion burners for melting devices suitable in the art to use.
Conclusion
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JODI COHEN FRANKLIN
Primary Examiner
Art Unit 1741
/JODI C FRANKLIN/ Primary Examiner, Art Unit 1741