DETAILED ACTION
Product by Process
Please note, claims 4 and 16 includes product by process language. The below arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. MPEP 2113.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the device for producing a vacuum” (claim 17) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
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.
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: “a device for producing a vacuum in the mixing tube” in claim 17.
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 13, 15 and 17 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.
Regarding claim 13, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The term “hard” in claim 15 is a relative term which renders the claim indefinite. The term “hard” 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 17, limitation “a device for producing a vacuum in the mixing tube” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification recites the limitation verbatim but does not disclose any structure capable of carrying out the function or is it shown in the drawings. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
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(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, 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 and clearly links them to the function 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.
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)(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) 1-4, 6, 8-13, 15-17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Orla-Jensen et al. (US 20180043381).
Claim 1, Orla-Jensen discloses a metering unit (56, 72, 73) that has a number of metering valves that corresponds to the number of components of the viscous material, as well as a coupling device (57), and having a mixing unit (20), which has a material inlet, and a coupling part releasably connected to the coupling device (57) at a first end, and, at a second end, a mixing tube (62) that has an exit opening (40) for the viscous material, as well as a mixing structure (82) arranged in the mixing tube (62), for mixing the components as they are passed through the mixing tube (62) from the material inlet to the exit opening (40), the apparatus further comprising a needle valve for releasing and closing the exit opening (40), wherein the needle valve has a valve needle (64) that extends in a longitudinal direction that runs from the material inlet to the exit opening (40), wherein the valve needle releases the exit opening in a release position, and closes the exit opening in a closed position, by making contact with a valve seat (22).
Claim 2, Orla-Jensen discloses wherein the mixing structure has an inner tube, which is arranged in the mixing tube, and through which tube the valve needle extends, and from which tube a mixing spiral projects away radially (FIG 6; [0049] to [0051]).
Claim 3, Orla-Jensen discloses wherein the valve needle projects out of the inner tube at a front end of the inner tube, wherein the front end faces the valve seat, and is conducted to be sealed off at the front end, by means of a sealing element (FIG 6; [0049] to [0051]).
Claim 4, Orla-Jensen discloses wherein the mixing unit (20) is produced in one piece, by means of 3D printing (see Product by Process above).
Claim 6, Orla-Jensen discloses wherein the mixing tube and the mixing structure are produced from a first material, and the valve seat is produced from a second material (FIG 6; [0030]).
Claim 8, Orla-Jensen discloses wherein the needle valve has a drive unit for moving the valve needle (FIG 1, 1A and 4; [0029], [0030], [0033], [0047]).
Claim 9, Orla-Jensen discloses wherein the drive unit is a pneumatic drive unit (FIG 1, 1A and 4; [0029], [0030], [0033], [0047]).
Claim 10, Orla-Jensen discloses wherein the drive unit is releasably connected to the metering unit (FIG 6; [0049] to [0051]).
Claim 11, Orla-Jensen discloses wherein the valve needle can be moved, by means of the drive unit, into the closed position in the longitudinal direction, and into the release position counter to the longitudinal direction ([0049] to [0051]).
Claim 12, Orla-Jensen discloses wherein the valve needle can be moved, by means of the drive unit, into the release position in the longitudinal direction, and into the closed position counter to the longitudinal direction ([0049] to [0051]).
Claim 13, Orla-Jensen discloses wherein the mixing structure is accommodated so as to rotate in the mixing tube, about a rotational axis that runs in the longitudinal direction ([0048]; FIG 5), preferably motor driven (See 112 above).
Claim 15, Orla-Jensen discloses wherein the valve needle is produced from a metal ([0053] to [0055]) or a hard metal (See 112 above).
Claim 16, Orla-Jensen discloses wherein the valve needle is produced together with the mixing unit (FIG 5), by means of 3D printing (See product by process above).
Claim 17, Orla-Jensen discloses a device for producing a vacuum in the mixing tube ([0040]; pumps are inherently capable of reversing flow, generating suction and creating a vacuum; See 112 above).
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.
Claim(s) 5, 7, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Orla-Jensen as applied to claim 1 above.
Claims 5, 7 and 14, Orla-Jensen discloses the claimed invention except for mixing unit, tube and structure has different materials. It would have been obvious to one having ordinary skill in the art at the time the invention was made to, absent a showing of criticality, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering choice. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (MPEP 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY W CARROLL whose telephone number is (571)272-4988. The examiner can normally be reached M-F 8 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Paul Durand can be reached at (571) 272-4459. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JEREMY W. CARROLL
Primary Examiner
Art Unit 3754
/Jeremy Carroll/Primary Examiner, Art Unit 3754