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 .
DETAILED ACTION
Claim Objections
Claim 5 is objected to because of the following informalities: Line 2 ‘orientation of drum’ should be -orientation of the drum-. Appropriate correction is required.
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.
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.
Regarding claim 1, line 2, the claim state the limitation ‘generally’ is indefinite. The limitation makes it unclear what the metes and bounds of claim in regards to what ‘generally’ encompass.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,076,465 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
18754045 (Claim 1) USP 12,076,465 B2 (Claim 1)
A rotary separation apparatus comprising
A rotary separation apparatus comprising
a drum having a generally cylindrical shape with a principal axis coincident with the principal axis of a cylinder defined by the generally cylindrical shape, in which the drum has lateral surfaces with a plurality of perforations and a base of the cylinder that is opposed to an upper end of the cylinder
a drum having a generally cylindrical shape with a principal axis coincident with the principal axis of a cylinder defined by the generally cylindrical shape, in which the drum has lateral surfaces with a plurality of perforations and a base of the cylinder that is opposed to an upper end of the cylinder
a container that forms an enclosed space around the drum when the drum is disposed with the principal axis in a horizontal orientation;
a container that forms an enclosed space around the drum when: the drum is disposed with the principal axis in a horizontal orientation, and an upper and lower vessel are brought into mutual engagement at a rim of the upper vessel to a rim of the lower vessel;
one or more actuators that are operative to modulate the orientation of the principal axis of the cylinder from between an upright and inverted vertical orientation and dispose the drum horizontally in the container
one or more actuators that are operative to modulate the orientation of the principal axis of the cylinder from between an upright and inverted vertical orientation and dispose the drum horizontally in the container
a means to rotate the drum about the principal axis when the drum is disposed horizontally within the container
a means to rotate the drum about the principal axis when the drum is disposed horizontally within the container, wherein the lower vessel is capable of being inverted from an upright horizontal orientation to a downward facing horizontal orientation by the one or more actuators to empty the lower vessel
Claim 3
Claim 1
Claim 4
Claim 1
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,076,465 B2 in view of Dorn (USP 5,556,202).
Regarding claim 2, ‘465 does not disclose the claim limitations. Dorn teaches the drum has a removable cap that closes an opening in the upper end of the cylinder (see Fig. 5; cover or lid closes element 48) for the purpose of containing material that has been placed inside the drum (col. 3, lines 3-5). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify ‘465, as taught by Dorn, for the purpose of containing material that has been placed inside the drum.
Claims 5-8 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,076,465 B2 in view of Sergio (EP 0832675).
Regarding claim 5, ‘465 does not disclose the claim limitations. Sergio teaches the one of more actuators are operative to modulate the orientation of drum from being disposed with the principal axis of the cylinder horizontally within the container to vertically outside the container by rotating the upper vessel away from the lower vessel to dispose both the upper vessel and the lower vessel in an upward facing orientation and then rotating the drum to dispose the principal axis of the cylinder vertically (Sergio; col. 1, lines 29-35; element 9 allows pivoting of the case) for the purpose of changing the orientation of the drum to an emptying and cleaning configuration. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify ‘465, as taught by Sergio, for the purpose of changing the orientation of the drum to an emptying and cleaning configuration.
18754045 (Claim 1) USP 12,076,465 B2 (Claim 1)
Claim 6
Claim 2
Claim 7
Claim 3
Claim 8
Claim 4
Regarding claim 10, ‘465 does not disclose the claim limitations. Sergio teaches the one or more actuators is operative to remove the container laterally via a side portal such that it translates in the direction of the principal axis (see Fig. 1 where element 2 is pulled away from element 1) for the purpose of changing the orientation of the drum to an emptying and cleaning configuration. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify ‘465, as taught by Sergio, for the purpose of changing the orientation of the drum to an emptying and cleaning configuration.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,076,465 B2 in view of Liu (CN 109433580).
Regarding claim 9, ‘465 does not disclose the claim limitations. Dorn teaches the container comprises in a lower portion a drawer (element 33) disposed to collect matter that exits the drum via the plurality of perforation (elements 211) in which the drawer is configured translate away from the lower portion to provide access to the collected matter for the purpose of discharging the filtered material from the lower part of cylindrical container. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify ‘465, as taught by Liu, for the purpose of discharging the filtered material from the lower part of cylindrical container.
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 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.
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.
Claims 1, 3, 5, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Watts (US Pub 2018/0008656 A1) in view of Sergio (EP 0832675) (provided in IDS dated 6/25/2024).
Regarding claim 1, Watts discloses a rotary separation apparatus comprising: a drum (element 1001) having a generally cylindrical shape with a principal axis coincident with the principal axis of a cylinder defined by the generally cylindrical shape, in which the drum has lateral surfaces with a plurality of perforations (element 300) and a base of the cylinder that is opposed to an upper end of the cylinder (see Fig. 4D; elements 331 and 332); a container (element 100) that forms an enclosed space around the drum when the drum is disposed with the principal axis in a horizontal orientation (paragraph 0046); and a means to rotate the drum about the principal axis when the drum is disposed horizontally within the container (paragraph 0049-0051; element 400), but Watts does not disclose one or more actuators that are operative to modulate the orientation of the principal axis of the cylinder from between an upright and inverted vertical orientation and dispose the drum horizontally in the container. Sergio teaches one or more actuators that are operative to modulate the orientation of the principal axis of the cylinder from between an upright and inverted vertical orientation and dispose the drum horizontally in the container (col. 1, lines 29-35; element 9 allows pivoting of the case) for the purpose of changing the orientation of the drum to an emptying and cleaning configuration. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Watts, as taught by Sergio, for the purpose of changing the orientation of the drum to an emptying and cleaning configuration.
Regarding claim 3, Watts discloses the container forms the enclosed space when an upper (element 120) and lower vessel (element 110) are brought into mutual engagement at a rim of the upper vessel to a rim of the lower vessel (see Figs. 1A and 1B and paragraph 0046).
Regarding claim 5, Watts does not disclose the claim limitations. Sergio teaches the one of more actuators are operative to modulate the orientation of drum from being disposed with the principal axis of the cylinder horizontally within the container to vertically outside the container by rotating the upper vessel away from the lower vessel to dispose both the upper vessel and the lower vessel in an upward facing orientation and then rotating the drum to dispose the principal axis of the cylinder vertically (Sergio; col. 1, lines 29-35; element 9 allows pivoting of the case and Watts discloses the upper vessel 120 and lower vessel 110) for the purpose of changing the orientation of the drum to an emptying and cleaning configuration. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Watts, as taught by Sergio, for the purpose of changing the orientation of the drum to an emptying and cleaning configuration.
Regarding claim 10, Watts does not disclose the claim limitations. Sergio teaches the one or more actuators is operative to remove the container laterally via a side portal such that it translates in the direction of the principal axis (see Fig. 1 where element 2 is pulled away from element 1) for the purpose of changing the orientation of the drum to an emptying and cleaning configuration. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Watts, as taught by Sergio, for the purpose of changing the orientation of the drum to an emptying and cleaning configuration.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Watts/Sergio in further view of Dorn (USP 5,556,202).
Regarding claim 2, Watts does not disclose the claim limitations. Dorn teaches the drum has a removable cap that closes an opening in the upper end of the cylinder (see Fig. 5; cover or lid closes element 48) for the purpose of containing material that has been placed inside the drum (col. 3, lines 3-5). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Watts, as taught by Dorn, for the purpose of containing material that has been placed inside the drum.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Watts/Sergio in further view of Liu (CN 109433580) (provided in IDS dated 6/25/2024).
Regarding claim 9, Watts does not disclose the claim limitations. Dorn teaches the container comprises in a lower portion a drawer (element 33) disposed to collect matter that exits the drum via the plurality of perforation (elements 211) in which the drawer is configured translate away from the lower portion to provide access to the collected matter for the purpose of discharging the filtered material from the lower part of cylindrical container. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Watts, as taught by Liu, for the purpose of discharging the filtered material from the lower part of cylindrical container.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kalyanavenkateshware Kumar whose telephone number is (571)272-8102. The examiner can normally be reached on M-F 08:00-16:30.
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/K.K./Examiner, Art Unit 3653
/MICHAEL MCCULLOUGH/Supervisory Patent Examiner, Art Unit 3653