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 .
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: “actuating element” and “coupling structure” in claim 1.
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 1-15 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 1 recites “in regions”. It is unclear what the regions refer to (does it mean parts of the air-guiding elements or part of a different structure that accommodates the air-guiding elements?)
Claim 1 recites the limitation "the first air-guiding elements" in line 11. There is insufficient antecedent basis for this limitation in the claim. Examiner recommend applicant to amend this limitation to (and for examining purpose, examiner interprets this limitation is) “the plurality of first air-guiding elements”. NOTE: there are many places in the entire claim set that have the same problem and need corrections.
Regarding claims 1, 4, 8, 10-13, the phrase "in particular" 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).
Claim 5 recites “at least the coupling structure of the actuating mechanism (1) is received at least partially or regionally inside an airflow splitter”. This limitation positively recites that the actuating mechanism is received in an airflow splitter and it looks like the airflow splitter is part of the actuating mechanism.
However, paragraph [0083] of the instant application states “However, the disclosure is not limited to air vents that are equipped with such an airflow splitter 9. The actuating mechanism 1 according to the disclosure is similarly suitable for air vents without airflow splitters 9.” The disclosure says the actuating mechanism can be installed in air vent that doesn’t have airflow splitter. Therefore the specification says airflow splitter is not part of the actuating mechanism. And therefore the specification disclosure is conflict with the claim limitation. It’s not clear as to if the airflow splitter is actually part of the actuating mechanism. Examiner recommend applicant to amend this limitation to (and for examining purpose, examiner interprets this limitation is) “at least the coupling structure of the actuating mechanism (1) is configured to be received at least partially or regionally inside an airflow splitter…”
Claim 7 recites “stop”. It’s not clear as to what structural limitation is required for “stop”.
Claim 9 recites “the actuating element is borne on or atop the at least one second air-guiding element”. This limitation positively recites that the actuating element is on or atop the at least one second air-guiding element. However in claim 8, the at least one second air-guiding element is part of functional limitation and not positively recited. Therefore it is unclear as to if the actuating element is actually on or atop the at least one second air-guiding element. Examiner recommend applicant to amend this limitation to (and for examining purpose, examiner interprets this limitation is) “the actuating element is configured to be borne on or atop the at least one second air-guiding element”.
Claim 11 recites the limitation "the as-needed air deflection" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the at least one second air-guiding element" in line 5. There is insufficient antecedent basis for this limitation in the claim. It is also not clear as to if this limitation refers to “at least one air-guiding element” in claim 13 line 3.
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)(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.
Claims 1, 5-7, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horner (DE102021105435. See attached translation.)
Regarding claim 1, Horner teaches An actuating mechanism “for actuating a plurality of first air-guiding elements of an air vent for a vehicle, each of which are borne about a respective first pivot axis, wherein each first air-guiding element comprises a bearing element integrally formed on the respective air-guiding element and extending eccentrically to the pivot axis of the respective air-guiding element, in particular in the form of a bearing pin at least in regions” (This is intended use),
wherein the actuating mechanism comprises an actuating element (11, fig 2), which is in particular manually actuatable, and a coupling structure (9, fig 2) operatively connected to the actuating element,
wherein the actuating element is slidably borne in a second direction (shown in x) extending perpendicular to a longitudinal extension direction (vertical direction of fig 2) of the first air-guiding elements, and
wherein the coupling structure “is configured so as to receive, at least partially or regionally, the bearing elements of the first air-guiding elements” (see fig 2) in such a way “that a movement of the actuating element in the second direction extending perpendicular to the longitudinal extension direction of the first air-guiding elements is or can be transferred to the bearing elements, but not a movement of the actuating element in the longitudinal extension direction of the first air-guiding elements or a movement of the actuating element perpendicular to the longitudinal extension direction of the first air-guiding elements and perpendicular to the second direction or a rotational movement of the actuating element about an axis of rotation extending parallel to the second direction” (This is intended function. Air-guiding device is not positively recited to be part of the actuating mechanism.).
Regarding claim 5, Horner teaches at least the coupling structure of the actuating mechanism “is configured to be received at least partially or regionally inside an airflow splitter, wherein the airflow splitter is configured so as to split a stream of air flowing through the air vent into a first air channel and into a second air channel, wherein each first air-guiding element comprises a first air-guiding region received in the first air channel and a second air-guiding region received in the second air channel” (This is intended function. See 112b rejection for claim interpretation. The airflow splitter is interpreted to be not part of the actuating mechanism.)
Regarding claim 6, Horner teaches “each bearing element of the first air-guiding elements is connected to a bearing element of the first and second air-guiding region of a corresponding air-guiding element via a respective lever arm region” (bearing element is not part of the actuating mechanism, and therefore this is an intended function.)
Regarding claim 7, Horner teaches at least one stop (14 and 15, fig 3a) is associated with the actuating element for limiting a movement of the actuating element in the second direction
Regarding claim 10, Horner teaches an air vent for a motor vehicle, wherein the air vent comprises the following:
a housing (2) having an air inlet region (upstream region of housing 2) and an opposite air outlet region (downstream region of housing 2);
a plurality of first air-guiding elements (5, fig 1), in particular in the form of air-guiding shells, each borne pivotably relative to the housing about a respective first pivot axis (A, fig 1); and an actuating mechanism (see rejection in claim 1) according to claim 1, wherein the actuating mechanism is configured so as to actuate, and in particular to pivot, the first air-guiding elements together as needed (see movement in fig 2 and 2a).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Horner (DE102021105435. See attached translation.).
Regarding claim 4, Horner teaches that the actuating element itself is at least one base body. As for the limitation regarding “the coupling structure and at least one base body of the actuating element are configured as a monolithic component, in particular a plastic injection-molded part”, this limitation is considered product-by-process. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Allowable Subject Matter
Claims 2-3, 8-9, 11-15 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KO-WEI LIN whose telephone number is (571)270-7675. The examiner can normally be reached M-F 6:30-2:30 Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached at (571)272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KO-WEI LIN/Primary Examiner, Art Unit 3762
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