DETAILED ACTION
Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/24/2026 has been entered.
Claims 1-7 remain pending in the application.
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:
machine management device… configured to acquire individual characteristic information of the package material, the individual characteristic information including at least defect information, and to create machine management information in which the acquired individual characteristic information is associated with the identification information read by the code readers in claims 1- 7
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.
machine management device = defect information acquisition units 51a, 52a (para 0042) (see below for 112a/112b)
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 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.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-7 recite “a machine management device” which has been interpreted under 112f/6th para because “device” does not impart any structure. Additionally, the specification lists defect information acquisition units 51a, 52a (para 0042) as subunits of machine management device. However, the units 51a, 52a themselves do not impart any structure for performing the claimed function of “acquire individual characteristic information of the package material” and “to create machine management information in which the acquired individual characteristic information is associated with the identification information read by the code readers”. Although, the defect information acquisition units 51a, 52a can be used to acquire individual characteristic information of the package material such as defect information (as described in para 0020 and 0042), the defect information acquisition units 51a, 52a, themselves, do not have any structure. Both “devices” and “units” are generic terms that do not impart any structure. The specification and the drawings do not fully, clearly, and exactly describe any device (such as a computer, controller, processor, etc.) that reasonably conveys to, one skilled in the relevant art, how to perform the above claimed function using any structure. In other words, the specification does not describe how function A (acquire individual characteristic information of the package material) and function B (create machine management information in which the acquired individual characteristic information is associated with the identification information read by the code readers) can be performed using specific structures. As such the claims do not meet the 112 (a) written description requirement.
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 1-4 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.
Claims 1-7 recite “a machine management device” which has been interpreted under 112f/6th para because “device” does not impart any structure. Additionally, the specification lists defect information acquisition units 51a, 52a (para 0042) as subunits of machine management device. However, the units 51a, 52a themselves do not impart any structure for performing the claimed function of “acquire individual characteristic information of the package material” and “to create machine management information in which the acquired individual characteristic information is associated with the identification information read by the code readers”. Although, the defect information acquisition units 51a, 52a can be used to acquire individual characteristic information of the package material such as defect information (as described in para 0020 and 0042), the defect information acquisition units 51a, 52a, themselves, do not have any structure. Both “devices” and “units” are generic terms that do not impart any structure. The specification and the drawings do not fully, clearly, and exactly describe any device (such as a computer, controller, processor, etc.) that reasonably conveys to, one skilled in the relevant art, how to perform the above claimed function using any structure. In other words, the specification does not describe how function A (acquire individual characteristic information of the package material) and function B (create machine management information in which the acquired individual characteristic information is associated with the identification information read by the code readers) can be performed using specific structures. As such the claims do not meet the 112 (b) requirement and are indefinite.
Examiner Remarks
Claims 1-7 are currently free of prior art.
Response to Arguments
Applicant’s arguments filed on 8/24/2026 have been fully considered:
Amended claims did not overcome previous 112a/1st para and 112 (b)/ 2nd para rejection/s.
Regarding claims 1, 3 and 4, Applicant contends that the specification in para 0020, 0021, 0034, 0036 clearly links claimed functions to the machine management devices.
Examiner agrees that the claimed functions are linked to the machine management devices 51, 52. However, the rejection under 112a/b or 1st/2nd para is due to lack of structure for the machine management device. The term “device” is generic which has no structure. The specification describes a subunit (defect information acquisition units 51a, 52a) of the machine management device 51, 52. Again, the term “unit” is generic which does not have any structure. In order to overcome the rejection, the Applicant should link, in the specification, sufficient structure to perform the claimed function; or present a sufficient showing that the claim limitation (machine management device), itself, recites sufficient structure to perform the claimed functions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOBEEN AHMED whose telephone number is (571) 272-0356. The examiner can normally be reached on M-F (8:30 am to 5 pm).
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/M.A./
Examiner, Art Unit 3731
/VERONICA MARTIN/Primary Examiner, Art Unit 3731
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