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 .
Response to Arguments
Applicant's arguments with respect to the 112 rejection to claims 1 and 12, filed July 6, 2026, have been fully considered but they are not persuasive. Applicant argues that “it is well settled that Applicants can apply ‘black boxes’ to designate structure well known in the art for performing that function” and therefore the indefiniteness rejection should be removed.
The Examiner respectfully disagrees. While Applicant is able to use “black boxes” to designate structure when Applicant invokes the 112f clause within a claim the specification should specify the structure Applicant is claiming to perform the function. In this case, the specification fails to list or disclose any specific structure and the drawings simply use a “black box” to designate the mechanism and the cutting tool to support the 112f interpretation thus creating the indefiniteness rejection. It is noted that removing the 112f interpretation within the claim would remove the indefiniteness rejection since the limitation would not invoke the need to look in the specification for the specific structure required to perform the claimed function, i.e. amend mechanism for twisting to twister for twisting and cutting tool for cutting to cutter for cutting removes the 112f interpretation.
Applicant's arguments with respect to the 102 rejection, filed July 6, 2026, have been fully considered but they are not persuasive. Applicant argues that Geiger fails to disclose the movable arm is extended “once the tying wire is in the intermediate position” but rather is extended before the tying wire is moved to the intermediate position.
The Examiner respectfully disagrees. It appears as if Applicant is trying to set forth that the movable arm is only extended at a specific time in operation, however the claim fails to distinguish such a limitation [it is further noted that the specification may not support such a negative limitation either should it be added to the claim]. Specifically, the limitation does not exclude the extension of the movable arm prior to the wire being in the intermediate position and therefore Geger meets the claimed invention.
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:
“mechanism for twisting” in claim 1 [no corresponding structure is described (see paragraph 0092) and not clearly illustrated in figure 1 (element 112 is a box)]; and
“cutting tool for cutting” in claim 12 [no corresponding structure is described (see paragraph 0099) and not clearly illustrated in figure 1 (cutting tool 134 as a box)].
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 1-14 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.
With regards to claim 1, the limitation “mechanism for twisting” 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 states in paragraph 0092 that element 112 designates the mechanism for twisting however the figures show element 112 as a box. Neither the specification nor the drawings provide specific structure of the mechanism that allows it to perform the function to twisting. 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.
With regards to claim 12, the limitation “cutting tool for cutting” 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 designates the cutting tool with reference numeral 134 in paragraph 0099 but figure 1 shows element 134 as a box without any specific structure illustrated capable of performing the cutting function. 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
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.
Claim(s) 1-3,5-6, 9-12 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Geiger (US 4,865,087).
In reference to claim 1, Geiger discloses a portable electric tying machine for binding plants [it is noted the limitation “for plants” is an intended use and Geiger is capable of tying plants], comprising
a body (10),
at least one motor (34, 46) [see col. 2 lines 9-12 & 27-29] in the body [see figure 1; it is noted that Geiger discloses motors can be used in place of pistons]
a tying head (11, 12) arranged at a distal end of the body (10), the tying head comprising a guide path (48) for guiding a tying wire [see col. 2 lines 33-35],
a drive system for driving the tying wire in the guide path, and
a mechanism (38) for twisting the tying wire,
wherein
the tying head is immobile [see figure 1],
the drive system comprises a first mechanism (18-20, 22) for pushing the tying wire to a position, referred to as intermediate position, in the trying head [see col. 2 lines 3-12], and a second mechanism (36) movable to pull the tying wire from the intermediate position, and bring it into a position, referred to as twisting position [see col. 2 lines 13-32],
and wherein the second mechanism comprises a movable arm (36) equipped with a gripping means (arms 40 with openings 52) for gripping the tying wire, the movable arm being configured to be extended, once the tying wire is in the intermediate position, to position the gripping means at the intermediate position, so that the gripping means can grip the tying wire in the intermediate position [see col. 3 lines 11-14], and retracted to position the gripping means at the twisting position, so that the gripping means can release the tying wire in the twisting position [see col. 3 lines 22-27].
In reference to claim 2, the tying head (11, 12) is beak-shaped, comprising a housing provided for positioning therein a branch to be tired, as seen in figure 1 [branch R is positioned within housing of tying head].
In reference to claim 3, Geiger further discloses the first mechanism comprises a first motorized roller (18), referred to as the drive roller, a second roller, referred to as the pressing roller, designed to press the tying wire against the drive roller [see col. 1 line 68-col. 2 line 2], so that the rollers drive the tying wire when they are in motion, as seen in figure 1.
In reference to claim 5, the gripping means (40) is a clamp [see col. 3 lines 34-37].
In reference to claim 6, the second mechanism comprises at least one actuating means (42) to trigger the gripping of the tying wire by the gripping means by abutment of the actuating means with the tying head when the movable arm is extended, and/or trigger the release of the tying wire by the gripping means, by abutment of the actuating means, when the movable arm is retracted [see col. 3 lines 34-42].
In reference to claim 8, the movable arm (36) is translationally movable [see col. 2 lines 13-15].
In reference to claim 9, the at least one motor includes a first motor (34) for driving the first mechanism and the mechanism for twisting the tying wire [see col. 3 lines 1-8 & 49-62; it is noted that Geiger discloses motors can be used in place of pistons].
In reference to claim 10, the machine comprises a first freewheel system enabling the first mechanism to be driven by the first motor only in a first direction of rotation of a drive shaft of the first motor [see col. 3 lines 1-8; discloses clockwise rotation], and a second freewheel system enabling the twisting mechanism to be driven by the first motor only in a second direction of rotation of the motor shaft, opposite to the first direction of rotation [see col. 3 lines 49-623, discloses counterclockwise rotation].
In reference to claim 11, the at least one motor further includes a second motor (46) different from the first motor (34), for driving the second mechanism [see col. 3 lines 22-27; it is noted that Geiger discloses motors can be used in place of pistons].
In reference to claim 12, Geiger further discloses a cutting tool (54) for cutting the tying wire, wherein the cutting tool can be triggered by the twisting mechanism [see col. 2 lines 50-53; col. 3 lines 28-33].
In reference to claim 14, Geiger further disclose the machine is equipped with a reel (14) of trying wire, as seen in figure 1 [see col. 1 lines 64-66].
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.
1. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geiger (US 4,865,087) in view of Itagaki et al (US 2018/0207710).
In reference to claim 4, Geiger discloses the invention substantially as claimed except for wherein the drive roller comprises a first toothed wheel and the pressing roller comprises a second toothed wheel meshing with the first toothed wheel.
However, Itagaki et al teaches of a feeding mechanism including a driven gear with a first toothed wheel integral therewith, and a pressing gear with a second toothed wheel integral therewith such that the drive gear and the pressing gear mesh with one another to feed a wire therebetween to a tying head [see paragraph 0092; figure 2]
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the mechanism of Geiger such that the rollers include toothed wheels, as taught by Itagaki et al, in order to ensure uniform rotation between the rollers for feeding of the wire.
2. Claim(s) 7 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geiger.
In reference to claim 7, Geiger further discloses the second mechanism includes a spring means for holding the actuating means in position [see col. 2 lines 24-25]. Geiger discloses the invention substantially as claimed except for wherein a position holding magnetic means is used of holding the actuating means in position.
However, it would have been obvious to one having ordinary skill in the art to substitute the spring of Geiger with a different hold means such as a magnetic since it has been held to be with the general skill of a worker in the art to select a known mechanism on the basis of its suitability for the intended use as a matter of mechanism efficiency. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the spring holding means of Geiger with a magnetic holding means since both perform the same function and the intended result of holding an element in position would be achieved with either mechanism.
In reference to claim 13, Geiger discloses the invention substantially as claimed except for wherein the machine includes at least one hatch allowing access to at least the first mechanism.
However, it would have been within the realm of one of ordinary skill in the art to provide a hatch within the machine for the purpose of allowing access to the wire should a jam occur while feeding the wire through the machine.
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the machine of Geiger to include a hatch in order to allow for access to the wire should a jam occur when feeding the wire through the machine.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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, Chris Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725
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