DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Elections/Restrictions
2. This office action is a response to Applicant's election filed on 10/15/2025 with traverse of Group I, claims 1-20 for further examination. Claim 21 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
3. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/15/2025. Applicant's election with traverse of Group I, claims 1-20, apparatus.
The traversal is on the grounds that:
(a) Applicant respectfully traverses the Examiner's position that the technical feature required by Groups I and II does not make a contribution over the prior art in view of EP 3 475 000 A1 or DE 10 2004 062 063 A1 and reserves all rights should the Examiner issue a rejection on the basis of EP 3 475 000 A1 or DE 10 2004 062 063 A1.
(b) Moreover, it is believed that any search for the invention embodied in Group I would necessarily include a search for the invention embodied in Group II. Thus, the simultaneous search for both groups is believed not to constitute an unreasonable search for the Patent Examiner. In addition, it is believed that the objectives of streamlined examination and compact prosecution would be promoted, if a search were conducted simultaneously for both groups. Also, the necessity of filing multiple patent applications in this case does not serve to promote the public interest because of the extra expense that is involved, in filing fees and examination costs, as well as the burden upon the public, due to the necessity of searching through a multiplicity of patent files in order to find the complete range of the subject matter claimed in several different patents that could otherwise be found in one issued patent only.
This is not found persuasive because:
(a) The inventions listed as Groups I-II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: they lack the special technical feature which is referred to in Annex B of Appendix A1 of the MPEP (Administrative Instructions under the PCT, "Unity of Invention"). The express "special technical features" is defined as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art." (Rule 13.2). Unity exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding claimed special technical features. In this case, the technical feature shared by each invention is the apparatus according to claim 1. The question of unity of invention has been reconsidered by the examiner in view of the search performed; a review of Sauer (US 2019/0270099 A1 equivalent to EP 3 475 000 A1), makes clear that the inventions of the groups I-II lack the same or corresponding special technical feature because the cited reference(s) appear to demonstrate that the claimed technical feature does not define a contribution which each of the inventions, considered as a whole, makes over the prior art. Accordingly, the prior art of the record supports restriction of the claimed subject matter in to the groups as mentioned immediately above. Specifically, Sauer (US 2019/0270099 A1) teaches the apparatus according to claim 1 (see Claim Rejections under AIA 35 U.S.C. 102(a)(1) below).
If it can be established that the feature is known in the art, there is a lack of unity a posteriori, since the feature is not a technical feature that defines a contribution over the prior art. See PCT International Search and Preliminary Examination Guidelines Chapter 10 §§ 10.03-10.04.
For restriction procedure, see MPEP 1893.03
Therefore, the requirement is still deemed proper and is therefore made FINAL.
(b) Regardless of the search method, inventions with different limitations will require different search strategies, and the times to consider the relevancy of collective references would increase proportionality as well.
Further, review of unity of invention of the National Stage Application of a PCT does also not require a showing of a substantial burden. See 37 C.F.R. 1.475.
For restriction procedure, see MPEP 1893.03
Therefore, the requirement is still deemed proper and is therefore made FINAL.
Priority
4. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
5. The information disclosure statement (IDS) submitted on 09/24/2024 & 10/18/2024 are being considered by the examiner.
Claim Interpretation
6. 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-AlA 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: “means for limiting the pivot angle” in claims 19-20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AlA 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 wishes to provide further explanation or dispute the examiner' s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, line 3 recites the limitation “which nozzle”, wherein it is unclear whether this recitation is referencing the “application nozzle” recited in line 2 and referenced as “the application nozzle” in lines 8-9 or a different nozzle. For examination purposes, examiner is interpreting “which nozzle” as “wherein the application nozzle”. To correct this problem, amend line 3 to recite “wherein the application nozzle”.
As regards to claim 9, line 3 recites the limitation “which line”, wherein it is unclear whether this recitation is referencing the “feed line” recited in line 2 a different line. For examination purposes, examiner is interpreting “which line” as “wherein the feed line”. To correct this problem, amend line 3 to recite “wherein the feed line”.
As regards to claim 11, line 2, the recitation "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For examination purposes, examiner is interpreting as the limitations following the phrase of the claimed invention are optional/not part of. To correct this problem, amend line 2 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 13, line 3, the recitation "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For examination purposes, examiner is interpreting as the limitations following the phrase of the claimed invention are optional/not part of. To correct this problem, amend line 3 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 13, line 4 recites the limitation “which ring”, wherein it is unclear whether this recitation is referencing the “second sealing ring” recited in line 2 a different ring. For examination purposes, examiner is interpreting “which ring” as “wherein the second sealing ring”. To correct this problem, amend line 4 to recite “wherein the second sealing ring”.
As regards to claim 14, line 3 recites the limitation “the side”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the side” as “a side”. To correct this problem, amend line 3 to recite “a side”.
As regards to claim 14, line 3 recites the limitation “the inlet part”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the inlet part” as “the inlet section” recited in claim 1. To correct this problem, amend line 3 to recite “the inlet section”.
As regards to claim 14, line 4 recites the limitation “which extension”, wherein it is unclear whether this recitation is referencing the “extension” recited in line 3 or a different extension. For examination purposes, examiner is interpreting “which extension” as “the extension”. To correct this problem, amend line 4 to recite “the extension”.
As regards to claim 17, line 3, the recitation "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For examination purposes, examiner is interpreting as the limitations following the phrase of the claimed invention are optional/not part of. To correct this problem, amend line 3 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 2-20 are rejected at least based on their dependency from claim 1.
Claim Rejections
9. 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.
10. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections - 35 USC § 102
11. 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.
(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.
12. Claims 1-16 & 19-20 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Sauer (US 2019/0270099 A1) hereinafter Sauer (the terminology of the claims in the application is used, but the references of Sauer are included between parentheses).
As regards to claim 1, Sauer discloses an apparatus for applying a viscous material to workpieces (abs; fig 1-3), having a nozzle holder (12) and an application nozzle (24) arranged on the nozzle holder (12), wherein the application nozzle (24) has a material line (18) that extends from a material inlet (20) for introducing the viscous material all the way to a nozzle opening (28) for exit of the viscous material, wherein the material line (18) has an inlet section (see fig 1, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) that extends (see fig 3, first larger portion extending in direction 34) in a first direction (34) from the material inlet (20), and an outlet section (26) that extends in a second direction (16), transverse to the first direction (34), to the nozzle opening (28), and wherein the application nozzle (24) is mounted on the nozzle holder (12) so as to pivot about a pivot axis (axis of 28) that forms a longitudinal center axis (see fig 1-3, axis of second smaller portion extending in direction 16) of the inlet section (see fig 1, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) ([0014]-[0018]; fig 1-3; clm 1).
As regards to claim 2, Sauer discloses an apparatus (abs; fig 1-3), wherein the inlet section (see fig 1, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) and the outlet section (26) are rigidly linked ([0014]-[0018]; fig 1-3; clm 1).
As regards to claim 3, Sauer discloses an apparatus (abs; fig 1-3), wherein the second direction (16) runs perpendicular to the first direction (34) ([0014]-[0018]; fig 1-3).
As regards to claim 4, Sauer discloses an apparatus (abs; fig 1-3), wherein the application nozzle (24) has an equalization part (46+48) that extends partially transverse to the inlet section (see fig 1-3, area/portion of 20 comprising first larger portion extending in direction 34) and lies opposite to the outlet section (26) with reference to the pivot axis (axis of 28) ([0014]-[0018]; fig 1-3).
As regards to claim 5, Sauer discloses an apparatus (abs; fig 1-3), wherein the equalization part (46+48) extends counter (see fig 1-3) to the second direction (16) ([0014]-[0018]; fig 1-3).
As regards to claim 6, Sauer discloses an apparatus (abs; fig 1-3), wherein the mass of the equalization part (46+48) approximately corresponds to the mass of the outlet section (26) ([0014]-[0018]; fig 1-3).
As regards to claim 7, Sauer discloses an apparatus (abs; fig 1-3), further comprising a motor (36) for pivoting the application nozzle (24) about the pivot axis (axis of 28) ([0005]; [0007]-[0008]; [0014]-[0018]; fig 1-3).
As regards to claim 8, Sauer discloses an apparatus (abs; fig 1-3), wherein the motor (36) is firmly connected to the nozzle holder (12) ([0005]; [0007]-[0008]; [0014]-[0018]; fig 1-3).
As regards to claim 9, Sauer discloses an apparatus (abs; fig 1-3), further comprising a feed line (32) for the material, wherein the feed line (32) is locally fixed in place with reference to the nozzle holder (12), and has an end section (see fig 2, larger end part screwed into 12) that opens into (see fig 1-3) the inlet section (see fig 1-3, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) ([0014]-[0018]; fig 1-3).
As regards to claim 10, Sauer discloses an apparatus (abs; fig 1-3), wherein the end section (see fig 2, larger end part screwed into 12) has a longitudinal center axis (see fig 1-3, axis of second smaller portion extending in direction 16) that is a continuation of the longitudinal center axis (see fig 1-3, axis of second smaller portion extending in direction 16) of the inlet section (see fig 1-3, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) ([0014]-[0018]; fig 1-3).
As regards to claim 11, Sauer discloses an apparatus (abs; fig 1-3), wherein a circumferential first sealing ring (see fig 2, ring in 12 in which 32 is screwed into) is arranged between the end section (see fig 2, larger end part screwed into 12) and the inlet section (see fig 1-3, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) ([0014]-[0018]; fig 1-3).
As regards to claim 12, Sauer discloses an apparatus (abs; fig 1-3), wherein the first sealing ring (see fig 2, ring in 12 in which 32 is screwed into) lies loosely against an end face (see fig 1-3, face of area/portion of 20 comprising first larger portion extending in direction 34 with space between) of the inlet section (see fig 1-3, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) that faces the end section (see fig 2, larger end part screwed into 12) and against an end face (see fig 2, face of larger end part screwed into 12) of the end section (see fig 2, larger end part screwed into 12) that faces the inlet section (see fig 1-3, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) ([0014]-[0018]; fig 1-3).
As regards to claim 13, Sauer discloses an apparatus (abs; fig 1-3), wherein a second sealing ring (50), wherein the second sealing ring (50) is fixed in place with reference to the nozzle holder (12), is arranged around the inlet section (see fig 1-3, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) ([0014]-[0018]; fig 1-3).
As regards to claim 14, Sauer discloses an apparatus (abs; fig 1-3), wherein the application nozzle (24) has an extension (38) that projects away from a side facing away from the inlet section (see fig 1-3, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16), through which the extension (38) the pivot axis (axis of 28) extends ([0014]-[0018]; fig 1-3).
As regards to claim 15, Sauer discloses an apparatus (abs; fig 1-3), wherein the extension (38) is connected to a drive shaft (42) of the motor (36) ([0014]-[0018]; fig 1-3).
As regards to claim 16, Sauer discloses an apparatus (abs; fig 1-3), wherein the inlet section (see fig 1-3, area/portion of 20 comprising first larger portion extending in direction 34 and second smaller portion extending in direction 16) and the extension (38) are each mounted on the nozzle holder (12) in contact with a rotational bearing (44,44), respectively ([0014]-[0018]; fig 1-3).
As regards to claim 19, Sauer discloses an apparatus (abs; fig 1-3), further comprising means (38) arranged on the nozzle holder (12) to limit a pivot angle (α) about which the application nozzle (24) can pivot about the pivot axis (axis of 28) with reference to the nozzle holder (12) ([0014]-[0018]; fig 1-3; clm 1).
As regards to claim 20, Sauer discloses an apparatus (abs; fig 1-3), wherein the means (38) for limiting the pivot angle (α) are adjustable (via 42, 44), so as to vary a maximum pivot angle ([0014]-[0018]; fig 1-3; clm 1).
Claim Rejections - 35 USC § 103
13. 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.
14. The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
15. Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sauer as applied to claim 16 above.
As regards to claim 17, Sauer discloses an apparatus (abs; fig 1-3), a first one of the rotational bearings (44) ([0014]-[0018]; fig 1-3; clm 1), however Sauer does not disclose a ball bearing, but teaches the rotational bearings. A ball bearing and rotational bearings are considered functionally equivalent bearings. Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to substitute a ball bearing for the rotational bearings disclosed by Sauer since they are functionally equivalent and one of an obvious finite choices of bearings with a reasonable expectation of success.
As regards to claim 18, Sauer discloses an apparatus (abs; fig 1-3), wherein a second one of the rotational bearings (44) is a body made of a suitable material, in which the extension (38) is accommodated (via 42) ([0014]-[0018]; fig 1-3; clm 1), however Sauer does not disclose plastic, but teaches a suitable material. A plastic and a suitable material are considered functionally equivalent materials. Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to substitute a plastic for the suitable material disclosed by Sauer since they are functionally equivalent and one of an obvious finite choices of materials with a reasonable expectation of success.
Conclusion
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717