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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,564,523 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Information Disclosure Statement
The information referred to in the information disclosure statements filed on May 21, 2026, has been considered as to the merits.
Claim Rejections - 35 USC § 251 – Oath/Dec
The reissue oath/declaration filed on June 11, 2026, is acceptable and properly identifies an error as required by 37 CFR 1.175(a).
Claim Rejections - 35 USC § 251 - Recapture
Claims 57-66 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP § 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Recapture Analysis: Step 1
Reissue claims 57-66 are broader in scope than patent claims 1-19. Reissue claims 57-66 do not require the following limitations which were present in all the patent claims:
the cutting part “is rotatably coupled at only one side on a lower end surface of the hopper so that an open space that is not interfered above the cutting part is formed inside the hopper”
Therefore, step 1 of the three-step test is met for reissue claims 57-66.
Recapture Analysis: Step 2, first sub-step
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by the applicant in the original prosecution to make the claims allowable over the art.
During prosecution of the application for the ‘523 patent, the Examiner rejected claims 1-4, 7, 9, 11, 12, 14 and 15 over art in a non-final office action mailed on June 13, 2022. The Examiner indicated claims 5, 6, 8, 10 and 16-19 as containing allowable subject matter.
Applicant filed a response on September 13, 2022 amending independent claim 1 to include the following limitations:
“the cutting part being connected to the screw and rotatable in the same axial direction as the rotation axis of the screw”
the cutting part “is rotatably coupled at only one side on a lower end surface of the hopper so that an open space that is not interfered above the cutting part is formed inside the hopper”
a chopping blade extending upwards in a spiral form “towards the open space inside the hopper”
“an upper end part of the chopping blade has a cross-section that becomes smaller towards a tip of the upper end part to form a shape of an ox horn”
The limitations that were added to independent claim 1, listed above, to distinguish the claimed invention from the prior art are thus surrender-generating limitations (SGL).1
Recapture Analysis: Step 2, second sub-step
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by Applicant in the original application to make the claims allowable over the art.
Reissue claim 57 is broadened with respect to patent claim 1 to omit:
the cutting part “is rotatably coupled at only one side on a lower end surface of the hopper so that an open space that is not interfered above the cutting part is formed inside the hopper”
The omission of item (b) is omission of a surrender generating limitation. Therefore, step 2 of the three-part test is met for reissue claimed 57-62.
Reissue claim 63 is broadened with respect to patent claim 1 to omit:
the cutting part “is rotatably coupled at only one side on a lower end surface of the hopper so that an open space that is not interfered above the cutting part is formed inside the hopper”
The omission of item (b) is omission of a surrender generating limitation. Therefore, step 2 of the three-part test is met for reissue claim 63-66.
Recapture Analysis: Step 3
The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated that to avoid the recapture rule "the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured." Id. at 1361, 98 USPQ2d at 1644.
In this case, reissue claims 57-66 are “not materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.”
Therefore, reissue claims 57-66 improperly recapture surrendered subject matter.
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 1-19 and 51-66 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, 51 and 57 each recite the phrase “for cutting a material for juice extraction beforehand” in line 2. It is not clear what is meant by the word “beforehand.” It appears Applicant is attempting to position the cutting part essentially upstream from the extraction part of the juicer; however, clarification of the claim language is required.
Claim 1 recites the phrase “rotatable in the same axial direction as the rotation axis of the screw.” This phrase is not clear. It is not understood how something can be rotatable “in the same axial direction” of the rotation axis. Movement in the axial direction constitutes movement along the axis. Examples of movement along the axis are stretching, compressing or translation. It is not clear how the cutting part is “rotatable in the same axial direction.” It appears that Applicant intends to recite that the cutting part is connected the screw and is rotatable about the same axis and in the same direction as the screw, however, clarification of the claim language is required.
Claim 1 recites the phrase “from a center of the rotation” in line 8. The phrase “the rotation” lacks sufficient antecedent basis. It appears as if Applicant is referring to a center of the cutting part which is aligned with the rotation axis of the screw. Clarification is required.
Claim 18 recites the phrase “both protruding side surfaces” in line 2. This phrase lacks sufficient antecedent basis. It is not clear if both the protruding side surfaces are surfaces of the first inner protrusion.
Claim 19 recites the phrase “the inner side surface” in line 2. This phrase lacks sufficient antecedent basis.
Claims 51 and 57 each recite the phrase “rotatable on the same axis and in the same axial direction as the rotation axis of the screw.” As noted above, it is not clear how the cutting part is “rotatable…in the same axial direction as the rotation of the screw.” Movement in an axial direction constitutes action along the axis. Stretching, compressing and translation are examples of movement along an axis. Rotation occurs about an axis. It is not clear how rotation can occur along the axis. Clarification is required.
Claim 52 recites the phrase “the cut material” in line 3. This phrase lacks sufficient antecedent basis. The Examiner understands that the juicer process material that has yet to be cut and processes material that has already been cut, however clarification within the claim languages is required.
Claim 53 recites “at a position where a distal end portion of the slicing blade of the inner surface of the hopper is located.” This phrase is not understood. Perhaps Applicant is referring to a portion along an inner surface of the hopper that corresponds to a distal end portion of the slicing blade, however clarification is required.
Claim 56 recites the phrase “the lower surface of the bottom surface of the hopper” in lines 9-10. “The lower surface” and “the bottom surface” lack sufficient antecedent basis.
Claim 63 recites the phrase “the rotation” in line 10. This phrase lacks sufficient antecedent basis.
Claims not specifically addressed are rejected as being dependent upon a rejected base claim.
Allowable Subject Matter
Claims 1-19 would be allowable if rewritten or amended 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.
Claims 51-66 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph and the 251 Recapture Rejection set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
With respect to claims 1 and 51, the prior art of record fails to disclose either singly or in obvious combination a juice extractor comprising: a cutting part for rotation within a hopper and above a screw, the cutting part connected to the screw and rotatable about the rotation axis of the screw, the cutting part comprising a chopping blade extending upwards in a spiral form toward an open space inside the hopper, wherein the chopping blade has a cross-section that becomes smaller towards a tip of an upper end part to form a shape of an ox horn and a slicing blade extending horizontally on a lower end surface of the hopper.
With respect to claims 57, the prior art of record fails to disclose either singly or in obvious combination a juice extractor comprising: a cutting part for rotation within a hopper and above a screw, the cutting part connected to the screw and rotatable about the rotation axis of the screw, the cutting part comprising a chopping blade extending upwards in a spiral form toward an open space inside the hopper, wherein the chopping blade has a cross-section that becomes smaller towards a tip of an upper end part to form a shape of an ox horn, the hopper has a lower end surface and a first inner protrusion formed to protrude inwardly on an inner surface of the hopper and to hold the material for juice extraction so as to interact with the chopping blade.
With respect to claim 63, the prior art of record fails to disclose either singly or in obvious combination a method for extracting juice from a material for juice extraction comprising the steps as claimed including cutting the material for juice extraction by rotating a cutting part, wherein the cutting part comprises a chopping blade extending upwards in a spiral form towards an open space inside a hopper, an upper end of the chopping blade has a cross-section that becomes smaller towards a top of the upper end part to form a shape of an ox horn wherein a first inner protrusion holds material for juice extraction so as to interact with the chopping blade; extracting juice by compressing the material having been cut by the chopping blade with a screw and discharging the juice through a juice discharge.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Amendment
Applicant’s amendment and response filed on June 11, 2026 has been considered in its entirety.
Applicant’s newly filed reissue oath/declaration and error statement included therein is acceptable as set forth above.
The cancellation of claims 20-50 has overcome the 251 Recapture Rejection set forth in February 19, 2026 Non-Final Office Action. The newly filed claims 51-66, however, are also subject to a recapture rejection. The Examiner notes that newly filed claims 51-66 include the SGL’s that were missing from cancelled claims 20-50. However, newly filed claims 51-66 are missing a different SGL. Specifically, the newly filed claims do not require the cutting part to be “rotatably coupled at only one side on a lower end surface of the hopper so that an open space that is not interfered above the cutting part is formed inside the hopper.” The fact that subject matter was deemed allowable by the examiner during underlying prosecution does not necessarily mean that claims containing such subject matter avoid recapture. Any limitations added or argued with respect to the original application claims for the purpose of making the claims allowable over an art rejection constitutes surrender generating limitations (SGLs). The SGLs must be maintained, at least in part, in the reissue claims to avoid recapture. See MPEP 1412.02. As set forth above, new claims 51-66 fail to maintain the SGLs identified in the underlying prosecution.
Applicant explains that the original language of claims 1-19 remains substantially identical to the original patent. The mere fact that the original language is maintained does not preclude the patented claims from having 112 issues.
Applicant’s arguments with respect to the phrase “shape of an ox-horn” being definite are persuasive. Each of the independent claims require the blade to “extend upward in the shape of a spiral” and to have “a cross-section that becomes smaller towards a tip of the upper end part to form a shape of an ox horn.” Inclusion of both limitations, in combination with the written description provided in column 18, lines 11-20, supports that the blade both extends in an upward spiral form and has a cross section that becomes smaller as it extends upward to form the shape of an ox horn.
Applicant explains that the term “beforehand” describes the spatial sequence of material flow and Applicant’s adopts the interpretation of the phrase “beforehand” to mean “upstream from the extraction part.” The claim language, however, still requires clarification. As currently worded, the claim does not clearly define what steps/processes follow the step/process of cutting the material. The material for juice extraction is cut before what occurs? The cutting part is for cutting a material for juice extraction before the material for juice extraction is subject to the juice extraction process. The claim, however, does not recite this clearly.
Applicant’s arguments with respect to the prior art are persuasive. Particularly, substituting Ohashi’s L-shaped griding blade for the Chen shredding knife would interfere with the Chen system’s ability to discharge material from the shredding knife to the downstream juice extraction systems. Such an interference would make the substitution not obvious to a PHOSITA.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SARAH B. MCPARTLIN whose telephone number is (571)272-6854. The examiner can normally be reached M-F 8 am - 5 pm.
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, Eileen Lillis can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
Conferees:
/Laura Davison/Reexamination Specialist, Art Unit 3993 /EILEEN D LILLIS/SPRS, Art Unit 3993
1 The examiner notes that limitations added to original application claims for the purpose of making the claims allowable over an art rejection are surrender-generating limitations, whether the amendment was made by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant, even when applicant has made no argument on the record that the limitations were added to obviate the rejection. See MPEP § 1412.02, subsection II.B.2(B).
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