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 Rejections - 35 USC § 101
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1, 5-13, 15 and 18 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). The following limitations encompass parts of a human being:
Claim 1 recites “the base mounts the sidestick grip relative to the pilot’s body” (line 20 of claim 1).
Claim 10 recites “a first button which protrudes outwardly in an inboard direction relative to the pilot’s body”.
Claim 11 recites “a second button outwardly protruding in a forward direction from the transition section relative to the pilot’s body”
Claim 13 recites “a third button positioned so as to be canted outwardly in an outboard direction relative to the pilot’s body”
The remaining claims depend from one or more of the above claims and are thus similarly rejected.
Claim Interpretation - 35 USC § 112(f)
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.
It is unclear whether or not claims 1, 5-13, 15 and 18 invoke 35 U.S.C. 112(f).
The claims lack the phraseology “means for” that would normally be used to invoke 35 U.S.C. 112(f) in a product/apparatus claim. However, the claims comprise terms that could be interpreted to substitute for “means” (i.e., generic placeholders) and that are accompanied by functional language without sufficient structure to perform the functions, which can invoke 112(f) even without recitation of “means for” in accordance with MPEP 2181(I). The question of whether or not 35 U.S.C. 112(f) is invoked is obfuscated by the written description, which fails to precisely and clearly disclose what structures and equivalents are required to achieve the claimed functions, as is required by MPEP 2181(II). Note the following examples:
Claim 1 (lines 10-12) recites “a base configured to be mounted to aircraft structure laterally of a pilot’s body such that the pilot’s hand is capable of gripping the lower grip section”. The figures and written description fail to depict or describe the structure and equivalents necessary to achieve the claimed mounting functions.
Claim 1 (lines 12-19) recites “wherein the base is connected to the lower portion of the lower grip section to allow pivotal movement of the lower grip section about a first axis in forward/rearward directions and about a second axis in inboard/outboard directions relative to the pilot’s body to allow aircraft control about the pitch and roll axis, respectively, and to also allow twisting of the lower grip section about the elongate sidestick central axis in clockwise/counterclockwise directions about [sic] to allow aircraft control about the yaw axis”. The figures and written description fail to depict or describe the structures and equivalents necessary to achieve the claimed allowing/pivoting/controlling/twisting functions.
Claim 1 (lines 20-25) recites “the base mounts the sidestick grip relative to the pilot’s body so as to establish forward and inboard cants, wherein the forward cant is an angle α of 10˚-17˚ relative to a latitudinal plane defined by the pitch and yaw axis, and the inboard cant is an angle β of 2˚-10˚ relative to a longitudinal plane defined by the roll and yaw axis”. The figures and written description fail to depict or describe the structures and equivalents necessary to achieve the claimed mounting/establishing functions.
Claim 1 (lines 28-32) recites “the (GRP) establishing a theoretical point of application of forces by a pilot’s hand onto the lower grip section of the sidestick controller to effect aircraft control about the pitch and roll axes, wherein the GRP is substantially coincident with the yaw axis and the sidestick central axis”. The figures and written description fail to depict or describe the structures and equivalents necessary to achieve the claimed GRP/establishing/effecting/controlling functions.
The above-noted lack of disclosure raises serious written description and clarity issues regardless of whether or not the claims are intended to invoke 35 U.S.C. 112(f), as is detailed in the 35 U.S.C. 112(a) written description rejections and the 35 U.S.C. 112(b) clarity rejections elsewhere below.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1, 5-13, 15 and 18 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Applicant’s claims require numerous functions (see numerous functions set forth in the “Claim Interpretation” section elsewhere above and incorporated herein by reference). Applicant’s claims and disclosure fail to clearly and precisely describe any structure and equivalents for performing the claimed functions, much less sufficient details of a representative number of species required to establish possession of the full broad genus claimed. More particularly, applicant’s disclosure fails to set forth any detailed drawing depiction or written description of the structures necessary to perform the claim 1 functions, e.g., base mounting configuration structure, base pivotal movement allowing structure, base aircraft control allowing structure, base twisting allowing structure, base cant establishing structure, GRP establishing structure, or GRP aircraft control effecting structure. Further, note that a GRP would likely be at least partially a function of some articulation joint structures rather than only a function of the grip itself (e.g., such as GRP 1500 in figure 15 of prior art to Cowling US 20220326727), such articulation structures being completely lacking in applicant’s disclosure.
See MPEP 2163.03(V) which states in part:
“An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated… The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. ‘Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement.’…”
See MPEP 2163(II)(A)(3)(a)(ii), which states in various parts:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice… reduction to drawings… or by disclosure of relevant, identifying characteristics… sufficient to show the inventor was in possession of the claimed genus…”
“[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention…”
“[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification…”
“A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus…”
“A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when… Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss…”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 merely by clearly describing one embodiment of the thing claimed… The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed…”
Additionally, the limitations “laterally of a pilot’s body” (claim 1) and “relative to the pilot’s body” (claims 1, 7, 10, 11, 13) were not present in the application as originally filed and thus constitute new matter.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1, 5-13, 15 and 18 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 the inventor or a joint inventor regards as the invention.
Applicant’s claims set forth generic place holders accompanied by functional limitations (see numerous functions set forth in the “Claim Interpretation” section elsewhere above and incorporated herein by reference). Applicant’s disclosure fails to describe what structures and equivalents are necessary for performing the functions, much less sufficient details of a representative number of species required to clarify the meets and bounds of the claimed genus. Accordingly, it is unclear whether 35 USC 112(f) is being invoked, and further unclear what scope of structures are to be encompassed by the claims.
See MPEP 2163.03(VI) which states “If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b)… Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a)… because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
More particularly, note the following examples:
Claim 1 (lines 10-12) recites “a base configured to be mounted to aircraft structure laterally of a pilot’s body such that the pilot’s hand is capable of gripping the lower grip section”. Applicant’s disclosure fails to depict or describe the specific base structures and equivalents thereof that are necessary to perform the mounting function.
Claim 1 (lines 12-19) recites “wherein the base is connected to the lower portion of the lower grip section to allow pivotal movement of the lower grip section about a first axis in forward/rearward directions and about a second axis in inboard/outboard directions relative to the pilot’s body to allow aircraft control about the pitch and roll axis, respectively, and to also allow twisting of the lower grip section about the elongate sidestick central axis in clockwise/counterclockwise directions about [sic] to allow aircraft control about the yaw axis”. Applicant’s disclosure fails to depict or describe the specific base structures and equivalents thereof that are necessary to perform the pivotal movement allowing, aircraft control allowing, and twisting allowing functions.
Claim 1 (lines 20-25) recites “the base mounts the sidestick grip relative to the pilot’s body so as to establish forward and inboard cants, wherein the forward cant is an angle α of 10˚-17˚ relative to a latitudinal plane defined by the pitch and yaw axis, and the inboard cant is an angle β of 2˚-10˚ relative to a longitudinal plane defined by the roll and yaw axis”. Applicant’s disclosure fails to depict or describe the specific base structures and equivalents thereof that are necessary to perform the mounting and cant establishing functions.
Claim 1 (lines 28-32) recites “the (GRP) establishing a theoretical point of application of forces by a pilot’s hand onto the lower grip section of the sidestick controller to effect aircraft control about the pitch and roll axes, wherein the GRP is substantially coincident with the yaw axis and the sidestick central axis”. Applicant’s disclosure fails to depict or describe the specific GRP structures and equivalents thereof that are necessary to perform the establishing and aircraft control effecting functions. Note that a GRP would likely be at least partially a function of some articulation joint structures rather than only a function of the grip itself (e.g., such as in figure 15 of prior art to Cowling US 20220326727), such articulation structures being completely lacking in applicant’s disclosure.
In addition to the above functional clarity issues, the claims are otherwise unclear as follows:
Claim 1 recites “An elongate sidestick grip which is moveable about at least three axes to allow aircraft control about at least pitch, roll and yaw axes” which is unclear as to whether the pitch/roll/yaw axes are to refer to the same axes and the previous “at least three axes” or to additional axes. If additional, it is unclear as to whether the pitch/roll/yaw axes are to define grip movement or aircraft movement, e.g., pitch/roll/yaw of the grip or pitch/roll/yaw of the aircraft.
Claim 1 recites “directions about to allow” which is unclear as to what element “about” is to modify.
Claim 1 recites “cants” without specifying what element is to be canted (i.e., cants of what element, surface, axis, etc.).
Claim 6 recites “an inboard direction” without reference frame and is thus unclear (e.g., inboard of what element?).
In claim 10, the limitation “protrudes outwardly in an inboard direction relative to the pilot’s body” is self-contradictory such that it is unclear. Further, “inboard” is not clear with respect to a human pilot’s body (e.g., inside of the pilot’s body?).
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.
(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.
Claims 1, 5-13, 15 and 18 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Cowling US 20220326727.
The prior art structures bolded below appear to be inherently capable of meeting the claimed functions/properties italicized below in accordance with MPEP §2112.01(I) and MPEP §2114, which states that where the prior art structure is substantially identical to the claimed structure, the PTO may presume claimed functions/properties to be inherently capable thereto, thus presenting a prima facie case and properly shifting the burden to applicant to obtain/test the prior art and provide evidence to the contrary.
Claim 1 (as best understood, see 35 USC 112 rejections above). A sidestick grip (310) which is moveable about at least three axes to allow aircraft control about at least pitch, roll and yaw axes, the sidestick grip comprising: a lower grip section (lower section of 310) adapted to be gripped by a pilot’s hand, the lower grip section including upper and lower ends (upper and lower ends of lower section of 310) which define therebetween an elongate sidestick central axis (central axis of 310 defined between upper and lower ends of lower section of 310); the lower grip section including contoured concavities (contoured concavities of lower section of 310) allowing a respective one of the third fourth and fifth digits of a pilot’s hand to rest thereagainst when the lower grip section is gripped; a base (base of 310, or 320, or 520) configured to be mounted to aircraft structure laterally of a pilot’s body such that the pilot’s hand is capable of gripping the lower grip section, wherein the base is connected to the lower portion of the lower grip section to allow pivotal movement of the lower grip section about a first axis in forward/rearward directions and about a second axis in inboard/outboard directions relative to the pilot’s body to allow aircraft control about the pitch and roll axes, respectively, and to also allow twisting of the lower grip section about the elongate sidestick central axis in clockwise/counterclockwise directions about [sic] to allow aircraft control about the yaw axis, wherein the base mounts the sidestick grip relative to the pilot’s body so as to establish forward and inboard cants (as best understood, any cants of any element, surface, axis, etc., see 35 USC 112 clarity rejections), wherein the forward cant is an angle α of 10˚-17˚ relative to a latitudinal plane (as best understood, any imaginary latitudinal plane since applicant fails to claim or disclose the articulation structure necessary to define where the GRP and pitch and yaw axis occur, see 35 USC 112 clarity rejections) defined by the pitch and yaw axes, and the inboard cant is an angle β of 2˚-10˚ relative to a longitudinal plane (as best understood, any imaginary longitudinal plane since applicant fails to claim or disclose the articulation structure necessary to define where the GRP and roll and yaw axis occur, see 35 USC 112 clarity rejections) defined by the roll and yaw axis, and wherein the sidestick grip includes a grip reference point (GRP 1500, see fig.15 and written description thereof) substantially aligned with the third digit of the pilot’s hand when the lower grep section is gripped, the GRP establishing a theoretical point of application of forces by the pilot’s hand onto the lower grip section of the sidestick controller to effect aircraft control about the pitch and roll axes, wherein the GRP is substantially coincident with the yaw axis and the sidestick central axis.
Claim 5. The sidestick grip according to claim 1, further comprising a head section (upper section of 310 supporting 340) joined to the upper end of the lower grip section.
Claim 6. The sidestick grip according to claim 5, wherein the head section comprises: a transversely oriented semi-cylindrical first head portion (any curved portion near 340), and a truncated conical second head portion (any other curved portion truncated at another portion) protruding outwardly from the semi-cylindrical first head portion in an inboard direction (as best understood, see 35 USC 112 clarity rejection).
Claim 7. The sidestick grip according to claim 6, wherein the first head portion comprises: a recessed arcuate guide (arcuate portion guiding/receiving the “thumbwheel or rocker switch” 340 that is recessed relative thereto and/or relative to any other part); and an arcuate wheel segment (arcuate segment of “thumbwheel” 340) operatively mounted to the recessed arcuate guide for movements in within [sic] the recessed arcuate guide in forward and aft directions relative to the pilot’s body.
Claim 8. The sidestick grip according to claim 5, wherein the lower grip section includes contoured concavities (contoured concavities of 310) allowing respective digits of the pilot’s hand to rest thereagainst when the lower grip section is gripped.
Claims 9 and 15. The sidestick grip according to claim 5 (or 1), further comprising a transition section (section transitioning between 310 and 340 joining the upper end of the lower grip section to the head section.
Claims 10. The sidestick grip according to claim 7, further comprising a first button (see written description of “The grip may include one or more input devices 340” each of which may be a “button”) which protrudes outwardly in an inboard direction relative to the pilot’s body (outward toward the index finger, see written description of “sits at the front of the grip 310”, see 35 USC 101 and 112 rejections) which is adapted to being depressed by a digit (disclosed index finger reads on any numbered digit since no reference frame is given for counting first, second, third, fourth or fifth finger/digit; and/or any finger is inherently capable of touching any outer surface of the grip when the hand grips in some manner in a broad sense) of the pilot’s hand when gripping the lower grip section.
Claims 11. The sidestick grip according to claim 5, further comprising a second button (“push to talk trigger” meets definition of button within broadest reasonable interpretation since it is disclosed as being pushed and controlled by the index finger) outwardly protruding in a forward direction from the transition section relative to the pilot’s body (outward toward the index finger, see written description of “sits at the front of the grip 310”, see 35 USC 101 and 112 rejections) and adapted to being depressed by the second digit of the pilot’s hand when gripping the lower grip section (see written description of “index finger may be used to control an input at the grip 310 [e.g., push to talk trigger]”).
Claims 12 and 18. The sidestick grip according to claim 11 (or 15), wherein a forward surface (forward surface of upper 310) of the head section includes a contoured concavity (concavity at front of upper portion of 310) to allow the second digit of the pilot’s hand to rest thereagainst.
Claim 13. The sidestick grip according to claim 11, further comprising a third button positioned so as to be canted outwardly in an outboard direction relative to the pilot’s body (any direction since outboard is recited without reference frame, see 35 USC 101 and 112 rejections) at a lateral side of the head section (any outer side since lateral is recited without reference frame) and at an elevation that is lower than an elevation of the arcuate segment of the thumb wheel (noting that the multiple disclosed input device buttons 340 would inherently have one at an elevation lower than another since “lower” is recited without reference frame).
Response to Arguments
Applicant argues that the claims have been amended to overcome the 35 USC 112 and 102 rejections set forth in the previous Office Action. This is not persuasive. The claims remain non-possessed under 35 USC 112(a), unclear under 112(b), and anticipated under 35 USC 102 as is detailed in the reworded rejections elsewhere above. Further, the amendment has necessitated new grounds under 35 USC 101 due to positive claiming of a human “pilot’s body”.
Regarding the 35 USC 112(a) and (b) rejections, note that while applicant is free to describe the invention functionally in the claims, the claimed functions must be fully supported by a written description and drawings that clearly set forth the structures and equivalents necessary to perform the claimed functions. Applicant’s disclosure lacks such structural support for the claimed functions. For instance the claim 1 “GRP” would necessarily be at least partially a function of some articulation joint structures connecting the grip to the aircraft and thereby dictating the manner in which the grip articulates, rather than only a function of the grip itself (e.g., structures similar to the articulation structures in figure 15 of the prior art to Cowling US 20220326727 would be required). The complete lack of any detailed depiction or description of any such articulation structures in applicant’s application thus render the claimed functions non-possessed and unclear. If applicant’s invention novelty requires the particulars of the manner in which the grip is intended to be articulated (e.g., articulation that dictates the location of the GRP, etc.) then the examiner suggests pursuing the novelty of such articulation in a Continuation In Part (CIP), wherein applicant can include all of the articulation structures (linkages, ball joints, swivels, and/or any other necessary connection/articulation structures) that are necessary to achieve the articulation functions and that are lacking in the current application.
Regarding the 35 USC 102 prior art rejections, all of applicant’s claimed grip structures (bolded in 35 USC 102 rejections above) are present in the prior art, and all of the functional limitations (italicized in the 35 USC 102 rejections above) are presumed to be inherently capable to the prior art structures, thereby establishing a prima facie case of anticipation and shifting burden to applicant to obtain/test the prior art grip structure to prove otherwise in accordance with MPEP 2112.01 and 2114. Applicant has failed to submit any evidence of any such testing.
Note the following regarding presumption of inherency of functions/properties in product claims:
MPEP §2112.01 (I) states “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent… [and] a prima facie case of either anticipation or obviousness has been established… the applicant has the burden of showing that they are not…” (emphasis added).
MPEP §2112 (V) states “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].’ The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
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MPEP §2112 (IV) further states “In In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997), the court affirmed a finding that a prior patent to a conical spout used primarily to dispense oil from an oil can inherently performed the functions recited in applicant’s claim to a conical container top for dispensing popped popcorn. The examiner had asserted inherency based on the structural similarity between the patented spout and applicant’s disclosed top, i.e., both structures had the same general shape. The court stated: [N]othing in Schreiber’s [applicant’s] claim suggests that Schreiber’s container is of a ‘different shape’ than Harz’s [patent]. In fact, [ ] an embodiment according to Harz (Fig. 5) and the embodiment depicted in Fig. 1 of Schreiber’s application have the same general shape. For that reason, the examiner was justified in concluding that the opening of a conically shaped top as disclosed by Harz is inherently of a size sufficient to ‘allow [ ] several kernels of popped popcorn to pass through at the same time’ and that the taper of Harz’s conically shaped top is inherently of such a shape ‘as to by itself jam up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package when the top is mounted to the container.’ The examiner therefore correctly found that Harz established a prima facie case of anticipation. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.”
MPEP §2114(I) states “Apparatus claims must be structurally distinguishable from the prior art… While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).”
MPEP §2114(II) states “[the] Manner of operating the device does not differentiate apparatus claim from the prior art… A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material”. The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.)” (emphasis in original).
In In re Best the court relied upon In re Ludke and In re Brown to explain that “Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludke, supra. Whether the rejection is based on 'Inherency' under 35 USC 102, on 'prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972)" (emphasis added) In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977);
In re Schreiber found that "choosing to define an element functionally, i.e., by what it does, carries with it a risk... [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” (emphasis added) See In Re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
In re Schreiber held that “Apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78 44 USPQ2d 1429, 1431-32 (Fed.Cir.1997).
In re Swinehart and In re Ludtke held that “[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” (emphasis added) In re Swinehart, 58 CCPA --, --F.2d --, 169 USPQ 226 (1971), and In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA 1971).
In re Brown held that “[I]t is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” (emphasis added) In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
In re King held that "Contrary to appellant's reasoning, after the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to appellant to prove that the subject matter shown to be in the prior art does not posses the characteristic relied on… Here, appellant’s burden before the board was to prove that Donley’s structure does not perform the so-called method defined in the claims when placed in ambient light. Appellant did not satisfy that burden, it did not suffice merely to assert that Donley does not inherently achieve enhanced color through interference effects, challenging the PTO to prove the contrary by experiment or otherwise. The PTO is not equipped to perform such tasks.” In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986).
In re Spada held that “Spada was reasonably required to show that his polymer compositions are different from those described by Smith. This burden was not met by simply including the assertedly different properties in the claims. When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
See Hewlett-Packard Co. v. Bausch & Long Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) held that “Apparatus claims cover what a device is, not what a device does.”
Conclusion
Applicant's amendment necessitated the new grounds 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
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