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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11 and 16-17, in the reply filed on 7/9/2026 is acknowledged. Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
Claim limitations which describe the material being worked upon by the apparatus do not impart patentability to the claims, see MPEP §2115. Therefore, limitations directed to the type of material or polymer film being worked upon by the apparatus are not considered to be patentably distinct from a similar structure in the art. Likewise, the intended use of the apparatus does not differentiate the apparatus from a similar apparatus in the prior art, see MPEP §2144(II).
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:
“feed device” in claim 1, interpreted as being a roller, fan, suction device, pneumatic feed, or equivalents thereof as described in [0032] of the instant specification as published
“conveying device” in claim 8, interpreted as a pneumatic conveyor or equivalents thereof as described in [0058] of the instant specification as published
“bagging device” in claim 9 which has no corresponding structure disclosed in the specification
“metering device” in claim 10 which is interpreted as a scale or equivalents thereof as described in [0074] of the instant specification as published
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 9 invokes 112(f) for the term “bagging device” but does not describe a corresponding structure in the specification.
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 1-11 and 17 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.
Regarding claims 1 and 11 the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). These limitations are interpreted as being optional. Claims 2-11 are rejected as being dependent from claim 1.
Regarding claims 5-6 and 17, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation "between 0.5 mm, and the claim also recites "between 0.8 mm which is the narrower statement of the range/limitation. Claims 6 and 17 each recite a broader range and narrower range for each of the rows spacing, screen openings spacing, and offset spacing. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim limitation “bagging device” in claim 9 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. There is no corresponding structure for the bagging device disclosed in the specification. 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.
Claims 1-4, 7, 11, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson (US 2007/0200016.)
Regarding claim 1, Johnson meets the claimed, System for reprocessing ultra-high molecular weight polymer film offcuts, in particular membrane films, such as battery separator films (BSF films), wherein the system comprises: a feed device; (Johnson [0059] describes a conveyor 52 /roller 62 device) and a comminution device, (Johnson [0054] describes a drum 12) wherein the feed device is configured to feed an ultra-high molecular weight polymer film offcut to the comminution device,(Johnson [0062] describes the conveyor 52 feeds to the drum) and wherein the comminution device comprises at least one cutting screen, wherein the cutting screen comprises a plurality of cutting openings (Johnson [0055] describe the surface of the drum 12 has holes) and a plurality of cutting projections, (Johnson [0054]-[0055] describe knife embossments 16) wherein at least one cutting projection spans a screen opening allocated to it, (Johnson [0054]-[0055] describe knife embossment 16 is a portion of the drum which has been cut into the hole) wherein the comminution device is configured to generate relative motion between the cutting screen and the fed polymer film offcut in order to comminute the polymer film offcut (Johnson [0058]-[0059] describe the drum 12 rotates while being fed axially.)
Regarding claim 2, Johnson meets the claimed, System according to claim 1, wherein the system furthermore comprises a control device, and wherein the control device is configured to control feed speed and/or feed amount of the feed device (Johnson [0061] describes a motor controller 38 which controls the speeds of the roller 62 to control the feed speed.)
Regarding claim 3, Johnson meets the claimed, System according to claim 1, wherein the comminution device is configured to move the polymer film offcuts relative to the cutting screen, and/or wherein the cutting screen is configured rotatably (Johnson [0058]-[0059] describe the drum 12 rotates while being fed axially.)
Regarding claim 4, Johnson meets the claimed, System according to claim 1, wherein the comminution device comprises at least one rotary cutter and optionally at least one stationary cutting tool (Johnson [0058]-[0059] describe the drum 12 rotates while being fed axially.)
Regarding claim 7, Johnson meets the claimed, System according to claim 1, wherein the cutting projections each comprise a cutting edge, and wherein the cutting projections are preferably punched cutting projections (Johnson [0055]-[0056] describes the knife embossment 16 is formed via pressing a whole and sharpening the edge so it can cut.)
Regarding claim 11, Johnson meets the claim, System according to claim 1, wherein the feed device is configured to automatically collect polymer film offcuts, in particular edge offcuts, and feed these to the comminution device (Johnson [0059]-[0060] describe the conveyors and Figures 1 and 2 show the conveyors. The conveyors will automatically collect any object that is dropped on them or placed along them.)
Regarding claim 16, System for reprocessing an ultra-high molecular weight polymer membrane film offcut, comprising: a feeder (Johnson [0059] describes a conveyor 52 /roller 62 device) configured to feed an ultra-high molecular weight polymer membrane film offcut to a comminution device; (Johnson [0062] describes the conveyor 52 feeds to the drum) and the comminution device comprising at least one cutting screen comprising a plurality of cutting openings (Johnson [0055] describe the surface of the drum 12 has holes) and a plurality of cutting projections, (Johnson [0054]-[0055] describe knife embossments 16) wherein one of the plurality of cutting projections spans one of the plurality of cutting opening allocated to it, (Johnson [0054]-[0055] describe knife embossment 16 is a portion of the drum which has been cut into the hole) the comminution device configured to generate relative motion between the cutting screen and the fed polymer film offcut to comminute the ultra-high molecular weight polymer membrane film offcut (Johnson [0058]-[0059] describe the drum 12 rotates while being fed axially.)
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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 5-6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson modified by Hernandez (US 2003/0173435.)
Regarding claim 5, Johnson does not disclose the size of the openings and does not meet the claimed, System according to claim 1, wherein the screen openings comprise an equivalent diameter that ranges between 0.5 mm and 1.5 mm or ranges from 0.8 mm to 1 mm.
Analogous in the field of grating or shredding apparatus, Hernandez does not explicitly meet the claimed, System according to claim 1, wherein the screen openings comprise an equivalent diameter that ranges between 0.5 mm and 1.5 mm or ranges from 0.8 mm to 1 mm, however, Hernandez [0009] discloses that the diameter and spacing of apertures 20 on a shredding disc are result effective variables which affect the consistency (texture) of the graded product.
Since Hernandez discloses the size of the apertures affects the texture of the graded product, it would have been obvious to a person of ordinary skill in the art before the filing date to modify the size of the apertures through routine optimization and arrive at the claimed range in order to optimize the consistency and texture of the final grated product, see Hernandez [0009].
Regarding claim 6, Johnson does not disclose the spacing between the holes, rows, or offset of the holes and does not meet the claimed, System according to claim 1, wherein the screen openings are arranged in rows, wherein the rows comprise a spacing (v) that ranges from 1 mm to 3.6 mm or ranges from 1.5 mm to 2.4 mm, and/or wherein the screen openings within the rows comprise a spacing (ts) that ranges from 2 mm to 4.2 mm or ranges from 1.8 mm to 2.8 mm, and/or wherein the screen openings of neighbouring rows are arranged offset from each other by a spacing (tr) that ranges from 0.4 mm to 2.1 mm or ranges from 0.6 mm to 1.4 mm.
Analogous in the field of grating or shredding apparatus, Hernandez does not explicitly meet the claimed, System according to claim 1, wherein the screen openings are arranged in rows, wherein the rows comprise a spacing (v) that ranges from 1 mm to 3.6 mm or ranges from 1.5 mm to 2.4 mm, and/or wherein the screen openings within the rows comprise a spacing (ts) that ranges from 2 mm to 4.2 mm or ranges from 1.8 mm to 2.8 mm, however, Hernandez [0009] discloses that the diameter and spacing of apertures 20 on a shredding disc are result effective variables which affect the consistency (texture) of the graded product. Hernandez Figures 1 and 2 show the apertures 20 arranged in rows.
Since Hernandez discloses the spacing of the apertures affects the texture of the graded product, it would have been obvious to a person of ordinary skill in the art before the filing date to modify the spacing between the apertures or rows through routine optimization and arrive at the claimed range in order to optimize the consistency and texture of the final grated product, see Hernandez [0009].
Regarding claim 17, Johnson does not disclose the spacing between the holes, rows, or offset of the holes and does not meet the claimed, System according to claim 16, wherein the screen openings are arranged in rows, wherein the rows comprise a spacing (v) that ranges from 1 mm to 3.6 mm or ranges from 1.5 mm to 2.4 mm, and/or wherein the screen openings within the rows comprise a spacing (ts) that ranges from 2 mm to 4.2 mm or ranges from 1.8 mm to 2.8 mm, and/or wherein the screen openings of neighbouring rows are arranged offset from each other by a spacing (tr) that ranges from 0.4 mm to 2.1 mm or ranges from 0.6 mm to 1.4 mm.
Analogous in the field of grating or shredding apparatus, Hernandez does not explicitly meet the claimed, System according to claim 16, wherein the screen openings are arranged in rows, wherein the rows comprise a spacing (v) that ranges from 1 mm to 3.6 mm or ranges from 1.5 mm to 2.4 mm, and/or wherein the screen openings within the rows comprise a spacing (ts) that ranges from 2 mm to 4.2 mm or ranges from 1.8 mm to 2.8 mm however, Hernandez [0009] discloses that the diameter and spacing of apertures 20 on a shredding disc are result effective variables which affect the consistency (texture) of the graded product. Hernandez Figures 1 and 2 show the apertures 20 arranged in rows.
Since Hernandez discloses the spacing of the apertures affects the texture of the graded product, it would have been obvious to a person of ordinary skill in the art before the filing date to modify the spacing between the apertures or rows through routine optimization and arrive at the claimed range in order to optimize the consistency and texture of the final grated product, see Hernandez [0009].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over modified Johnson (US 2007/0200016.)
Regarding claim 8, Johnson meets the claimed, System according to claim 1, wherein the system furthermore comprises a conveying device that is configured to remove comminuted polymer film offcuts from the comminution device, Johnson [0056] describe a conveyor belt 28 which removes gratings after being shredded in the drum 12. However, as interpreted under 112(f), “conveying device” should include a pneumatic conveyor or equivalents thereof. They conveyor belt 28 of Johnson does not disclose a pneumatic conveyor. However, the embodiment described in Johnson [0071] describes a conveyor may be replaced by a pneumatic cylinder.
The courts have held that substituting one known prior art element for another according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the conveyor of Johnson for the pneumatic cylinder as disclosed in Johnson [0071] so that additional pushing force may be provided, see Johnson [0071].
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson modified by Thies (US 2022/0007894.)
Regarding claim 9, Johnson does not disclose a bagging device and does not meet the claimed, System according to claim 1, comprising furthermore a bagging device that is configured to package comminuted polymer film offcuts for storage or interim storage.
Analogous in the field of cutting or grating apparatus, Thies also describes a grating apparatus where the object to be grated is fed into the apparatus, cut by a rotating member, then falls through the rotating member and meets the claimed, System according to claim 1, comprising furthermore a bagging device that is configured to package comminuted polymer film offcuts for storage or interim storage (Thies [0020] describes a vessel 20 for collecting the cut pieces. The vessel itself is the packaging.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the grating apparatus of Johnson with the vessel of Thies in order to collect the grated pieces together, see Thies [0010].
Regarding claim 10, Johnson does not describe a metering device and does not meet the claimed, System according to claim 1, further comprising a metering device that is configured to meter comminuted polymer film offcuts and feed them to an extruder.
Analogous in the field of cutting or grating apparatus, Thies also describes a grating apparatus where the object to be grated is fed into the apparatus, cut by a rotating member, then falls through the rotating member and meets the claimed, System according to claim 1, further comprising a metering device that is configured to meter comminuted polymer film offcuts and feed them to an extruder (Thies [0046] describes the vessel has a weight sensor. The vessel is detachable as per [0072] and is capable of delivering to an extruder.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the grating apparatus of Johnson with the weight sensor of Thies in order to measure the amount of the ingredients that have already been chopped, see Thies [0046].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2003/0094522: see Figures 1 and 4B describing a processor apparatus having a cutting disk 16. Per [0023] cutting disk 16 has a hole 48 with a raised cutting edge 50.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA BARTLETT whose telephone number is (571)272-4953. The examiner can normally be reached Monday - Friday 9:00 am-5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.B./Examiner, Art Unit 1744
/John J DeRusso/Primary Examiner, Art Unit 1744
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