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. 12,097,632 (the ‘632 patent) 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
No information disclosure statement (IDS) has been received in this reissue application. The examiner has considered the references cited during the original prosecution of the patent. Any reference again cited/applied in this reissue application is listed on the PTO-892 form included herewith. Should applicant wish to ensure that all of the references cited in the original patent are considered and cited in the reissue application, an IDS in compliance with 37 CFR 1.97 and 1.98 should be filed in this reissue application. See MPEP §§ 609 and 1406.
Maintenance Fees
Applicant is reminded that the “filing of a reissue application does not alter the schedule of payments of maintenance fees on the original patent.” (See MPEP 1415.01). A review of the maintenance fees of the ‘632 patent shows that the window for paying the 3.5 year maintenance fee is not yet open.
Matters of Form
37 CFR 1.173(d) requires changes made relative to the patent to be shown by markings, wherein matter to be omitted by reissue must be closed in brackets and matter to be added by reissue must be underlined. Applicant’s preliminary amendment improperly shows omitted text with strike through. Additionally, the newly added claim is not underlined in its entirety. Correction in Applicant’s response to this action is required.
Although not required, it is suggested that the first line of the specification be amended to contain language to help ensure that the Office recognizes the application as a reissue application even though the application data sheet contains the benefit claim(s).
Oath/Dec – Objected to and Claim Rejections - 35 USC § 251
The reissue oath/declaration filed with this application is objected to because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
MPEP 1414 II. (B) states that "in identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase or expression in the specification or in an original claim and how it renders the original patent wholly or partly inoperative." Applicant’s error statement fails state how the single word, phrase or expression renders the original patent wholly or partly inoperative. Applicant may wish to state that “Patent claim 1 was unduly limiting by reciting that “the base housing is received by lateral motion”” or that “Patent claim 1 recites that “the base housing is received for lateral motion” and this phrase is unnecessary for patentability.”
Claims 1-6 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251 - Recapture
Claims 1-6 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 1-6 are broader in scope than patent claims 1-19. Reissue claims 1-6 do not require the following limitations which were present in all of the patent claims:
“the base housing is received for lateral motion” and
“a pivoting handles for manual movement of the base housing on the support frame; and a switch responsive to pivoting of the pivoting handle to activate the driver motor and the turntable”
Therefore, step 1 of the three-step test is met for reissue claims 1-6.
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 ‘632 patent, the Examiner rejected claims 1-3 and 5 over art in a non-final office action mailed on May 2, 2024. The Examiner indicated claims 4 and 6-7 as containing allowable subject matter and 16-19 as containing allowable subject matter.
Applicant filed a response on May 30, 2024 amending independent claim 1 to include the following limitation:
“wherein the base housing is received for lateral motion on a support frame to vary a lateral disposition of the slices, and wherein the base housing comprises: a pivoting handle for manual movement of the base housing on the support frame; and a switch responsive to pivoting of the pivoting handles to activate the drive motor and the turntable”
By this amendment, the Applicant incorporated claim 4 (and intervening claim 3), which was indicated by the Examiner as containing allowable subject matter, into independent claim 1 to distinguish the claimed invention from the prior art. The incorporated subject matter thus constitutes a surrender-generating limitation (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 of 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 1 is broadened with respect to patent claim 1 to omit:
the limitation requiring “the base housing to be received for lateral motion” and
“a pivoting handle for manual movement of the base housing on the support frame; and a switch responsive to pivoting of the pivoting handles to activate the drive motor and the turntable”
The omission of items (a) and (b) is an omission in the area of surrender generating limitations. Item (b) is reintroduced in dependent claim 6, however item (a) is not found in its entirety in any of the dependent claims. Therefore, step 2 of the three-part test is met for all reissue claims 1-6
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 in order 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 1-6 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 1-6 improperly recapture surrendered subject matter.
Claim Rejections - 35 USC § 251 - New Matter
The following is a quotation of 35 U.S.C. 251(a):
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-6 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought, as discussed in detail below in the rejections under 35 U.S.C. 112(a) for lack of written description.
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.
Claims 1-6 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 1 recites “the base housing or upper housing is received for lateral motion on a support frame.” Applicant’s disclosure does not appear to provide any support for an upper housing being received on a support frame for lateral motion. The ’632 patent describes the base housing translating with respect to a base frame (127) of the support frame (120) in column 3, lines 10-27. No discussion of the upper housing moving to enable lateral deposition of the slices is found in Applicant’s original disclosure.
14. 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 4 and 5 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.
Claim 4 recites the phrase “the varying radius of the cam” in line 10. This phrase lacks sufficient antecedent basis. It appears applicant is referring the - - the radially varying outer surface- - as recited in lines 3-4 of claim 4. Clarification is required.
Claim 5 recites the phrase “more than one outer roller bearings” in line 8. The phrase “more than one” in combination with the plural “bearings” makes this phrase unclear. It appears Applicant intended to recite - - more than one outer roller bearing - - however clarification is required.
Claim 5 recites the phrase “the can ring” in line 10. It appears as if the word “can” should be replaced with the word - - cam - -.
Claim 5 recites the phrase “bearing to radially varying outer surface” in line 15. Clarification of this phrase is required. It appears Applicant intends to recite - - bearing on the radially varying out surface - -.
Claim Rejections - 35 USC § 102
4. 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.
5. Claims 1-3 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Webster et al. (2014/0087048 A1).
Regarding claim 1, as best understood, Webster teaches a slicing machine 10 comprising:
an upper housing (defined by the section above the upper wall 58; Fig. 3) having at least one feeder tube 66 that receives for an elongate food article 14 for vertical movement;
a cutting plate 16 horizontally attached beneath the upper housing for rotation and positioned to perpendicularly receive the elongate food article 14 at a respective position offset from a center of rotation 103 of the cutting plate 16;
at least one reverse involute cutting blade 90 that slices the elongate food article, is attached to the cutting plate 16, and having a cutting edge with an upward bevel 98 (Fig. 5A);
a curved slot 100 (Figs. 4 and 5A-5C) formed through the cutting plate 16 beneath the respective cutting edge 98 to receive slices of the elongate food article,
a drive motor 89 having a drive shaft 91 that is mechanically coupled to the cutting plate 16 at the center of rotation 103 (Figs. 4 and 6; and Col. 3, paragraph [0032]) to rotate the cutting plate 16; and
a base housing 24 (Fig. 2) positioned below the upper housing, wherein the base housing 24 or upper housing is received for lateral motion (on the guide rails 130, 132; Fig. 6) on a support frame to vary the lateral deposition of the slices, and wherein the base housing comprises:
a turntable 134 (Fig. 3) attached for rotation to the base housing 24 and the turntable supports a food substrate 22 that receives the slices of the elongate food article.
See Figs. 1-7 in Webster. It should be noted that the driveshaft 91 of the motor 89 and the cutting plate 16 are coaxial and connected at the central opening 105 (paragraph [0032], lines 4-11). Therefore, the drive shaft 91 of the motor 89 is mechanically coupled to the cutting plate 16 at the central axis 103 to rotate the cutting plate 16.
Regarding claim 2, Webster teaches everything noted above including a control system (defined as a CPU system 86; paragraphs [0030, [0041]) that sets a first rotation speed of the drive motor (CPU 86 controls the motor 89; paragraphs [0030]) and sets a second rotation speed of the turntable.
Regarding claim 3, Webster teaches everything noted above including that the upper housing comprises an ice well (defined by the feeder tubes of the housing which could receive ice) in which the at least one feeder tube is exposed for cooling by ice added to the ice well.
Claim Rejections - 35 USC § 103
6. 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.
To the degree that it could be argued Webster does not explicitly shows that the drive shaft is mechanically coupled to at the center of rotation to the cutting plate, the rejection below is applied.
7. Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Webster in view of Fritz-Jung et al. (2011/0209661 A1), hereinafter Fritz.
Regarding claim 1, as best understood, Webster teaches a slicing machine 10 comprising:
an upper housing (defined by the section above the upper wall 58; Fig. 3) having at least one feeder tube 66 that receives for an elongate food article 14 for vertical movement;
a cutting plate 16 horizontally attached beneath the upper housing for rotation and positioned to perpendicularly receive the elongate food article 14 at a respective position offset from a center of rotation 103 of the cutting plate 16;
at least one reverse involute cutting blade 90 that slices the elongate food article, is attached to the cutting plate 16, and having a cutting edge with an upward bevel 98 (Fig. 5A);
a curved slot 100 (Figs. 4 and 5A-5C) formed through the cutting plate 16 beneath the respective cutting edge 98 to receive slices of the elongate food article,
a drive motor 89 having a drive shaft 91 that is mechanically coupled to the cutting plate 16 at the center of rotation 103 (Figs. 4 and 6; and Col. 3, paragraph [0032]) to rotate the cutting plate 16; and
a base housing 24 (Fig. 2) positioned below the upper housing, wherein the base housing 24 or upper housing is received for lateral motion (on the guide rails 130, 132; Fig. 6) on a support frame to vary the lateral deposition of the slices, and wherein the base housing comprises:
a turntable 134 (Fig. 3) attached for rotation to the base housing 24 and the turntable supports a food substrate 22 that receives the slices of the elongate food article.
It could be argued that Webster does not explicitly shows that the drive shaft of the drive motor is mechanically coupled to the cutting plate at the center of rotation to rotate the cutting plate. However, Fritz teaches a drive shaft 520 of a drive motor 516 mechanically coupled to a cutting plate 544 (of the cutting assembly 518) at the center of rotation of the cutting plate (Fig. 10).
It would have been obvious to a person of ordinary skill in the art to couple the drive shaft of Webster’s motor at the center of the cutting plate, as taught by Fritz, in order to reduce unwanted vibrations due to rotational offsets. Alternatively, it would have been obvious to a person of ordinary skill in the art to couple the drive shaft of Webster’s motor at the center of the cutting plate, as taught by Fritz, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 2, Webster teaches everything noted above including a control system (defined as a CPU system 86; paragraphs [0030, [0041]) that sets a first rotation speed of the drive motor (CPU 86 controls the motor 89; paragraphs [0030]) and sets a second rotation speed of the turntable.
Regarding claim 3, Webster teaches everything noted above including that the upper housing comprises an ice well (defined by the feeder tubes of the housing which could receive ice) in which the at least one feeder tube are exposed for cooling by ice added to the ice well.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Fitch (4,960,025) and Thiry (4,112,834) both disclose slicing and distribution machines for food products.
9. 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:
/JOSHUA KADING/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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