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(c) requires “Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e. pending or cancelled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of support in the disclosure of the patent for the changes made to the claims.” No such explanation of support was provided with Applicant’s amended claims filed on July 9, 2026. Applicants often present the explanation of support in a tabular form, identifying column and line number in the patent where support for each claim amendment can be found. Correction is required.
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 amendment improperly shows omitted text with strike through. Correction 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
Applicant’s supplemental reissue declaration filed on July 9, 2026 has been reviewed. It is noted that while Applicant is not required to use the PTO/AIA /06 form, use of the form is highly recommended to ensure that all required data is included. Applicant’s supplemental reissue oath/declaration, for example, fails to list the filing date of the reissue application with which the error statement is associated.
The error statement provided in the supplemental reissue declaration is acceptable. It should be noted, however, that a simpler error statement would suffice. 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 2 ½ page error statement fulfills all of the requirements of the error statement, however a statement that “Patent claim 1 was unduly limiting by reciting “the base housing is received for lateral motion on a support frame.” This claim language is unnecessary for patentability.” would be equally sufficient.
Due to the fact that not all data required by form PTO/AIA /06 was included in the supplemental reissue declaration provided on July 9, 2026, claims 1-19 remain rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
Claim Rejections - 35 USC § 251 - Recapture
Claims 1-5 and 7-19 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 1-19 are broader in scope than patent claims 1-19. Reissue claims 1-19 do not require the following limitations which were present in all of the patent claims:
“a reverse involute cutting blade”;
“the base housing is 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 handle to activate the driver motor and the turntable”.
Therefore, step 1 of the three-step test is met for reissue claims 1-19.
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, 6-7 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:
“at least one reverse involute cutting blade”;
“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 (b) and (c) is an omission of limitations relied upon by Applicant in the original application to make the claims allowable over art. Items (a), (b) and (c) are reintroduced in dependent claim 8. Therefore, step 2 of the three-part test is met for reissue claims 1-7 and 9-12.
Reissue claim 13 is broadened with respect to patent claim 1 to omit:
“at least one reverse involute cutting blade”;
“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 (b) and (c) is an omission of limitations relied upon by Applicant in the original application to make the claims allowable over art. Items (a) and (b) are missing from dependent claims 14-15. Therefore, step 2 of the three-part test is met for reissue claims 13-15.
Reissue claim 16 is broadened with respect to patent claim 1 to omit:
at least one reverse involute cutting blade”;
“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 (b) and (c) is an omission of limitations relied upon by Applicant in the original application to make the claims allowable over art. Items (a) and (b) are missing from dependent claims 17-19. Therefore, step 2 of the three-part test is met for reissue claims 16-19.
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. Amended reissue claims 1, 13 and 16 each require an “involute cutting blade.” This limitation constitutes a narrowing relative to item (a) of the SGL. Amended reissue claims 1, 13 and 16 each require “the cutting plate and the turntable are laterally repositionable relative to one another to vary a lateral deposition of the slices of the food substrate supported by the turntable.” This limitation constitutes a narrowing relative to item (b) of the SGL. Claims 1, 13, and 16 are not narrowed in any way relative to item (c) of the SGL. Items (a) and (b) constitute limitations that are well known in the prior art given that they are limitations that were found in the prior art by the Examiner in the underlying prosecution. Given that the narrowing limitations in the amended reissue claims are well known in the art, reissue claims 1-5 and 7-19 are “not materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.” (See MPEP 1412.02 III B 4).
Therefore, reissue claims 1-7 and 9-19 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 1-19 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 1-19 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.
Claims 1, 13 and 16 each recite “at least one involute cutting blade.” Applicant’s disclosure does not provide support for an “involute cutting blade” in general. The disclosure only provides support for a specific “reverse involute cutting blade.” If Applicant would like to claim a broader “involute cutting blade” the specification must show that Applicant had possession of a broader involute cutting, beyond only the specific reverse involute cutting blade. Applicant’s disclosure does not have sufficient written description support for any involute cutting blade other than a reverse involute cutting blade.
Claims 1, 13 and 16 each recites “wherein the cutting plate and the turntable are laterally repositionable relative to one another to vary a lateral deposition of the slices on the food substrate supported by the turntable.” The disclosure does not support any lateral repositioning of the cutting plate relative to the turntable as claimed. The disclosure only supports the base housing being received for lateral motion on a support frame to vary the lateral deposition of slices. Applicant’s disclosure does not have sufficient written description support for a broad claiming of lateral repositioning of the cutting plate relative to the turntable, which would encompass the cutting plate moving laterally with respect to the turntable, given that the description only discloses a single mechanism for enabling lateral repositioning
Claims not specifically addressed are rejected as being dependent upon a rejected base claim.
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.
Claims 1-3, 7 and 9 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 involute cutting blade 90 attached to the cutting plate (16) and configured to slice the elongate food article, the at least one involute2 cutting blade (90) 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 128 (Fig. 2) positioned below the upper housing;
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,
wherein the cutting plate (16) and the turntable (143) are laterally repositionable relative to one another (given that turntable (143) is mounted on carrier (24) and carrier is mounted for translation within chamber (18) ad described in paragraph [0038]) to vary a lateral deposition of the slices on the food substrate supported by the turntable.
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.
Regarding 7, the at least one involute cutting blade comprises at least one reverse involute cutting blade, given that paragraph [0032] discloses how the leading edge (98) of blade (90) can follow “a path of increasing radius between the first end 106 and the second end 108” or “that varying radius may also be a decreasing radius.”
Regarding claim 9, the base housing (128) is received for lateral motion on a support frame (130)(132), the slicing machine further comprises a base drive assembly (144) including a base drive motor (“first motor unit (inside base) to cause translation movement of the base” paragraph [0040]) configured to translate the base housing (128) relative to the support frame (130)(132).
Claim Rejections - 35 USC § 103
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 show the drive shaft is mechanically coupled to at the center of rotation to the cutting plate, the rejection below is applied.
Claims 1-3, 7 and 9 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 involute cutting blade 90 attached to the cutting plate (16) an configured to slice the elongate food article, the at least one involute3 cutting blade (90) 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,
wherein the cutting plate (16) and the turntable (143) are laterally repositionable relative to one another (given that turntable (143) is mounted on carrier (24) and carrier is mounted for translation within chamber (18) ad described in paragraph [0038]) to vary a lateral deposition of the slices on the food substrate supported by the turntable.
It could be argued that Webster does not explicitly show 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.
Regarding claim 7, the at least one involute cutting blade comprises at least one reverse involute cutting blade, given that paragraph [0032] discloses how the leading edge (98) of blade (90) can follow “a path of increasing radius between the first end 106 and the second end 108” or “that varying radius may also be a decreasing radius.”
Regarding claim 9, the base housing (128) is received for lateral motion on a support frame (130)(132), the slicing machine further comprises a base drive assembly (144) including a base drive motor (“first motor unit (inside base) to cause translation movement of the base” paragraph [0040]) configured to translate the base housing (128) relative to the support frame (130)(132).
Response to Amendment/Arguments
Applicant’s amendment and remarks filed on July 9, 2026 have been fully considered.
Applicant’s amendments do not comply with 37 CFR 1.173 (c) and (d) as described above.
Applicant’s substitute reissue oath/declaration has been reviewed. Remaining issues are set forth above.
With respect to the recapture rejection, Applicant argues that the pending claims do not seek generic slicing machine scope that omits lateral positioning all together. The amended reissue claims now recite “wherein the cutting plate and the turntable are laterally repositionable relative to one another to vary a lateral deposition of the slices on the food substrate supported by the turntable.” As set forth in the above recapture rejection, during the prosecution of the underlying patent, claim 1 was amended to incorporate the following subject matter to place the claim in condition for allowance:
“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”
The limitation “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” was indicated by the Examiner in the underlying prosecution as being the allowable subject matter. The pending reissue claims maintain a portion of the SGL in broadened form by reciting “wherein the cutting plate and the turntable are laterally repositionable relative to one another to very a lateral deposition of the slices on the food substrate supported by the turntable.” The portion of the SGL that is maintained in broadened form, however, is well known in the prior art as reflected by the Examiner’s rejection of claim 3 in the underlying prosecution of the patent. See MPEP 1412.02 (III) (B) (4). The reissue claims when taken as a whole, are not materially narrowed to avoid recapture.
Applicant argues that even if the Office determines the pivoting handle and responsive switch limitations constitute the SGL, claims 9-12 are materially narrowed with respect to the pivoting handle and responsive switch. The Examiner disagrees. The limitations set forth in claims 9-12 do not appear to pertain to a handle or switch, or a means for initiating lateral movement of the base and initiating rotation of the turntable. Instead, the limitations of claims 9-12 relate to the drive motor, gear box, lead screw and programmable controller for controlling the drive motor and the turntable in coordination with the drive motor.
Applicant argues claims 13 and 16 are independently and materially narrowed by reciting limitations to the stabilizer assembly. The Examiner agrees that claims 13 and 16 recite narrowing limitations pertaining to the stabilizer assembly, however these limitations are unrelated to the SGL and therefore do not overcome the recapture rejection. Claims 13 and 16 are broadened by entirely omitting the item (c) of the SGL and are narrowed in unrelated aspects (limitations related to the stabilizer arm). See MPEP 1412.02 (III) (B)(1).
With respect to the 251 New Matter and 35 USC 112 (a) rejections, Applicant argues that the relative-positioning limitation set forth in claims 1, 13 and 16 does not introduce new matter by claiming a particular undisclosed upper housing translation mechanism. The Examiner agrees that a particular upper housing translation mechanism is not claimed. The claims, however, broadly recite lateral repositioning. Applicant’s disclosure only provides written description support for lateral repositioning by movement of the base housing on a support frame. The disclosure does not set forth the lateral movement of the base housing on the support frame is one of multiple possible mechanisms for enabling lateral repositioning. Applicant has failed to set forth where written description support for lateral repositioning in general is provided in the disclosure. MPEP 2163 notes that “the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species.” Applicant’s written description only describes a single mechanism for facilitating lateral movement, and not a representative number of mechanisms for providing lateral movement. Therefore, claims to the broader genus (i.e. cutting plate and turntable being laterally repositionable relative to one another) is not expressly, implicitly or inherently supported by the disclosure.
Similarly, Applicant argues that disclosure of a reverse-involute cutting blade is a species within the newly claimed involute cutting blade and therefore constitutes written description support of the broader involute cutting blade. Nothing in the disclosure supports that the reverse-involute blade is one species of several species that can be used in the invention. MPEP 2163 notes that “the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species.” Applicant’s written description only describes a single species, not a representative number. Therefore, claims to the broader genus (i.e. the involute blade in general) are not expressly, implicitly or inherently supported by the disclosure of the reverse-involute cutting blade.
Applicant’s amendments have overcome the 112(b) rejections set forth in the Non-Final rejection of June 29, 2026.
With respect to the prior art, Applicant argues that Webster fails to disclose an involute profile. As set forth above, the Examiner has taken the broadest reasonable interpretation of the term “involute” to be a curve that extends in a spiral. The nature by which the blade (90) of Webster curves, from one end having one radius to an opposite end curved about a second different radius, appears to equate to an involute profile in the broadest sense.
Applicant further argues that Webster does not anticipate relative lateral repositioning of the cutting plate and the turntable. In paragraph [0038] Webster describes carrier 24 that is configured for linear movement within the chamber (18) toward and away from the access door or in any direction along multiple axes to position a pizza relative to the chute. Paragraph [0040] describes positioning every region of the pizza to be situated directly beneath the chute in order to receive sliced topping falling therefrom. The movement described in paragraphs [0038] and [0040] constitutes the cutting plate (which is rotatable but not translatable) and the turntable (which is mounted for rotation on the carrier (24) which in turn is mounted for translational movement in any direction) being repositionable relative to one another as claimed.
Applicant further argues that Webster does not disclose an ice well. The Examiner maintains that the feeder tubes are capable of receiving ice and therefore one of the disclose feeder tubes could fulfill the function of being an ice well as claimed, wherein ice within one feeder tube would cool a food product held within a neighboring feeder tube by the nature of the proximity of the two tubes. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, one of the feeder tubes is capable of receiving ice and therefore meets the limitations of claim 3.
The Examiner agrees that Webster does not disclose the stabilizer assembly as required by claims 13-15 and 16-19.
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.
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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).
2 Merriam Webster defines the term “involute” as a being curled spirally. Webster describes the leading edge (98) of the blade (90) as following a path of varying radius from the central opening (105) between the first end (106) and second end (108). The leading edge following a path of increasing radius which constitutes a spiral in the broadest reasonable interpretation of the term.
3 Merriam Webster defines the term “involute” as a being curled spirally. Webster describes the leading edge (98) of the blade (90) as following a path of varying radius from the central opening (105) between the first end (106) and second end (108). The leading edge following a path of increasing radius which constitutes a spiral
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