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 of Species 1 (as depicted in Figures 7-15) in the reply filed on 11/24/2025 is acknowledged.
Claim 8 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species and subspecies, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/24/2025.
The traversal is on the ground(s) that the claims can be examined without a serious burden, because the generic claim 1 includes core elements of the invention that constitutes the majority of the search burden, and searching two variations (i.e., the two species) of an assembly for removing bast from the stripper member would not impose a serious burden. This is not found persuasive because the two species are patentably distinct from one another and including divergent claimed subject matter, and search and examination of more than one invention is a serious burden to the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-7 are being treated on the merits.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the "turn member" in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 4, "each section" appears to read "each of the plurality of plant stalk sections" for clarity and proper antecedent basis;
In claim 1, line 5, "a one" appears to be redundant.
Appropriate correction is required.
Claim Interpretation
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: "bend member" and "turn member" in claim 1; "infeed assembly" in claim 2; and "assembly" in claim 6.
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.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation "turn member" which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the writing disclosure fails to provide any corresponding structure, material, or acts for performing the claimed function. The specification does not provide a clear description for the claimed "turn member" and the drawings fail to show the "turn member". There is a lack of written description for this limitation.
The remaining claims each depend from a rejected base claim and are likewise rejected.
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 1-7 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitations "bend member" and "turn member", which render the claim indefinite. Both of the limitations invoke 35 U.S.C. 112(f); however, the specification does not clearly provide a structure for "turn member". The specification states "spreading draw edges (a first draw edge 114 and a second draw edge 116) in opposite directions away from the bend, so as to cause turns that move along the bast 110 and that thus separate the bast 110 from the hurd 108 as each turn passes" (para. 0038); and para. 0039 states "the bend member 112 comprises the first draw edge 114 and the second draw edge 116" (para. 0039). It is unclear whether the "bend member" and "turn member" are the same structure, i.e., a first draw edge and a second draw edge. For examination purposes, the examiner has interpreted that "bend member" and "turn member" are either the same structure or different structures.
Claim 1 recites the limitation "the hurd layer". There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the limitation has been construed to be the inner hurd.
Claim 1 recites the limitation "the vicinity of the bend member", which renders the claim indefinite. First, there is insufficient antecedent basis for "the vicinity" in the claim. Second, the term "vicinity" is a relative term and it is unclear which area is included or excluded by the term "vicinity". Therefore, the metes and bounds of the claim are unclear and cannot be ascertained.
Claim 4 recites the limitations "the rotatable beam" and "the first stripper blade", which renders the claim indefinite. Claim 4 depends from claim 1; however, the rotatable beam and the first stripper blade are first recited in claim 3. There is insufficient antecedent basis for these limitations in the claim. For examination purposes, the examiner has interpreted that claim 4 depends from claim 3.
Claim limitation “turn member” in claim 1 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. 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.
The remaining claims each depend from a rejected base claim and are likewise rejected.
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 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.
(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 1-2 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paulitz (US 2016/0270315 A1).
Regarding claim 1, Paulitz discloses an apparatus (paras. 0043-0046; claim 42) for decorticating a piece of plant stalk having an outer bast and an inner hurd (paras. 0043-0046; claim 42), the apparatus comprising:
a) a splitter (a dividing agent comprising blade 19; fig. 1b; paras. 0044, 0082) for splitting the piece of plant stalk lengthwise to create a plurality of plant stalk sections (fig. 1b; paras. 0044, 0082), each section having a bast side, a hurd side and two ends (fig. 1b; para. 0082);
b) a bend member (a bending agent at bend point K, K' and K'', the bending agent being a bar comprising two lateral draw edges; figs. 2-3; paras. 0035, 0045, 0085) about which to make a bend in a one of the plant stalk pieces (see figs. 2-3; paras. 0084-0085), with the hurd on the outside of the bend and bast on the inside of the bend (figs. 2-4), so as to break the hurd layer without severing the bast layer (figs. 2-4; paras. 0084-0085). Applicant, in para. 0039 of the specification, has defined the bend member comprises a first draw edge and a second draw edge. Therefore, the bend member of Paulitz meets the claimed requirement.
Paulitz further discloses:
c) a turn member (a bending agent at bend points A, A' and A'', the bending agent being a long bar comprising two lateral draw edges adjacent stem parts 3a and 3b respectively; fig. 3; paras. 0045, 0084-0085, 0094) for moving along the bast from the vicinity of the bend member (all three bending points A, K, and M will move; figs. 3-5; para. 0085), thus causing a turn to move along the bast (figs. 3-5), separating the bast from the hurd as the turn passes (figs. 3-5), resulting in a portion of bast spanning a gap between the bend member and the turn member (a gap between A' and K', or between A'' and K''; see figs. 4-5) and
d) a stripper member (a separating agent at J, J' and J''; figs. 4-5; paras. 0046, 0087) for passing through the gap between the bend member and the turn member (see figs. 4-5), so as to fold the bast about the stripper member and draw the bast past the bend member and the turn member (fig. 5; para. 0087), so as to cause turns to move along the bast to the ends of the plant stalk section (fig. 5; para. 0087), thus separating the bast from the hurd as the turns pass (fig. 5; para. 0087).
Regarding claim 2, Paulitz discloses the apparatus of claim 1, and further discloses the apparatus further comprising an infeed assembly (pair of rolling mills 20; fig. 1b; para. 0082) for flattening the piece of plant stalk and bringing the flattened piece of plant stalk into engagement with the splitter (fig. 1b; para. 0082). Applicant, in para. 0057 of the specification, has defined that infeed assembly comprises flattening rollers. Therefore, the infeed assembly of Paulitz meets the claimed requirement.
Regarding claim 5, Paulitz discloses the apparatus of claim 1, and further discloses wherein the bend member comprises a movable draw bar (the bending agent is a bar being movable; paras. 0035, 0045, 0085).
Claims 3-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paulitz (US 2016/0270315 A1) in view of Frische (GB 527,056 A).
Regarding claim 3, Paulitz discloses the apparatus of claim 1. Paulitz does not explicitly disclose wherein the stripper member is a first stripper blade mounted at a first end of a rotatable beam and the first stripper blade is curved with a constant radius about an axis of rotation of the rotatable beam. However, Paulitz does disclose wherein the stripper member can be a bar or an edge. Further, Frische, in an analogous art, teaches an apparatus (figs. 1-3; p. 1, ll. 8-13; claim 2) for decorticating a piece of plant stalk having an outer bast and an inner hurd (stalk 1; figs. 1-2; p. 2, ll. 61-65) comprising a stripper (rotary peeler 8; figs. 1-3; p. 2, ll. 95-102), the stripper comprising a stripper member (a first peeling cutter 12; see figs. 1, 3 and annotated fig. 2; p. 2, ll. 122-130; p. 3, ll. 1-3), wherein the stripper member is a first stripper blade (a first peeling cutter 12; see figs. 1, 3 and annotated fig. 2) mounted at a first end of a rotatable beam (shaft of the rotary peeler 8; figs. 1-3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the stripper member as disclosed by Paulitz, with wherein the stripper member is a first stripper blade mounted at a first end of a rotatable beam as taught by Frische, in order to use a suitable stripper member for effectively separating the bast from the inner hurd. In addition, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the invention to have configured the shape of the peeling cutters 12 to be curved with a constant radius about an axis of rotation of the rotatable beam, in order to provide the peeling cutters with another suitable shape to peel the bast. Such a modification would have involved a mere change in shape of a component. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results, therefore is not considered to be a patentably distinct limitation. See MPEP 2144.04 (IV)(B).
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Annotated Fig. 2 from GB 527,056 A
Regarding claim 4, Paulitz and Frische, in combination, disclose the apparatus of claim 3. Paulitz does not disclose the apparatus further comprising a second stripper blade mounted at a second end of the rotatable beam opposite the first stripper blade. However, Frische further teaches wherein the apparatus further comprising a second stripper blade (a second cutter 12; see figs. 1, 3 and annotated fig. 2; p. 2, ll. 122-130) mounted at a second end of the rotatable beam opposite the first stripper blade (figs. 1-3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the apparatus as to further comprise a second stripper blade mounted at a second end of the rotatable beam opposite the first stripper blade, as taught by Frische, in order to enhance the stripping efficiency by multiple stripper blades when the shaft is rotated.
Regarding claim 6, Paulitz and Frische, in combination, disclose the apparatus of claim 3. Paulitz does not explicitly disclose the apparatus further comprising an assembly for removing bast from the stripper member. However, Frische, teaches the apparatus further comprising an assembly (endless belts 5, 5a; fig. 2; p. 2, ll. 105-110) comprising a rotatable belt (endless belts 5, 5a being rotatable; fig. 2) positioned so as to engage a leading edge (a leading edge of peeling cutter 12 when rotating; see fig. 2) of the stripper member for removing bast from the stripper member (fig. 2; p. 2, ll. 105-110). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the apparatus as disclosed by Paulitz, with the apparatus further comprising an assembly for removing bast from the stripper member as taught by Frische, in order to provide a suitable configuration for automatically transport and remove the piece of plant stalk through the stripper member. Applicant, in para. 0067 of the specification, discloses wherein the assembly for removing bast from the stripper member comprises a rotatable belt positioned so as to engage a leading edge of the stripper member when the apparatus is in use. Therefore, the assembly for removing bast from the stripper member of Villanueva meets the claimed requirement.
Regarding claim 7, Paulitz and Frische, in combination, disclose the apparatus of claim 6. As discussed for claim 6, by combination of Paulitz and Frische, the assembly for removing bast from the stripper member would comprise a rotatable belt positioned so as to engage a leading edge of the stripper member about which the bast is folded.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional relevant references cited on attached PTO-892 form(s) can be used to formulate a rejection if necessary. Einstein (GB 191109834A) and Mierisch (WO 97/45573) also each disclose an apparatus for decorticating a piece of plant stalk comprising a splitter and pulling means.
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/AIYING ZHAO/Primary Examiner, Art Unit 3732