NON-FINAL OFFICE ACTION after
Withdrawal from Issue due to IDS
This application remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
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/Restriction Requirement
Applicant’s election without traverse of GROUP II - claims 13-21 in the reply filed on 25 APR 2025 is acknowledged. Claims 1-12 and 22-30 have been cancelled.
Priority
Acknowledgment is made of applicant's claim for domestic priority under 35 U.S.C. § 119(e).
Claim Rejections - 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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.
The inquiry during examination is patentability of the invention as the inventor or a joint inventor regards such invention. If the claims do not particularly point out and distinctly claim that which the inventor or a joint inventor regards as his or her invention, the appropriate action by the examiner is to reject the claims under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).
Claims 19, 21, and 31-33 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or joint inventor regards as the invention.
All occurrences of the “the conduit” lack antecedent basis.
The use of a confusing variety of terms for the same thing should not be permitted - MPEP 608.01(o). For example, “the first conduit” vs. “the conduit”.
Also see 37 CFR 1.121(e) Disclosure consistency. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
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 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.
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.
The instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter partes review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’ ’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
Claims 13-15 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over DE 3011379 in view of BURCH (US 6267494).
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DE 3011379 as assemblage of elements, or a kit, that provides materials capable of performing carbonation of wash water at an operation, comprising necessary parts and fittings for installation at a facility as follows with reference to the sole Figure including the kit (said assemblage of materials as in the sole Figure) capable of retrofitting said operation, wherein the materials in the assemblage seen in the Figure comprise:
(i) a container 5 for holding the wash water:
(ii) a wash water recirculation loop 8;
(iii) a pump within loop 8 to pump wash water into the recirculation loop and back into the container 5 (considered an inherent and necessary element in a recirculation loop as is well-known and as exemplified by the publication to WELKER et al. below);
(iv) a first conduit 3 configured to be operably connected to a source 2 of carbon dioxide, wherein the first conduit runs to the recirculation loop 8 to deliver carbon dioxide to wash water in the recirculation loop 8 and comprises one or more actuators 3 and/or 7 to adjust flow of carbon dioxide fed from the source 2 to the wash water in the wash water recirculation loop 8;
with the necessary parts and fittings for installation are seen in the sole Figure;
a control system at 7 to regulate the flow of carbon dioxide by being connected to metering control valve 3 and the valve 4;
a metering control valve or flow meter at 3 that meters the flow of carbon dioxide into the recirculation loop 8 “[t]hrough the metering control valve 3 is carbonic acid, gaseous, with the necessary speed and amount of the washing water supplied” (from the translation);
and a pH sensor coupled to the control system at 4.
However, DE ‘379 does not disclose the kit being packaged for shipping.
BURCH (US 6267494) discloses a kit 84 (Figure 8) for retrofit use with a concrete processing device 10 that is packaged to package the elements 42, 44, 48, 50, 56, 86 of the kit. It would have been obvious to one skilled in the art before the effective filing date of the invention to have packaged the elements of the kit of DE ‘379 as taught by BURCH for the purposes of:
Another embodiment of the present invention includes a kit for mounting on a concrete mixer to indicate when a charge hopper is in a raised position. The kit includes at least one conduit, an indicator device configured to be activated to indicate when the charge hopper is in the raised position, a valve configured to communicate with an air supply and the indicator device through the at least one conduit, wherein the valve includes an actuator moveable between a first position to deactivate the indicator device and a second position to activate the indicator device, and a contact structure configured to actuate the valve. The kit may be packaged in any type of packaging available on the market. For example, the packaging may be a box with formed inserts to support its contents.
FIG. 8 is a perspective view of a kit for marketing an embodiment of the present invention.
Referring to FIG. 8, an embodiment of the present invention is illustrated as part of a kit 84. The kit 84 is a convenient way in which embodiments of the present invention may be marketed. Included in the kit 84 is the L.P. indicator 52, mounting bracket 42, valve 44, supply and signal conduit 48 and 56, contactor structure 50, and associated hardware 86. The kit 84 may be packaged as follows. The contents of the kit 84 are positioned on a base board 88 and sealed in position with a clear plastic overlay 90 utilizing vacuum-packing methods that are well known in the art. Of course, those skilled in the art will recognize the numerous other packaging systems that may be used to package the contents, for example, boxes with inserts, plastic or paper bags, etc.
BURCH at col. 3, lines 33-45; col. 4, lines 21-22; and col. 7, lines 31-45.
Claims 13-15, 18-19, 21, and 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over DE 3011379 in view of BURCH (US 6267494) and WELKER et al. (US 2010/0246312 A1).
DE 3111379 discloses the recited subject matter as outlined above and discloses a metering control valve or flow meter at 3 that meters the flow of carbon dioxide into the recirculation loop 8 “[t]hrough the metering control valve 3 is carbonic acid, gaseous, with the necessary speed and amount of the washing water supplied” (from the translation) but assuming, arguendo, that DE 3111379 does not show the recited recirculation loop pump and flow meter, the publication to WELKER et al. discloses an apparatus that entrains a gas into concrete including a recirculation loop (between 226 and 232); the loop including a pump 240, a control valve 248, and a flow meter 244 all under the control of a control system 202 - Figures 2 and 3A.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have, if lacking, provide the recirculation loop of DE ‘379 with a pump to provide a positive displacement pressure force to force the fluid through the recirculation loop as is conventional and to provide DE ‘379 with a flow meter for the purpose of using a signal from the flow meter to control the amount of fluid passing through an injection conduit to thereby increase or decrease (i.e., modulate) the fluid flow of the injected fluid based on a predetermined set point:
Temperature controlled process water from tank 226 is supplied through a manual outlet valve 232 to a process water supply pump 240. In one embodiment, process water supply pump 240 is a vane-type, positive displacement pump driven with a variable speed drive 242 controlled by local system controller 202. Other metering pumps may be suitable. Local system controller 202 uses a signal from a flow meter 244 located downstream from supply pump 240 to increase or decrease the speed of variable speed drive 242 to increase or decrease water flow [rate] based on a predetermined set point. Process water pumped by pump 240 through flow meter 244 is directed to a process water three way valve 248. In its normal operating position, process water three way valve 248 recirculates process water back to process water supply tank 226 until such time as system 200 is activated to produce foam. When system 200 is activated to produce foam, valve 248 is repositioned to direct process water through a check valve 250 to a mixing point 274 where the process water mixes with a polymer-based solution. When system 200 is shut down, valve 248 is moved to the closed position. (per [0037].
The subject matter of claims 14 and 32, namely a kit that is packaged at a central facility and shipped to the operation, recite no further structure of said kit and as held in In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), "the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself." See MPEP 2115. Thus, the operations of packaging and shipping are operations and do not involve any structure to define over the prior art.
Allowable Subject Matter
None.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COOLEY whose telephone number is (571)272-1139. The examiner can normally be reached M-F 9:30 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLAIRE WANG can be reached on 571-272-1700. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES COOLEY/Examiner, Art Unit 1774
27 FEB 2026