Detailed Action
Amendment
1. This office action is in response to applicant’s amendments dated 12-23-25 and this office action is a final rejection.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
2. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5-8 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-8 and 13 of copending Application No. 18/986,633 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3, 5-8 and 13 of the ‘633 application are substantially similar to claims 1-3, 5-8 and 13 of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 9-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 of copending Application No. 18/986,633 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 9-12 of the ‘633 application are substantially similar to claims 9-11 of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
3. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-3 and 5-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2021/0282416 to Arnote et al. in view of U.S. Patent No. 8,894,473 to Bachtle.
Referring to claim 1, Arnote et al. discloses a method for providing portions of pasty food mass in a casing, the method comprising, portions of pasty food mass located in a casing are provided by a portioning apparatus – at 120, having portioning belts – at 124,126, the portioning apparatus having a portioning belt drive – at 220a, and a looper horn – at 128, drivable by a drive – see at 628a, the portions are transferred to hooks – at 132, of a suspension machine – at 130, by the looper horn – at 128, of the portioning apparatus – at 120 – see figure 1, after the transfer of the portions, the hooks – at 132, are further transported – see figure 1, and by a controller – at 140,200,240, at least one of, the drive of the suspension machine – at 630a, the drive of the looper horn – at 628a, and the portioning belt drive – at 220a, of the portioning apparatus – at 120, are controlled, such that a defined number of portions is transferred from the portioning apparatus – at 120, to a first hook – at 132, of the suspension machine – at 130, by the looper horn – at 128, at the beginning of a production phase – see figure 1 and paragraphs [0073] thru [0084] and paragraphs [0088] thru [0091] detailing control of each of the servo motors to control the amount of sausage portions processed. Arnote et al. does not disclose the defined number is determined as a function of a path from a delivery pipe of a filling machine for providing the food mass up to the closest hook of the suspension machine relative to the looper horn. Bachtle does disclose the defined number is determined as a function of a path from a delivery pipe of a filling machine – not shown but filled sausage is disclosed, for providing the food mass up to the closest hook – at 2, of the suspension machine relative to the looper horn – at 19 – see figures 9a-10 and column 7 line 9 to column 8 line 28, where distances along the path relative to the hooks which can be the closest hook. Therefore it would have been obvious to one of ordinary skill in the art to take the method of Arnote et al. and add the number of portions as a function of a path between a filling machine and the hooks as disclosed by Bachtle, so as to yield the predictable result of providing more accurate automatic control of the device to produce the desired products.
Referring to claim 2, Arnote et al. as modified by Bachtle further discloses the controller – at 140,200,240, is designed and equipped such that the defined number of portions can be changed and set by intervention at the controller – see paragraphs [0073] thru [0084] and paragraphs [0088] thru [0091] of Arnote et al. detailing control of each of the servos.
Referring to claim 3, Arnote et al. as modified by Bachtle further discloses the number is set as a function of the weight of one portion or of multiple portions – see paragraphs [0039]-[0040] and [0103] of Arnote et al.
Referring to claim 5, Arnote et al. as modified by Bachtle further discloses a certain number of portions results mathematically as a function of the path – see column 7 line 9 to column 8 line 28 of Bachtle. Therefore it would have been obvious to one of ordinary skill in the art to take the method of Arnote et al. and add the number of portions as a function of a path between a filling machine and the hooks as disclosed by Bachtle, so as to yield the predictable result of providing more accurate automatic control of the device to produce the desired products.
Referring to claim 6, Arnote et al. as modified by Bachtle further discloses as a function of the path and the number of portions which are produced in the portioning apparatus, the controller – at 17, controls the drive of the looper horn – at 19, in such a way that a certain number of portions is transferred from the looper horn – at 19, to a hook -at 2, of the suspension machine – see figures 9a-10 and column 7 line 9 to column 8 line 28 of Bachtle. Therefore it would have been obvious to one of ordinary skill in the art to take the method of Arnote et al. and add the number of portions as a function of a path between a filling machine and the hooks as disclosed by Bachtle, so as to yield the predictable result of providing more accurate automatic control of the device to produce the desired products.
Referring to claim 7, Arnote et al. as modified by Bachtle further discloses the controller is equipped such that, the portioning apparatus – at 120, produces a number of portions connected by the casing – see figure 1 of Arnote et al., and transfers them to the looper horn – at 128, such that the number of portions is held there – see figure 1 of Arnote et al., and the number of portions is transferred while the looper horn – at 128, faces substantially downward in a vertical position – see at 128 in figure 1 of Arnote et al., and that subsequently, the predetermined number of portions is then transferred from the looper horn – at 128, to the first hook – at 132, by the looper horn – at 128, to suspend the defined number of portions at the first hook – at 132 – see figure 1 and paragraphs [0073] thru [0084] and paragraphs [0088] thru [0091] of Arnote et al.
Referring to claims 8 and 10, Arnote et al. as modified by Bachtle further discloses the controller – at 140,200,240, has at least one processor, memory, software, and communicates with a user interface – see paragraph [0068] of Arnote et al. where software/executable code would be necessary to control the servo motors as disclosed, and that the controller – at 140,200,240, is equipped such that the defined number of portions for the first hook – at 132, is input into the software of the controller by an operator via the user interface – see figures 1-3b and paragraph [0068] of Arnote et al.
Referring to claim 9, Arnote et al. as modified by Bachtle further discloses a device for providing portions of pasty food mass in a casing, which is configured to carry out the method of claim 1 – see rejection of claim 1 detailed earlier, the device comprising, a portioning apparatus – at 120, for providing portions of pasty food mass located in a casing – see figure 1, which has portioning belts – at 124,126, and a portioning belt drive – at 220a, and a looper horn – at 128, drivable by a drive – at 628a, which is designed to transfer multiple portions, connected to one another by the casing, to a suspension machine – at 130 – see figure 1, the suspension machine – at 130, for transporting multiple portions, which has multiple hooks – at 132, for receiving multiple portions connected by the casing – see figure 1, wherein the hooks – at 132, may be further transported by at least one circulating drive element – see conveyor of 130, drivable by a drive – at 630a, and a controller – at 140,200,240, for controlling components of the device, wherein the controller – at 140,200,240, is designed and equipped such that, at least one of: the drive of the suspension machine – at 630a, the drive of the looper horn – at 628a, and a portioning belt drive – at 220a, of the portioning apparatus – at 120, are controlled, such that a defined number of portions is transferred from the portioning apparatus – at 120, to a first hook – at 132, of the suspension machine – at 130, by looper horn – at 128, at the beginning of a production phase – see figure 1 and paragraphs [0073] thru [0084] and paragraphs [0088] thru [0091] detailing control of each of the servos to control the amount of sausage portions processed. Regarding the 35 U.S.C. 112(f) analysis, the circulating element – at 130 of Arnote et al. is a chain as seen in figure 1 and paragraph [0067]. Arnote et al. does not disclose the defined number is determined as a function of a path from a delivery pipe of a filling machine for providing the food mass up to the closest hook of the suspension machine relative to the looper horn. Bachtle does disclose the defined number is determined as a function of a path from a delivery pipe of a filling machine – not shown but filled sausage is disclosed, for providing the food mass up to the closest hook – at 2, of the suspension machine relative to the looper horn – at 19 – see figures 9a-10 and column 7 line 9 to column 8 line 28, where distances along the path relative to the hooks which can be the closest hook. Therefore it would have been obvious to one of ordinary skill in the art to take the method of Arnote et al. and add the number of portions as a function of a path between a filling machine and the hooks as disclosed by Bachtle, so as to yield the predictable result of providing more accurate automatic control of the device to produce the desired products.
Referring to claim 11, Arnote et al. as modified by Bachtle further discloses the portioning belts of the portioning apparatus – at 120, are defined as two circulating portioning belts – at 124,126, arranged spaced apart from one another and a portioning belt drive – at 220a, and food mass, located in a casing, may be transferred from a filling machine – at 110, upstream of the portioning apparatus – at 120 – see figure 1 of Arnote et al., through delivery pipe – at 112, to the portioning apparatus – at 120 – see figure 1 of Arnote et al., and that the looper horn – at 128, is arranged at the output area of the portioning apparatus – at 120 – see figure 1 of Arnote et al., to be able to transfer portions in a desired number per time unit and with a desired target weight to the looper horn – at 128 and see controls via weight detailed in paragraphs [0039]-[0040] and [0103] of Arnote et al., and wherein, on the outlet side downstream of the looper horn – at 128, the hooks – at 132, of the suspension machine – at 130, can be moved such that a desired number of portions can be transferred from the looper horn – at 128, to the hooks – at 132, of the suspension machine – at 130 – see figure 1 and paragraphs [0073] thru [0084] and paragraphs [0088] thru [0091] of Arnote et al.
Referring to claims 12 and 13, Arnote et al. as modified by Bachtle further discloses the looper horn – at 128, includes an open end section – see free end of 128, that moves through a circular path during a circulating movement of the looper horn – at 128 – see for example paragraph [0067] of Arnote et al., and the hooks – at 132, on the suspension machine – at 130, are sequentially moved adjacent to the looper horn – at 128, such that the portions are transferred from the looper horn – at 128, onto one of the hooks – at 132, when the looper horn – at 128, faces substantially downwardly in the movement along the circular path – see downward orientation of looper horn 128 in figure 1 of Arnote et al. during transferring and see for example paragraph [0067] of Arnote et al.
Response to Arguments
4. Regarding the non-statutory double patenting rejections, it is noted that applicant will address these rejections at a later time if necessary.
Applicant’s claim amendments and remarks/arguments dated 12-23-25, obviates the 35 U.S.C. 112(b) rejections and the 35 U.S.C. 112(f) analysis resulting in 35 U.S.C. 112(b) rejections of claims 1, 3-4 and 7-11 detailed in the last office action dated 9-23-25.
Applicant’s claim amendments and remarks/arguments dated 12-23-25 obviates 35 U.S.C. 102(a)(1) and 102(a)(2) rejections of claims 1-3 and 7-11 detailed in the last office action dated 9-23-25.
Regarding the prior art rejections of claims 4-6, the Bachtle reference US 8894473 discloses the defined number is determined as a function of a path from a delivery pipe of a filling machine – not shown but filled sausage is disclosed, for providing the food mass up to the closest hook – at 2, of the suspension machine relative to the looper horn – at 19 – see figures 9a-10 and column 7 line 9 to column 8 line 28, where distances along the path relative to the hooks which can be the closest hook when the closest hook is at the distance a from the looper horn – at 19. Bachtle discloses sausage comprising filled casing and the primary reference to Arnote et al. US 2021/0282416 discloses a filling machine – at 110,112. Further, Bachtle et al. discloses a looper horn – at 19, with item 19 of Bachtle acting as a transfer device for transferring the sausages to hooks as seen in figures 9a-10 and the primary reference to Arnote et al. discloses a looper horn – at 128. Further, Bachtle discloses the defined number is determined as a function of a path from a delivery pipe of the filling machine of the suspension machine relative to the looper horn – see figures 9a-10 and column 7 line 9 to column 8 line 28, where distances along the path relative to the hooks which can be the closest hook when the closest hook is at the distance a from the looper horn – at 19. Applicant argues that Bachtle does not disclose determining any number of portions but the claims only require determining a single defined number of portions. Applicant further argues that it would not have been obvious to combine the Arnote et al. and Bachtle reference in that Arnote et al. already details providing more accurate automatic control of the device to produce the desired products given the speed control of first and second speeds as disclosed by Arnote et al. These arguments are not persuasive in that incorporating the control of the movement of the hooks via hook spacing/distances as disclosed by Bachtle with the speed control of Arnote et al. would allow for a more accurate and better control/operation of the device/method of Arnote et al. in that the Bachtle controls allow for specific speeds of the hooks to be input and controlled by the user as seen in column 7 line 8 to column 8 line 19. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The combination of the Arnote et al. and Bachtle references takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made in that each of the Arnote et al. and Bachtle reference disclose apparatus having similar structure of looper horn/transfer device with hook conveyors and have similar function of using controls that control the movement of the hooks as detailed earlier and therefore discloses what is withing the level of ordinary skill at the time the claimed invention was made. Therefore the combination of these references renders the claims obvious as detailed earlier in paragraph 3 of this office action.
Regarding claims 12 and 13, the Arnote et al. reference discloses the claim limitations of these claims as detailed earlier in paragraph 3 of this office action.
Conclusion
5. 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.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PARSLEY whose telephone number is (571)272-6890. The examiner can normally be reached Monday-Friday, 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached at (571) 272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J PARSLEY/Primary Examiner, Art Unit 3643