DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Elections/Restrictions
2. This office action is a response to Applicant's election filed on 05/18/2026 with traverse of Group I, claims 1-9 for further examination. Claims 10-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
3. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/18/2026. Applicant's election with traverse of Group I, claims 1-9, apparatus.
The traversal is on the grounds that As an initial matter, Applicant respectfully traverses the Examiner's position that the technical feature required by Groups I-V does not make a contribution over the prior art in view of Robert Bosch GmbH DE 198 56 917A1 also published as Zitzelsberger U.S. Patent No. 6,290,308 B1, and reserves all rights should the Examiner issue a rejection on the basis of Robert Bosch GmbH. In this connection, contrary to the Examiner's position, it is respectfully submitted that Groups I-V have more than their reference to viscous material in common. In particular, the application apparatus of claim 19 (Group III) has the conveying apparatus of claim 1 (Group I) and the regulation apparatus of claim 10 (Group II). Therefore, it is believed that at least Groups II and Ill should be examined along with elected Group I in one application.
This is not found persuasive because the inventions listed as Groups I-V do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: they lack the special technical feature which is referred to in Annex B of Appendix A1 of the MPEP (Administrative Instructions under the PCT, "Unity of Invention"). The express "special technical features" is defined as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art." (Rule 13.2). Unity exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding claimed special technical features. In this case, the technical feature shared by each invention is “conveying viscous material”. Examiner contends the application apparatus of claim 19 (Group III) having the conveying apparatus of claim 1 (Group I) and the regulation apparatus of claim 10 (Group II) does not satisfy one or more of the same or corresponding claimed special technical features. That is, same or corresponding claimed special technical features shared by all groups. Examiner contends the only same or corresponding claimed special technical features shared by the conveying apparatus of claim 1 (Group I) and the regulation apparatus of claim 10 (Group II) is conveying viscous material.
The question of unity of invention has been reconsidered retroactively by the examiner in view of the search and consideration performed; a review of Hur (US 6,435,843 B1), makes clear that the inventions of the groups I-V lack the same or corresponding special technical feature because the cited reference appears to demonstrate that the claimed technical feature does not define a contribution which each of the inventions, considered as a whole, makes over the prior art. Accordingly, the prior art of the record supports restriction of the claimed subject matter in to the groups as mentioned immediately above. See rejection under AIA 35 U.S.C. 102(a)(1) as being anticipated by Hur (US 6,435,843 B1) regarding claim 1 below for full details.
If it can be established that the feature is known in the art, there is a lack of unity a posteriori, since the feature is not a technical feature that defines a contribution over the prior art. See PCT International Search and Preliminary Examination Guidelines Chapter 10 §§ 10.03-10.04.
For restriction procedure, see MPEP 1893.03
Therefore, the requirement is still deemed proper and is therefore made FINAL.
Priority
4. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
5. The information disclosure statements (IDS) submitted on 01/17/2025 & 02/04/2025 are being considered by the examiner.
Claim Interpretation
6. 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-AlA 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: “conveying device” in claims 1 & 8; “valve device” in claims 1-2, 5 & 8-9; “permanent-magnet element” in claim 7; “magnetostrictive element” in claim 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AlA 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 wishes to provide further explanation or dispute the examiner' s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-9 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 applicant regards as the invention.
As regards to claim 1, lines 5 & 8 recites the limitation “the chambers”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the chambers” as “the first and second chamber” recited in line 4. To correct this problem, amend lines 5 & 8 to recite “the first and second chamber”.
As regards to claim 2, line 5 recites the limitation “the material inlet openings”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the material inlet openings” as “the material inlets” recited in claim 1. To correct this problem, amend line 5 to recite “the material inlets”.
As regards to claim 2, lines 5-6 recites the limitation “the material outlet openings”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the material outlet openings” as “the material outlets” recited in claim 1. To correct this problem, amend lines 5-6 to recite “the material outlets”.
As regards to claim 3, line 2, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For examination purposes, examiner is interpreting “in particular” as the limitations following the phrase are not part of the claimed invention. To correct this problem, amend line 2 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 9, line 3, the phrase "at least in part" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For examination purposes, examiner is interpreting “at least in part” as the limitations following the phrase are not part of the claimed invention. To correct this problem, amend line 3 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 2-9 are rejected at least based on their dependency from claim 1.
Claim Rejections
9. 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.
10. 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.
Claim Rejections - 35 USC § 102
11. 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.
12. Claims 1-6 & 8-9 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Hur (US 6,435,843 B1) hereinafter Hur (the terminology of the claims in the application is used, but the references of Hur are included between parentheses).
As regards to claim 1, Hur discloses an apparatus for conveying viscous material to an applicator (abs; fig 1-7; clm 1), comprising: a conveying cylinder (1/510+610) in which a dual-action conveying piston (2/520+620) can be moved back and forth, wherein the conveying cylinder (1/510+610) has a first and a second chamber (see fig 2, chambers above and below 2/chamber of 510 & chamber of 610), which are separated from one another by means of the conveying piston (2/520+620), wherein each of the a first and a second chamber (see fig 2, chambers above and below 2/chamber of 510 & chamber of 610) has a material inlet (21, 11/501, 701) and a material outlet (25, 15/502, 702), having a conveying device (100+101+102/compressed air) connected to the material inlets (21, 11/501, 701), for pressure-impacted (suction/compressed air) introduction of viscous material into the a first and a second chamber (see fig 2, chambers above and below 2/chamber of 510 & chamber of 610) of the conveying cylinder (1/510+610), and having a valve device (221+222+321+322/503+703+504+704) for closing and opening the material inlets (21, 11/501, 701) and the material outlets (25, 15/502, 702), wherein the valve device (221+222+321+322/503+703+504+704) opens the material inlet (21/501) of the first chamber (see fig 2, chamber above 2/chamber of 510) and the material outlet (15/702) of the second chamber (see fig 2, chamber below 2/chamber of 520) and closes the material inlet (11/701) of the second chamber (see fig 2, chamber below 2/chamber of 520) and the material outlet (25/502) of the first chamber (see fig 2, chamber above 2/chamber of 510) in a first switching position, and opens the material inlet (11/701) of the second chamber (see fig 2, chamber below 2/chamber of 520) and the material outlet (25/502) of the first chamber (see fig 2, chamber above 2/chamber of 510) and closes the material inlet (21/501) of the first chamber (see fig 2, chamber above 2/chamber of 510) and the material outlet (15/702) of the second chamber (see fig 2, chamber below 2/chamber of 520) in a second switching position (col 2, ln 14-col 5, ln 52; fig 1-7; clm 1-2).
As regards to claim 2, Hur discloses an apparatus (abs; fig 1-7; clm 1), wherein the valve device (221+222+321+322/503+703+504+704) has a valve housing (outer structure of 200+221+222+321+322/800 including nuts, bolts, flanges, etc.) and a slider (ball of check valve) that can move back and forth in the valve housing (outer structure of 200+221+222+321+322/800 including nuts, bolts, flanges, etc.), wherein the valve housing (outer structure of 200+221+222+321+322/800 including nuts, bolts, flanges, etc.) and the slider (ball of check valve) define a pass-through channel (see fig 2-3, lumens between 221 & 21/503 & 501 and 222 & 11/703 & 701 and 321 & 25/504 & 502 and 322 & 15/704 & 702) that can be closed and opened for each of the material inlets (21, 11/501, 701) and for each of the material outlets (25, 15/502, 702), and wherein in the first switching position of the valve device (221+222+321+322/503+703+504+704), the slider (ball of check valve) opens the pass-through channels (see fig 2-3, lumen between 221 & 21/503 & 501 and 322 & 15/704 & 702) of the material inlet (21/501) of the first chamber (see fig 2, chamber above 2/chamber of 510) and of the material outlet (15/702) of the second chamber (see fig 2, chamber below 2/chamber of 520), and closes the pass-through channels (see fig 2-3, lumens between 222 & 11/703 & 701 and 321 & 25/504 & 502) of the material inlet (11/701) of the second chamber (see fig 2, chamber below 2/chamber of 520) and of the material outlet (25/502) of the first chamber (see fig 2, chamber above 2/chamber of 510), and, in the second switching position of the valve device (221+222+321+322/503+703+504+704), opens the pass-through channels (see fig 2-3, lumens between 222 & 11/703 & 701 and 321 & 25/504 & 502) of the material inlet (11/701) of the second chamber (see fig 2, chamber below 2/chamber of 520) and of the material outlet (25/502) of the first chamber (see fig 2, chamber above 2/chamber of 510) and closes the pass-through channels (see fig 2-3, lumens between 221 & 21/503 & 501 and 322 & 15/704 & 702) of the material inlet (21/501) of the first chamber (see fig 2, chamber above 2/chamber of 510) and of the material outlet (15/702) of the second chamber (see fig 2, chamber below 2/chamber of 520) (col 2, ln 14-col 5, ln 52; fig 1-7; clm 1-2).
As regards to claim 3, Hur discloses an apparatus (abs; fig 1-7; clm 1), wherein the slider (ball of check valve) has a cylindrical shape and, in particular, the shape of a circular cylinder (col 2, ln 14-col 5, ln 52; fig 1-7; clm 1-2).
As regards to claim 4, Hur discloses an apparatus (abs; fig 1-7; clm 1), wherein the valve housing (outer structure of 200+221+222+321+322/800 including nuts, bolts, flanges, etc.) has multiple parts, having several housing parts set against one another in the axial direction (see fig 1-4) (col 2, ln 14-col 5, ln 52; fig 1-7; clm 1-2).
As regards to claim 5, Hur discloses an apparatus (abs; fig 1-7; clm 1), wherein the valve device (221+222+321+322/503+703+504+704) has a sleeve (401) that is inserted into the valve housing (outer structure of 200+221+222+321+322/800 including nuts, bolts, flanges, etc.), into which sleeve (401) the slider (ball of check valve) is inserted with precise fit (col 2, ln 14-col 5, ln 52; fig 1-7; clm 1-2).
As regards to claim 6, Hur discloses an apparatus (abs; fig 1-7; clm 1), further comprising a path measurement sensor (801+802) for detection of the position of the conveying piston (2/520+620) in the conveying cylinder (1/510+610) (abs; col 2, ln 14-col 5, ln 52; fig 1-7; clm 1-2).
As regards to claim 8, Hur discloses an apparatus (abs; fig 1-7; clm 1), further comprising a control unit (col 5, ln 39-45) that controls the valve device (221+222+321+322/503+703+504+704) and/or a conveying pump (compressed air) of the conveying device (100+101+102/compressed air) as a function of the position data received from the path sensor (801+802) (abs; col 2, ln 14-col 5, ln 52; fig 1-7; clm 1-2).
As regards to claim 9, Hur discloses an apparatus (abs; fig 1-7; clm 1), wherein the valve device (221+222+321+322/503+703+504+704) opens both material outlets (25, 15/502, 702) and/or both material inlets (21, 11/501, 701), at least in part, in at least one intermediate position (abs; col 2, ln 14-col 5, ln 52; fig 1-7; clm 1-2).
Claim Rejections - 35 USC § 103
13. 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 of this title, 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.
14. The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
15. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hur as applied to claim 6 above.
As regards to claim 7, Hur discloses an apparatus (abs; fig 1-7; clm 1), further comprising a path measurement sensor (bottom dead center sensor 801+802) for detection of the position of the conveying piston (2/520+620) in the conveying cylinder (1/510+610) (abs; col 2, ln 14-col 5, ln 52; fig 1-7; clm 1-2), however Hur does not disclose a permanent-magnet element that is firmly connected to the conveying piston, a magnetostrictive element that is firmly connected to the conveying cylinder, and an evaluation unit for evaluating the magnetostriction induced by the permanent-magnet element in the magnetostrictive element. However, a permanent-magnet element that is firmly connected to the conveying piston, a magnetostrictive element that is firmly connected to the conveying cylinder, and an evaluation unit for evaluating the magnetostriction induced by the permanent-magnet element in the magnetostrictive element and a bottom dead center sensor are considered functionally equivalent heating methods. Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to substitute a path measurement sensor that has a permanent-magnet element that is firmly connected to the conveying piston, a magnetostrictive element that is firmly connected to the conveying cylinder, and an evaluation unit for evaluating the magnetostriction induced by the permanent-magnet element in the magnetostrictive element for the bottom dead center sensor disclosed by Hur since they are functionally equivalent and one of an obvious finite choices of sensing methods with a reasonable expectation of success.
Conclusion
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights