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 .
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.
Status of the Claims
Amendments were filed 9/01/25. Claims 1-12 are pending, wherein claims 6 and 10-12 remain withdrawn.
Specification
The amendment filed 9/01/25 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
paragraph [0029], “Conventional structures known to one of ordinary skill in the art, according to FIG. 3, for contacting the contacting a top surface of the liquid alloy with the chill, and maintaining the bottom surface of the chill in a substantial contact with the top surface of the liquid alloy, and vibrating the chill.”
Applicant is required to cancel the new matter in the reply to this Office Action.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
There is no antecedent basis in the specification for “the chill has a total volume and a total surface area comparable to that of the liquid alloy in said vessel or trough” recited in claim 8. Note that in paragraph [0033] of the specification, the surface area of the chill that is in contact with the molten alloy in the second vessel should be comparable in size to that of the molten metal such that enough dendrites can be produced at the chill-melt interface. However, it is the cooling capability of the chill that can be designed using its volume. There is no support for the total volume being comparable to that of the liquid alloy.
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.
The phrase “means for contacting a top surface of the liquid alloy with the chill, and maintaining the bottom surface of the chill in a substantial contact with the top surface of the liquid alloy, and vibrating the chill” has been interpreted under 35 USC 112(f). The claim limitation will be treated as the corresponding structure in the specification for performing the claimed function, and its equivalents. Note however, that the specification is not clear as to the corresponding structure that performs the function of “contacting” and “maintaining” (see rejections under 35 USC 112(b) below). The means to perform the function of “vibrating the chill” is the vibrator already required in claim 1.
Claim Rejections - 35 USC § 112
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 1-5 and 7-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “means for contacting a top surface of the liquid alloy with the chill, and maintaining the bottom surface of the chill in a substantial contact with the top surface of the liquid alloy, and vibrating the chill” 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.
The specification does not disclose any corresponding structure that is a “means for contacting … and maintaining … the chill in a substantial contact with the top surface of the liquid.”
Note that the specification has been amended to recite “Conventional structures known to one of ordinary skill in the art” in paragraph [0029]. However, "[a] bare statement that known techniques or methods can be used does not disclose structure" in the context of a means plus function limitation. Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007). MPEP 2181(II)(A).
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 term “excellent thermal conductivity and thermal capacity” in claim 5 is a relative term which renders the claim indefinite. The term “excellent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Note that for examination purposes, a material having “excellent thermal conductivity and thermal capacity” is a material that performs the claimed function of being effective for cooling the liquid metal.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-5 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al (US 6,681,836, previously cited) in view of Han et al (US 2005/0279479, previously cited).
Regarding claim 1, Sakamoto et al teaches an apparatus (abstract, note various embodiments, in particular, fig 20) for production of a slurry containing a fraction of non-dendritic solid crystals from its liquid alloy (abstract, producing a slurry, note that the limitation is an intended use of the apparatus, MPEP 2114(II), see below) for subsequent forming into solid alloy components (intended use, MPEP 2114(II), see below), comprising:
a vessel or a trough (crucible, note various embodiments, in particular, crucible 322 in fig 20) for containing a quantity of liquid alloy and for pouring the alloy into another chamber of a forming apparatus or a mold cavity (functional limitation, MPEP 2114(I), crucible can discharge the semisolidified metal, col 3 lines 8-20);
a chill (chill block, note various embodiments, in particular, chill block 326 in figure 20) having a bottom surface (note that although the bottom surface isn’t shown in figure 20, the chill block has a bottom surface, see chill 46 in figure 4) with a shape and size complementary to that of the liquid alloy (MPEP 2114(I), functional limitation as it depends on the shape and size of the liquid alloy, which itself is not a positively recited structure of the apparatus as the liquid alloy is a material worked upon during the apparatus’ intended use, furthermore note that the size in figure 20 can be considered complementary to the alloy, and with regards to shape, the shape of the chill block 326 is not limited (figs 21-25, col 14 line 65 – col 15 line 10), including elliptical, composite elliptical, hexagonal, chamfered, construed as being complementary);
an agitator (fig 20, col 14 lines 10-30, chill block 326 is part of an agitator 320 that agitates the molten metal and can reciprocate vertically) for producing non-dendritic solid crystals in the liquid alloy and for shaking of the liquid alloy or the slurry that sticks on the surfaces of the chill while it is separating from the slurry (functional limitation, MPEP 2114(I), capable of performing said function as the chill block is reciprocated vertically, col 14 lines 10-30);
means for contacting a top surface of the liquid alloy with the chill, and maintaining the bottom surface of the chill in a substantial contact with the top surface of the liquid alloy, and vibrating the chill (note that the “means for” invokes 35 USC 112(f), although the specification is not clear as to the corresponding structure controllably contacting and maintaining, see 112(b) rejection above, Sakamoto teaches being coupled to a moving section 332 as a vertically moving means for making reciprocating movement in the longitudinal directions (col 14 lines 10-30), thus capable of moving vertically and performing the claimed function),
whereby the slurry containing a fraction of non-dendritic solid crystals is formed from the liquid alloy while the top surface of the liquid alloy remains quiescent (intended use of the apparatus to produce a slurry, see MPEP 2114(II) and below, note that the apparatus of the prior art is capable of forming a slurry as it includes a chill and a vibrator).
Regarding the intended use limitations above, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114(II).
Sakamoto et al is quiet to the agitator being a plurality of vibrators coupled to the chill.
Han teaches vibrating a molten material at an ultrasonic frequency while cooling to a semi-solid state to form non-dendritic grains (abstract). Han teaches a ram 16 including an ultrasonic transducer 20 producing ultrasonic vibration that is transmitted to process material via an ultrasonic radiator 22 (fig 1, paragraph [0019-0020], paragraph [0031], acoustic radiator), thereby promoting nucleation and formation of predominantly non-dendritic, generally globular grains (paragraph [0020]), having a much smaller grain size than the prior art (paragraph [0005]) and is more beneficial for semi-solid forming processes (paragraph [0017]).
It would have been obvious to one of ordinary skill in the art to further include to the agitator of Sakamoto et al, an ultrasonic transducer and horn coupled within the chill block, so as to provide an ultrasonic vibration to further promote nucleation and form non-dendritic globular grains of a much smaller size more beneficial for semi-solid forming processes. Although the combination is quiet to a plurality, it would have been obvious to one of ordinary skill in the art to include a plurality to further ensure the metal is sufficiently vibrated to generate the non-dendritic grains. Note that the courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). MPEP 2144.04(VI)(B)
Regarding claim 2, Sakamoto et al teaches wherein said vessel or the said trough is made of ceramic materials or steel protected with a layer of coating to prevent the steel from reacting to the liquid alloy (Sakamoto, col 7 lines 5-15, the crucible is subjected to coating with a ceramic material, col 7 lines 24-31, ceramic material prevents reaction with molten metal and is easy to remove solidified aluminum).
Regarding claim 3, Sakamoto et al teaches wherein the vessel is a ladle used for a casting process including HPDC process (functional limitation, see MPEP 2114(I) and (II), the claimed invention does not structurally distinguish from the vessel of the prior art, note that the crucible of Sakamoto can discharge the semisolidified metal (col 3 lines 8-20)).
Regarding claim 4, the combination teaches wherein the vibrator is an acoustic vibrator with a frequency in the range of 500 to 500,000 Hz and power of 100 watts to 60,000 watts (note the combination above, Han teaches a frequency of preferably 15 kHz to 25kHz and a preferable power intensity of 500 to 1000 W (Han, paragraph [0018], falling within the claimed range)).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 5, Sakamoto et al teaches wherein the chill is made of a material having excellent thermal conductivity and thermal capacity for effective cooling the liquid metal (note 112(b) rejections above regarding “excellent,” Sakamoto discloses the chill block is made of a material such as copper and stainless steel (col 5 lines 30-40), note that the molten metal is agitated and cooled to form the slurry (abstract), thus the materials of Sakamoto et al are effective for cooling the liquid metal to form the slurry).
Regarding claim 8, Sakamoto et al teaches wherein the chill has a total volume and a total surface area comparable to that of the liquid alloy in said vessel or trough (Sakamoto et al, note the breadth of the term “comparable,” the chill shown in figure 20 can be considered having a volume and surface area comparable to the liquid alloy, note that shape is not limited (col 2 lines 35-45, crucible having various shapes, col 14 line 65 – col 15 line 10, no limitation to shape of chill block)).
Regarding claim 9, Sakamoto et al teaches wherein the chill can be cooled internally or externally to enhance its cooling capability and to maintain its desired temperatures using a fluid including compressed air, water, cooling oil, ionic liquid, or liquid metallic alloy (functional limitation, see MPEP 2114(I), note the language “chill can be cooled internally or externally” does not require a cooling system, only that the chill is capable of being cooled internally or externally, the chill of the prior art is capable of being cooled externally, further note that Sakamoto et al discloses cooling medium may be supplied to the inside of a cooling member, col 3 lines 1-10).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al as modified by Han et al as applied to claim 1 above, and further in view of Emmer et al (2013, Materials for sonotrode tools, previously cited).
Regarding claim 7, the combination teaches wherein the chill consists of a plurality of sonotrodes containing at least one sonotrode surrounded by a block of metal chill (note combination as discussed in the rejection of claim 1 above, the chill block of Sakamoto can be formed to include the ultrasonic transducer and horn within the block as shown in Han), but is quiet to the sonotrodes being metallic.
Emmer et al discloses FerroTitanit cermets are known sonotrode materials currently in use, however, are expensive and difficult to machine (Introduction). Emmer et al discloses that cheaper materials such as aluminum alloy and titanium alloy have been considered, but due to the low wear resistance, are not usable (Introduction). Emmer considers utilizing steels for sonotrode applications (Introduction), and recognizes that the steels can be successfully used as sonotrode materials (conclusion).
As the combination above is quiet to the material used for the sonotrode, it would have been obvious to one of ordinary skill in the art to modify the combination such that the sonotrode is formed of steel, as taught in Emmer, as Emmer recognizes steel sonotrodes can be successfully used (conclusion) and have exceptional resistance to wear (conclusion), and being cheaper and easier to machine than the cermets used currently (introduction).
Response to Arguments
Applicant's arguments filed 9/01/25 have been fully considered but they are not persuasive.
Applicant argues that the specification has been amended so as to provide antecedent basis for the claimed subject matter. Applicant argues that Figs 3-4 show volume rather than mass, and uses the phrase volume at the end of paragraph [0033].
The examiner notes that there is still no antecedent basis in the specification for the claim limitation, in particular, the language of “the chill has a total volume … comparable to that of the liquid alloy in said vessel or trough” in claim 8. Applicant’s specification, paragraph [0033], describes the total surface area of the chill should be comparable in size, but does not recite that the volume of the chill is comparable to the liquid alloy. Paragraph [0033] further discusses a cooling capability of the chill designed using its volume, but that statement does not provide antecedent basis for the “total volume” being “comparable to that of the liquid alloy.”
Applicant has additionally amended the specification to describe that conventional structures for contacting a top surface of the liquid alloy with the chill and maintaining the bottom surface of the chill in a substantial contact with the top surface of the liquid alloy are known. The amendments have been considered as new matter, see objection above.
Applicant argues, with respect to the rejections under 35 USC 112(b), that the “means for contacting a top surface of the liquid alloy with the chill and etc,” is implicitly or inherently disclosed and makes the statement that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function.
The examiner disagrees. Note that the specification has been amended to recite “Conventional structures known to one of ordinary skill in the art” in paragraph [0029]. However, "[a] bare statement that known techniques or methods can be used does not disclose structure" in the context of a means plus function limitation. Biomedino, LLC v. Waters Technology Corp., 490 F.3d 946, 952, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007). MPEP 2181(II)(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:
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
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.
Regarding the amendment of the term “high” with “excellent,” note that “excellent” is similarly a relative term and has the same issues as before, where the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding the 103 rejections, Applicant argues that the claimed apparatus has means for contacting a top surface of the liquid alloy with the chill, and maintaining the bottom surface of the chill in a substantial contact with the top surface of the liquid alloy, and vibrating the chill for shaking off the liquid film that is coated on the bottom surface of the chill. Applicant argues that such features are not included in the prior-art references, nor in the open literature.
Applicant’s claims are directed to an apparatus, and not to a method. [A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP 2114(II). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114(II).
As discussed in the rejections above, Sakamoto teaches a semisolid metal manufacturing device, comprising a crucible, a chill block, an agitator that can reciprocate vertically, and a moving section that makes the agitator move with the reciprocal movements. Although operated differently from applicant’s method, Sakamoto’s apparatus only structurally differs between an agitator, such as a rotary stirrer, instead of the claimed vibrators coupled to the chill. However, use of vibrators, to promote nucleation and form non-dendritic globular grains beneficial for semi-solid forming processes is taught by Han.
Applicant argues that Han’s apparatus applying ultrasonic vibrations has a different structure and is difficult to combine with Sakamoto who teaches using rotating agitators.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues that simply using Han’s ultrasonic sonotrode to replace the rotary stirrer in Sakamoto’s apparatus would fail in producing spherical solid crystals.
The Examiner disagrees. If the prior art taught all the structural features, then it would be capable of performing the same functions. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114(II).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Turng (US 7,509,993, previously cited) teaches forming a metal matrix nanocomposite (abstract), wherein an ultrasonic probe or other vibrating member (108) contacts the molten metal (100) and only penetrates the surface slightly, where multiple vibrating members can be used if desired (col 4 lines 24-42).
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.
This action is a Final Rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted. Please note that the Office also offers initiatives that are available to applicants after the close of prosecution. See https://www.uspto.gov/patents/initiatives/uspto-patent-applications-iniatives-timeline for more information.
General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/ptab. The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. It also includes information on pro bono (free) legal services and advice available for those who are under-resourced and considering an appeal at: https://www.uspto.gov/patents/ptab/free-legal-assistance. The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1). The current fee amount is available at: www.uspto.gov/Fees.
If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final reply that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKY YUEN whose telephone number is (571)270-5749. The examiner can normally be reached 9:30 - 6:00.
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/JACKY YUEN/
Examiner
Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
Prosecution Insights