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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a first supporting element” in claim 1 (interpreted to be a gripper, see page 5 of Applicant’s specification), “a second supporting element” in claim 4 (interpreted to be a gripper, see page 6 of Applicant’s specification), “a sterilizing unit” in claim 15, “a rinsing unit” in claim 15, “a filling unit” in claim 15, and “a closing unit” in claim 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 15, “a sterilizing unit”, “a rinsing unit”, “a filling unit”, and “a closing unit” fail to comply with the written description requirement because the specification does not provide any corresponding structure for the limitations. The disclose does not provide the relevant structure for “a sterilizing unit”, “a rinsing unit”, “a filling unit”, and “a closing unit” as required under 35 USC 112(f). See below 35 USC 112(b) rejection.
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 1-15 are 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.
Regarding claim 1, “by its neck” is indefinite because it is unclear what “it” refers to. For examination purposes, “by its neck” is being interpreted to mean “by a neck of the container”.
Regarding claim 2, “said separation wall” lacks antecedent basis.
Regarding claim 4, “by its neck” is indefinite because it is unclear what “it” refers to. For examination purposes, “by its neck” is being interpreted to mean “by a neck of the container”.
Regarding claim 9, “the grooves” and “the corresponding wheels” lack antecedent basis.
Regarding claim 11, “the grooves” and “the corresponding wheels” lack antecedent basis.
Regarding claim 12, “the rails” lacks antecedent basis.
Regarding claims 3, 5-8, 10, and 13-14, claims 3, 5-8, 10, and 13-14 are rejected because they depend from a rejected claim.
Regarding claim 15, “the separation wall” and “the filled containers” lack antecedent basis.
Additionally, claim limitation “a sterilizing unit”, “a rinsing unit”, “a filling unit”, and “a closing unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cattin (IT-MO20130131-A1, Machine Translation).
Regarding claim 1, Cattin discloses an apparatus (Fig. 1, item 1) for treating containers (Fig. 1, item 2) advancing along a linear direction, said apparatus comprising:
- a first linear guide (Fig. 1, item 5) developing parallel to said linear direction (Fig. 1, guide 5 extends parallel to horizontal movement of container 2) and being fixedly located in a first environment (Fig. 1, first environment is above wall 10) that is a controlled-contamination environment (Fig. 1) (Machine Translation, page 1, first environment is a controlled contamination environment because the container is separated from the driving member);
- a carriage (Fig. 1, item 4) rotatably coupled to said first linear guide;
- a first supporting element (Fig. 2, item 20) for supporting one container by its neck (Fig. 2, gripper 20 holds container 2 by its neck) (Machine Translation, page 2), said first supporting element being integrally mounted on the carriage (Machine Translation, page 2);
- a second linear guide (Fig. 4, item 3) developing parallel to said linear direction (Fig. 4, drive element 3 moves parallel to horizontal movement of container 2) and being fixedly located in a second environment (Fig. 4, second environment is below wall 10) (Machine Translation, page 2);
- a slider (Fig. 4, item 3, 8, 9) slidably coupled to the second linear guide (Machine Translation, page 2), said slider and said carriage being magnetically (Machine Translation, page 2) or electromagnetically coupled;
- at least one separation wall (Fig. 1, item 10) for separating the first environment from the second environment (Machine Translation, page 2), said first linear guide being arranged at a first predefined distance (Fig. 4, first guide 4 is located a certain distance above wall 10) from said separation wall (Machine Translation, page 2).
Regarding claim 2, Cattin discloses the apparatus according to claim 1, wherein said at least one separation wall is located at a predefined height from a ground level (Fig. 1-2, wall 10 is located at a distance above the ground), said second linear guide being arranged below said separation wall (Fig. 2, second guide 3 is below wall 10) (Machine Translation, page 2) and said first linear guide being arranged above said separation wall (Fig. 2, first guide 4 is above wall 10) (Machine Translation, page 2) or vice versa.
Regarding claim 3, Cattin discloses the apparatus according to claim 1, wherein said separation wall has at least one inclined portion (Fig. 2, wall 10 has edges which incline in an upward direction).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Cattin.
Regarding claim 4, Cattin does not expressly disclose the apparatus according to claim 1, further comprising a second supporting element for supporting one container by its neck, said second supporting element being integrally mounted on the carriage.
However, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to include a second supporting element to support a container, rather than just one supporting element as taught by Cattin, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 5-8 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cattin in view of Wallisch et al (US 2021/0269260), hereinafter Wallisch.
Regarding claim 5, Cattin does not expressly disclose the apparatus according to claim 1, wherein said carriage comprises: a framework having a stand developing towards the separation wall; a plurality of wheels rotatably mounted on the framework; and a case supported by the stand, said case being magnetically or electromagnetically coupled to said slider.
However, Wallisch teaches an apparatus (Wallisch, Fig. 1) for transporting containers having a carriage (Wallisch, Fig. 1, item 10, 14, 12, 16, 20) comprising: a framework (Wallisch, Fig. 1, item 14, 10) having a stand (Wallisch, Fig. 1, item 14) developing towards the separation wall; a plurality of wheels (Wallisch, Fig. 1, item 12) rotatably mounted on the framework (Wallisch, Para. 0074-0077); and a case (Wallisch, Fig. 1, item 10) supported by the stand, said case being magnetically (Wallisch, Fig. 1, item 20) or electromagnetically coupled to said slider (Wallish, Para. 0079).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Cattin and Wallisch to modify the apparatus of Cattin to include the carriage configuration of Wallisch. A person of ordinary skill in the art would have been motivated to make such change in order to ensure the clean room environment remains as sterile as possible by minimizing the amount of components needed to connect from outside of the clean room into the clean room (Wallisch, Para. 0004).
Regarding claim 6, as combined above, Wallisch teaches the apparatus according to claim 5, wherein the case and the slider do not contact the separation wall (Wallisch, Fig. 1, Para. 0082).
Regarding claim 7, as combined above, the apparatus according to claim 5, wherein the case is a plate-like body (Wallisch, Fig. 1, item 10) arranged in the first environment so as to face an inner surface of the separation wall (Wallisch, Fig. 1, item 52) and the slider is a plate-like body (Wallisch, Fig. 1, item 30) arranged in the second environment so as to face an external surface of the separation wall (Wallisch, Fig. 1, item 52).
Regarding claim 8, as combined above, Wallisch teaches the apparatus according to claim 5, wherein the first linear guide comprises a first rail (Wallisch, Fig. 1-2, item 16) and a second rail (Wallisch, Fig. 1-2, item 16) which are mutually parallel, said plurality of wheels comprising a first pair of wheels (Wallisch, Fig. 2, item 12) rotatably coupled to said first rail and a second pair of wheels (Wallisch, Fig. 2, item 12) rotatably coupled to said second rail.
Regarding claim 13, as combined above, Wallish teaches the apparatus according to claim 5, wherein said case comprises at least a first magnet (Wallisch, Fig. 1, item 20) and said slider comprises at least a second magnet (Wallisch, Fig. 1, item 40).
Regarding claim 14, as combined above, Wallisch teaches the apparatus according to claim 5, wherein said case comprises at least one magnet (Wallisch, Fig. 1, item 20).
Cattin in view of Wallisch does not expressly disclose said slider comprises a ferromagnetic material. However, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to utilize a ferromagnetic material for the slider, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Cattin in view of Wallisch in view of Hayakawa et al (US 2024/0059541), hereinafter Hayakawa.
Regarding claim 15, Cattin is silent about the apparatus according to claim 1, further comprising: a box delimiting the first environment, the separation wall being a bottom wall of said box.
However, Wallisch teaches a box (Wallisch, Fig. 1, item 50) delimiting the first environment, the separation wall being a bottom wall (Wallisch, Fig. 1, item 52) of said box.
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Cattin and Wallisch to modify the apparatus of Cattin to include the box configuration of Wallisch. A person of ordinary skill in the art would have been motivated to make such change in order to ensure the clean room environment remains as sterile as possible by minimizing the amount of components needed to connect from outside of the clean room into the clean room (Wallisch, Para. 0004).
Cattin in view of Wallisch is silent about a sterilizing unit configured to sterilize the containers; a rinsing unit configured to rinse the containers, said rinsing unit being located downstream the sterilizing unit; a filling unit configured to fill the containers with a fluid product, said filling unit being located downstream the rinsing unit; and a closing unit configured to close the filled containers, said closing unit being located downstream the filling unit.
However, Hayakawa teaches an apparatus (Hayakawa, Fig. 1) for transporting containers further comprising: a sterilizing unit (Hayakawa, Fig. 1, item 11) configured to sterilize the containers (Hayakawa, Para. 0109); a rinsing unit (Hayakawa, Fig. 1, item 14) configured to rinse the containers, said rinsing unit being located downstream the sterilizing unit (Hayakawa, Para. 0109); a filling unit (Hayakawa, Fig. 1, item 20) configured to fill the containers with a fluid product (Hayakawa, Para. 0109), said filling unit being located downstream the rinsing unit (Hayakawa, Para. 0109); and a closing unit (Hayakawa, Fig. 1, item 16) configured to close the filled containers (Hayakawa, Para. 0109), said closing unit being located downstream the filling unit (Hayakawa, Para. 0109).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Cattin, Wallisch, and Hayakawa to modify the apparatus of Cattin in view of Wallisch to include the content-filling and sterilizing system of Hayakawa. A person of ordinary skill in the art would have been motivated to make such change in order to provide a system with a decreased amount of discharged carbon dioxide (Hayakawa, Para. 0006).
Allowable Subject Matter
Claims 9-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VERONICA MARTIN whose telephone number is (571)272-3541. The examiner can normally be reached Monday-Thursday 8:00-6:00.
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/VERONICA MARTIN/Primary Examiner, Art Unit 3731