Detailed Action
Preliminary Amendment
1. Entry of applicant’s preliminary amendment dated 3-27-25 into the application file is acknowledged.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
3. Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains legal phraseology in particular the term “means”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Drawings
4. The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Claim Interpretation
5. 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.
Regarding claim 1, applicant has not invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed at least one cutting unit in that applicant claims specific structure related to the at least one cutting unit being the claimed knife shaft and knife carrier. Further, applicant has not invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed at least one compensating element in that applicant has not claimed any specific functional language related to the at least one compensating element. Further, applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed securing means with the associated functional language being the circular knife is held and fixed on the knife shaft, and as seen in applicant’s originally filed disclosure the securing means is detailed as the securing means 19 are "threaded onto" the knife shaft 14 against the abutment 17 as detailed in page 11 lines 22-24 of applicant’s originally filed specification.
Referring to claim 2, applicant has not invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed two cutting units in that specific structure being the claimed knife shaft and knife carrier are disclosed in parent claim 1 as related to the cutting units.
Referring to claim 3, applicant has not invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed flexible sealing element in that applicant has not claimed any specific functional language with respect to the claimed flexible sealing element.
Referring to claim 16, applicant has not invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed control device in that applicant has not claimed any specific functional language related to the claimed control device.
Regarding claims 17 and 18, applicant invokes 35 U.S.C. 112(f) means plus function analysis with respect to the claimed transport unit and as seen in applicant’s originally filed disclosure the transport unit is not detailed structurally. Further, applicant invokes 35 U.S.C 112(f) means plus function analysis with respect to the claimed control device and as seen in applicant’s originally filed disclosure the control device is not detailed structurally.
Claim Rejections - 35 USC § 112
6. 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 1-23 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.
Claim 1 is 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. It is unclear to what the structure of the claimed securing means is given applicant’s originally filed disclosure in view of the 35 U.S.C. 112(f) means plus function analysis detailed earlier in paragraph 5 of this office action. As seen in page 3 lines 13-20 a key and slot joint is detailed but the specification as presently written makes it is unclear as to whether the key and joint slot structure relates to the securing means, abutment or compensating element, and further the phrase “for example” in this portion of applicant’s specification would also make the claim indefinite if the key and joint slot are considered the claimed securing means. Further, as seen in page 11 lines 22-24 of applicant’s originally filed specification the securing means are detailed as securing means 19 are "threaded onto" the knife shaft 14 against the abutment 17 and since the phrase threaded onto is in parenthesis it is unclear as to whether threads/threaded structures are to be considered the structure of the claimed securing means. Further, applicant has not submitted drawings and therefore the drawings cannot be reviewed as related to reference numeral 19 that corresponds to the securing means and therefore the drawings cannot be reviewed to determine if any structure related to the claimed securing means is disclosed.
Claims 17 and 18 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. Applicant invokes 35 U.S.C. 112(f) means plus function analysis with respect to the claimed transport unit as detailed earlier in paragraph 5 of this office action and applicant’s originally filed specification does not detail any specific structure related to the transport unit and no drawings are filed to review to determine if any specific structure related to the transport unit is disclosed. Therefore it is unclear to what structures can be considered the claimed transport unit. Further, applicant invokes 35 U.S.C. 112(f) means plus function analysis with respect to the claimed control device as detailed earlier in paragraph 5 of this office action and applicant’s specification does not disclose specific structure related to the control device in that the specification as presently written does not provide specific structure related to the control unit and it is unclear as to whether the control means detailed in the specification can be considered the control device and applicant has not filed drawings to be reviewed to determine if any specific structure relate to the control device is disclosed. Therefore it is unclear to what structures can be considered the claimed control device.
Claim 21 recites the limitation "the at least one sliding body" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. It is recommended that applicant make claim 21 dependent upon claim 19 and for purposes of the prior art rejections that follow, claim 21 is considered as being dependent upon claim 19.
Claim 22 recites the limitation "the at least one sliding body" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is recommended that applicant make claim 22 dependent upon claim 19 and for purposes of the prior art rejections that follow, claim 22 is considered as being dependent upon claim 19.
Double Patenting
7. 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.
Claim s 1-2, 6-9 and 13-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11-20 and 22-23 of copending Application No. 19,116,178 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the present application is detailed in claims 1 and 8 of the ‘178 application, claim 2 of the present application is detailed in claim 9 of the ‘178 application, claim 6 of the present application is detailed in claim 1 of the ‘178 application, claims 7 and 8 of the present application are detailed in claims 1 and 11 of the ‘178 application, claim 9 of the present application is detailed in claim 12 of the ‘178 application, claim 13 of the present application is detailed in claims 1-3 of the ‘178 application, claim 14 of the present application is detailed in claim 4 of the ‘178 application, claim 15 of the present application is detailed in claim 6 of the ‘178 application, claim 16 of the present application is detailed in claim 13 of the ‘178 application, claim 17 of the present application is detailed in claims 1,8 and 14 of the ‘178 application, claim 18 of the present application is detailed in claims 15-16 of the ‘178 application, claim 23 of the present application are detailed in claims 15,16 of the ‘178 application, claim 19 of the present application is detailed in claims 15-17 of the ‘178 application, claim 20 of the present application is detailed in claim 18 of the ‘178 application, claim 21 of the present application is detailed in claim 19 of the ‘178 application, and claim 22 of the present application is detailed in claim 20 of the ‘178 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. It is noted that a notice of allowability has been issued in related application 19/116,178.
Claim Rejections - 35 USC § 102
8. 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 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.
Claim(s) 1-5, 16-18 and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SU Patent No. 1699398.
Referring to claims 1 and 4, the ‘398 patent discloses an apparatus, configured to detach meat from a carcass or parts thereof as a product to be processed comprising, at least one cutting unit – at 1,2, two of items 3 and 5, which has at least one knife carrier – at one of 3, as seen in figure 1, with a knife shaft – at 5, rotatably mounted in the knife carrier, a circular knife – at 1,2, being arranged and fixed on the knife shaft – at 5, in a form-fitting manner – see figure 1, and in a rotationally fixed manner with respect to the knife shaft – see figure 1, and a drive – not shown but connected at 5 – see operation of the device in the English translation, for rotationally driving the knife shaft – at 5, wherein the circular knife – at 1,2, is held and fixed on the knife shaft – at 5, between an abutment – at 4 and the shoulder of shaft 5 connecting to the end of item 4 as seen in figure 1, of the knife shaft – at 5, and a securing means – at 7, which is arranged on the side of the free end of the knife shaft – at 5 – see figure 1, and wherein at least one compensating element – at any other of items 3, is arranged between the circular knife – at 1,2, and the abutment – at 4 – see figure 1, and/or between the circular knife – at 1,2, and the securing means – at 7 – see figure 1. Regarding the 35 U.S.C. 112(f) means plus function analysis with respect to the claimed securing means, item 7 of the ‘398 patent is threaded onto the shaft 5 and therefore is consistent with applicant’s originally filed disclosure.
Referring to claim 2, the ‘398 patent further discloses two cutting units – at 1,2,3,5, which are configured identical in construction and are arranged spaced apart from each other substantially mirror-symmetrically on either side of a transport path for the products to be processed – see figure 1, in such a manner that the transport path – at 6, for the products to be processed is formed between the two circular knives – at 1,2 – see figures 1-2.
Referring to claim 3, the ‘398 patent further discloses the at least one compensating element – at the center of items 3, is a flexible sealing element – see figure 1 and paragraphs [0014],[0016] of the English translation.
Referring to claim 5, the ‘398 patent further discloses the circular knife – at 1,2, and the at least one compensating element – at 3, are held pressed against the abutment – at 4,5, by the securing means – at 7 – see figure 1.
Referring to claim 16, the ‘398 patent further discloses a control device – not shown but see the English translation where an electronic controller would have to be used to operate the device as intended.
Referring to claim 17, the ‘398 patent discloses an apparatus for automatically processing products of the food processing industry, the apparatus comprising, a transport unit – at 6, configured to transport the products to be processed in a transport direction along a transport path through at least one processing station – at 1-7 – see figures 1-2, the at least one processing station includes the apparatus according to claim 1 – see figures 1-2 and the rejection of claim 1 detailed earlier, and a control device – not shown but see the English translation where the device of the ‘398 would have an electric controller to function as disclosed, for controlling the transport unit – at 6, and the at least one or each processing station – at 1-7 – see figures 1-2 and the English translation. Regarding the 35 U.S.C. 112(f) means plus function analysis with respect to the claimed transport unit, item 6 of the ‘398 patent is at least a functional equivalent to applicant’s disclosed transport unit in that item 6 of the ‘398 patent provides similar function of moving the products through the processing station as seen in figures 1-2. Regarding the 35 U.S.C. 112(f) means plus function analysis with respect to the claimed control device, the controls that would allow the device of the ‘398 to operate as detailed in the English translation would at least be a functional equivalent to applicant’s disclosed control device in that it would provide similar function of controlling operation of the transport unit and processing station as seen in the English translation of the ‘398 patent.
Referring to claim 18, the ‘398 patent discloses a method for automatically processing products of the food processing industry, the method comprising the steps of transporting the products to be processed along a transport path into a region of at least one processing station – at 1-7, by a transport unit – at 6 – see figures 1-2, processing the products in the processing station – at 1-7 – see figures 1-2 and the English translation, detaching meat from a carcass – see fish carcass in figures 1-2, by an apparatus – at 1-7, for detaching meat from the carcass or parts thereof as the products to be processed – see at 1-2 in figures 1-2 and the English translation, wherein automatic execution is controlled by a control device – not shown but see the English translation where an electronic controller would have to be used to operate the device for performing the method as intended, and a circular knife – at 1,2, of the apparatus for detaching the meat is passively controlled by the product to be processed, independently of the control device – see at 1-3 in figures 1-2 and the English translation, during execution of the detaching step with respect to its position relative to the carcass by mounting the circular knife – at 1,2, on a knife shaft – at 5, which permits a compensating movement of the circular knife – at 1-2. on the knife shaft – at 5 – see via items 3 in figures 1-2 and in the English translation. Regarding the 35 U.S.C. 112(f) means plus function analysis with respect to the claimed transport unit, item 6 of the ‘398 patent is at least a functional equivalent to applicant’s disclosed transport unit in that item 6 of the ‘398 patent provides similar function of moving the products through the processing station as seen in figures 1-2. Regarding the 35 U.S.C. 112(f) means plus function analysis with respect to the claimed control device, the controls that would allow the device of the ‘398 to operate as detailed in the English translation would at least be a functional equivalent to applicant’s disclosed control device in that it would provide similar function of controlling operation of the transport unit and processing station as seen in the English translation of the ‘398 patent.
Referring to claim 23, the ‘398 patent further discloses the method is executed by the device of claim 1 – see at 1-7 in figures 1-2 and the English translation and see the rejection of claim 1 detailed earlier.
Claim Rejections - 35 USC § 103
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 (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) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the ‘398 patent as applied to claim 1 above, and further in view of U.S. Patent Application Publication No. 2015/0087214 to Jurs et al.
Referring to claim 15, the ‘398 patent does not disclose a cutting edge of the circular knife has a first chamfer directed towards the meat to be detached and a second chamfer directed away from the meat, the first chamfer being longer than the second chamfer. Jurs et al. does disclose a cutting edge – at 31, of the circular knife – at 21, has a first chamfer directed towards the meat to be detached – see lower portions of 31 in figure 1B, and a second chamfer directed away from the meat – see upper portions of 31 in figure 1B, the first chamfer – lower of 31, being longer than the second chamfer – upper of 31 – see at 31 in figure 1B. Therefore it would have been obvious to one of ordinary skill in the art to take the device of the ‘398 patent and add the chamfers with one chamfer longer than the other, so as to yield the predictable result of ensuring proper engagement of the cutting edge with the product being processed so as to ensure a quicker and more accurate cutting of the product as desired.
Allowable Subject Matter
10. Claims 6-14 and 19-22 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, and the non-statutory double patenting rejections, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following patents are cited to further show the state of the art with respect to carcass processing/cutting devices/methods in general:
U.S. Pat. No. 5,554,069 to Burch et al. – shows carcass cutting device
U.S. Pat. No. 8,298,050 to Jurs et al. – shows carcass cutting device
12. 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
