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 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.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Amended claim 1 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the specification, while enabling for a mail hazard screening machine, does not reasonably provide enablement for the full scope of the claim as now including “wherein the singulator belt extends between the pair of compression rollers”. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with the claim. The following Wands factors are used.
Undue Experimentation Factors (Wands Factors)
(a) The breadth of the claims;
(b) The nature of the invention;
(c) The state of the prior art;
(d) The level or ordinary skill in the art;
(e) The level of predictability in the art;
(f) The amount of direction provided by the inventor
(g) The existence of working examples;
and (h) The quantity of experimentation needed to make use of the invention based on the content of the disclosure.
a)The breadth of the claims is unclear how the singulator belt extends between the pair of compression rollers. The claim appears to be drawn to the fig. 29 embodiment. However, the only description for this embodiment is found in par [0094]. The description is not at all understood since the depiction appears to show belt 31 extending sideways? through the roller 42 since clean air 63 is recited as coupled with a “top” of the enclosure. How would the mailpiece remain on the belt in this configuration?
b) The nature of the invention is unclear how mailpieces can be advanced through the arrangement of sideways belt 31 and it does not appear that the mailpiece is even depicted. Further, is the belt stopped for compression? Where is the mailpiece depicted or placed? Doesn’t the compression of the belt damage the belt? Wouldn’t the mail fall off this sideways belt? Finally, the operation of the system embodiment of figs. 29-33 is not clear and therefore is not understood since the only description is found in par [0094]. Please clarify.
c) The state of the prior art does not describe mail handling in this sideways orientation on a belt through compression rollers.
d) The level of ordinary skill in the art would not know how to make and/or use this invention since it is not known how the mailpiece advances through such a sideways system.
e) There is no level of predictability found in the prior art.
f) The amount of direction provided by the inventor is only found in par [0094] which does not provide detailed information as to how such an arrangement would work.
g) There are no existence of working examples given.
h) The quantity of experimentation is undue since the design and operation is not clear.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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.
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NF
Examiner
Art Unit 2855
/N.S.F/Examiner, Art Unit 2855
/LAURA MARTIN SWEENEY/Supervisory Patent Examiner, Art Unit 2855
