DETAILED CORRESPONDENCE
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 .
Response to Arguments
Applicant's arguments have been fully considered.
Applicant argues “Briggs does not teach … channels are in a single component. As is shown in FIG. 3 of the cited reference, several components are used to make each layer. For example, the first layer is made with components 213, 204, and 214.... in the current specification, in FIG. 6 below, there are multiple input channels 502 radially disposed and, in FIG. 16 below, for each of those input channels 1605, there are multiple deflection channels 1606 diagonally disposed, all of which are in a single component as illustrated in FIGS. 6 and 16.”
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Examiner appreciates the explanation and use of figures.
Examiner does not find this persuasive because Applicant it is uncertain how applicant is using the term “single component” and why the Fig 6 of the application shows a single component but Fig 3 of Briggs does not. What does “single component” mean? What is being excluded from Brigg or why isn’t Briggs device in Fig 3 a component?
Applicant argues “The Examiner rejected claims 10 under 35 U.S.C. §112(f) for being indefinite as detailed on pages 2-5 of the official action. Without agreeing or disagreeing with the Examiner, but merely to better define the claimed subject matter, the claims have been amended. Applicants respectfully request that the Examiner withdraw invoking §112 (f).”
Examiner does not find this persuasive because a “layer multiplication device” requires calling to the specification for understanding what this is. Upon consulting the specification, the device is not described. The new limitations are not sufficient. A “layer multiplication device” implies a function. The newly claimed structure of two channels is insufficient to describe the structure sufficient to perform the claimed function.
The 112(f) interpretation triggers a call to the specification to acquire the structure, but the specification does not describe what a “layer multiplication device” is, which prompts a 112(b) rejection.
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:
layer multiplication device in claim 10
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 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.
Claim(s) 1-20 is/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 pre-AIA the applicant regards as the invention.
In reference to claim 1, it is unclear what is intended to be excluded by “single component”.
In reference to claim 10, the claim limitation “layer multiplication device” 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.
The “layer multiplication device” requires calling to the specification for understanding what this is. Upon consulting the specification, the device is not described. The new limitations are not sufficient. A “layer multiplication device” implies a function. The newly claimed structure of two channels is insufficient to describe the structure sufficient to perform the claimed function.
The 112(f) interpretation triggers a call to the specification to acquire the structure, but the specification does not describe what a “layer multiplication device” is, which prompts a 112(b) rejection.
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.
Note: Claims 2-20 are also rejected by virtue of their dependence on claim 1.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4, 6-9, 14, 16, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Briggs (US 4522775 A)
In reference to claim 1, Briggs discloses an extrusion annular microlayer feedblock subassembly (“FIG. 3 schematically represents an apparatus of the invention including a segmented die block with an extrusion die block segment 201” [C4L46-49]) forming three or more annular layers (“a six layered parison exits the apparatus around pin 209 through exit orifice 210” [C5L30-34]; See Fig 1-3 and descriptions thereof)) comprising one or more input channels for each annular layer; two or more deflection channels connected to each input channel, (“There is a passageway 214 leading from the reservoir to the principal tubular channel 211. Adhesive layer 109 is extruded from auxiliary subextrusion die block 207 with accumulation reservoir 217 and second passageway 218 which leads into first passageway 216.” [C5L9-11]; See Fig 1-3 and descriptions thereof)) the output of each deflection channel designed to produce a layer stream which merge at flow joints of layer streams from one or more adjacent deflection channels to form a merged annular flow stream ; an annular channel connected to the two or more deflection channels designed to receive the merged annular flow stream; and a culmination cavity connected to the annular channel into which the merged annular flow stream from which the annular channel is fed, wherein the extrusion annular microlayer feedblock subassembly includes at least … sets of the two or more deflection channels and the annular channel for each set of the two or more deflection channels (“annular discharge reservoirs 44, 45 and 46 are connected to an auxiliary discharge flow channel 42 which leads to principal tubular flow channel 40 by annular connecting passageways 52, 53 and 55.” [C6L65-C7L2] and See Fig 1-3 and descriptions thereof).
Briggs does not show three sets as claimed. However, Briggs indicates that “More principal subextruders can be added to the vertically arranged subextruder column to form laminated structures with more than six layers.” (C5L505-53). Thus, it would been obvious to a person having ordinary skill in the art to configure the subassembly to comprise additional sets in order to accommodate additional subextruders and thereby arrive at the claimed invention.
In reference to claim 2 the cited prior art discloses the invention as in claim 1. See Fig 1-3 and descriptions thereof
In reference to claim 3 the cited prior art discloses the invention as in claim 1. See Fig 1-3 and descriptions thereof
In reference to claim 4 the cited prior art discloses the invention as in claim 1. See Fig 1-3 and descriptions thereof
In reference to claim 6-8 the cited prior art discloses the invention as in claim 1. See “feed passageways can be equipped with a regulating system” (C6L60-62)
In reference to claim 14 the cited prior art discloses the invention as in claim 1. See “It is a further object of the present invention to provide novel improved apparatus for making a multi-layered parison for blow molding which produces parisons reliably despite variations in the thickness of the layers.” (C3L21-23)
In reference to claim 9 the cited prior art discloses the invention as in claim 1.
See “extruders and subextruders may be insulated by ceramic bands”
In reference to claim 16 the cited prior art discloses the invention as in claim 1. See “principal tubular channel” (C5L29-30).
In reference to claim 18 the cited prior art discloses the invention as in claim 1. See “six layered parison exits the apparatus” (C5L32)
In reference to claim 20 the cited prior art discloses the invention as in claim 1. See “Rotation of the die body about the mandrel to provide more uniform layers” (C2L35-36).
Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
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