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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the subject matter of claims 3 and 12 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-20 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 requires a pump body having a “cut portion”. Two dimensions are claimed: “a thickness of the cylinder body” and a “a maximum distance between an edge of the cut portion and the inner wall of the cylinder body”. The ratio of “the maximum distance between an edge of the cut portion and the inner wall of the cylinder body” to “the thickness of the cylinder body” b/B is claimed as being greater than zero. A zero ratio would require a zero dimension for b the “the maximum distance between an edge of the cut portion and the inner wall of the cylinder body”. A dimension of an object such as b becomes infinitely smaller and smaller as it approaches but never reaches non-existence at a theoretical dimension of zero. So when it comes to claiming dimensions of an object, there is no practical difference between “greater than or equal to zero” and “greater than zero” as measuring a theoretical dimension of zero (non-existence) is impossible and dimensions approaching zero are immeasurable as a dimension of an object becomes infinitely smaller and smaller without ever reaching non-existence at theoretical zero. By setting the lower bound of the ratio b/B in claim 1 to zero and thereby including all smaller and smaller b which infinitely approach but never reach the theoretical threshold of zero (which would correspond to non-existence), applicant is claiming a “cut portion” that essentially does not exist in any practical sense. Therefore, by requiring a “cut portion” in claim 1 and then also in claim 1 making it clear that the cut portion essentially does not even exist in any practical sense (b is bounded only by theoretical zero [non-existence] which means the ratio includes any possible b which infinitely becomes smaller and smaller as it approaches but never reaches non-existence at theoretical zero), the intended scope of claim 1 is indefinite. A person of ordinary skill in the art cannot determine the meets and bounds of claim 1 because it is unclear if the “cut portion” is actually required, or not. If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993).
Since claim 10 includes limitations that correspond to the limitations a claim 1, claim 10 is rejected for the same reasons as claim 1.
The same analysis can also be applied to the ratio b/L in claims 2 and 11 which also use the lower bound of zero which again corresponds to non-existence of the claimed “cut portion” in any practical sense. Therefore, claims 2 and 11 are rejected for reasons that correspond to the reasons detailed above for claim 1.
The same analysis can also be applied to the angle Theta in claims 4 and 13 which also use the lower bound of zero which again corresponds to non-existence of the claimed “cut portion” in any practical sense. Therefore, claims 4 and 13 are rejected for reasons that correspond to the reasons detailed above for claim 1.
The same analysis can also be applied to the distance L in claims 8 and 17 which also use the lower bound of zero which again corresponds to non-existence of the claimed “cut portion” in any practical sense. Therefore, claims 8 and 17 are rejected for reasons that correspond to the reasons detailed above for claim 1.
Claims 3 and 12 require an angle that is not sufficiently explained and not shown in the drawings and thus the claim is indefinite as a person of ordinary skill in the art does not know what angle is being claimed. If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993).
Dependent claim are rejected based on their dependency to the claims rejected in detail above.
Examiner's notes:
It is noted that applicant’s specification discloses what could be interpreted as various advantages associated with the “cut portion”, but the claims include a cut portion that is so infinitesimally, immeasurably small that it does not exist in any practical sense which means these associated advantages would likewise be non-existent.
It is also noted that the examiner is unable to perform a proper search to determine applicable prior art as the intended scope of the claimed invention is unclear. As detailed in the claim rejections above, the “cut portion” is required in the claims but the “cut portion” is claimed as being so infinitesimally, immeasurably small as to be non-existent in any practical sense which causes a great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claims. Therefore, it is impossible to perform a proper search and impossible to perform a proper evaluation of the prior art as the claim limitations make it unclear what the claims actually require.
MPEP 904 states: (emphasis added) "The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the nonprovisional application, then searches the prior art as disclosed in patents and other published documents, i.e., nonpatent literature (NPL).".
MPEP 904.01 states: "The breadth of the claims in the application should always be carefully noted; that is, the examiner should be fully aware of what the claims do not call for, as well as what they do require."
MPEP 2173.02 states: "During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected. Packard, 751 F.3d at 1310."
MPEP 2173.06 II states: Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims."
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANDREW FINK whose telephone number is (571) 270-3373. The examiner can normally be reached on M-Th 9-7.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached on (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4373.
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/Thomas Fink/Primary Examiner, Art Unit 3746
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