DETAILED ACTION
Response to Arguments
Applicant's arguments filed 15 SEP 25 have been fully considered but they are not persuasive.
The arguments in view of the amendments cannot serve to patentably distinguish the instant claims over the patented claims for the following reasoning/rationale.
Applicant replaces the previously-deleted “an illuminator” with --light emitting unit--, “a switch” with --an activator--, “connected memory processing unit” with --controller--, and “curved” with --non-linear--, in claim 1.
Applicant discloses, “The laser diode has a front beam emitting end 108,” ¶ [0051], and, “laser beam emitting laser diode 106,” ¶ [0056], though nowhere is the laser diode referred to as a “unit.” Thus, while, perhaps one reading the specification for clarification as to terms may conclude that a “light emitting unit” intends to convey the disclosed “laser diode 106,” MPEP § 608.01(o) informs:
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies.
This alone suffices not permitting Applicant to reword any limitation in the claims without relying on the language used in the specification. However, the guidance continues:
Usually the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
To emphasize, “a confusing variety of terms for the same thing” renders the claim ambiguous.
Similarly, “activator,” “controller,” and “non-linear” do not appear in the disclosure and, thus, are ambiguous as being “a confusing variety of terms for the same thing.”
See previous action for detailed explanation as to terms.
Claim 17 has been similarly amended to replace “a switch” with --an actuator--, “laser” with --light emitting unit--, “curved” with --non-linear--, and “electrical conductor” with --lead--, none of which replacement terms has antecedent basis in the specification. Thus, such are similarly ambiguous. See above.
Thus, the nonstatutory double patenting rejection must stand.
Claim Objections
Claim 1 is objected to as reciting “light emitting unit” without an article, e.g., --a--.
Claim 17 is objected to as reciting “an lead.”
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.
Claims 1-18 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a predominantly curved body, does not reasonably provide enablement for a predominantly non-linear body. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The issue is that the metes and bounds of Applicant’s disclosed “curved” body are significantly less than the term “non-linear” conveys. Applicant discloses that “The grip [202] has flat or gently curved right and left side portions 208, 210, a gently curved front strap 212 facing forward, and curved back strap 214 facing rearward,” ¶ [0040]. Figures 4 and 6 show these features clearly and, while such can be described as flat, gently curved, and/or curved as the case may be, such cannot be described as, e.g., helical, conical, spherical, semi-spherical, elliptical. Thus, the term “non-linear” improperly broadens Applicant’s disclosure.
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.
Claims 1-18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Re: claims 1 and 17, see explanation above regarding use of a confusing variety of terms for the same thing.
Any unspecified claim is rejected as being dependent upon a rejected base claim.
The claims will be further treated on the merits as best understood only.
Double Patenting
See previous office action(s) for a definition of a nonstatutory double patenting rejection and the mechanisms available to overcome such.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 9,921,027. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasoning provided above in view of that asserted in an office action or office actions, previously. In sum, the instant claims amount to mere rewording of the patented claims, as such would be understood by a reader thereof, and all other limitations are covered by the patent.
Evidence to the contrary of any of the above is welcome.
Kindly see previous office action(s) for any detailed explanation not included herein.
Conclusion
All claims are either identical to or patentably indistinct from claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 extension fee 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 should be directed to Bret Hayes at telephone number (571) 272 – 6902, fax number (571) 273-6902, or email address bret.hayes@uspto.gov, which is preferred, especially for requesting interviews, general questions, etc. Note, however, that return correspondence cannot be made in the event that information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122 has been included. See MPEP §§ 502.03 and 713.01, I, regarding email communications. The examiner can normally be reached Mondays through Fridays from 5:30 AM to 1:30 PM, Eastern.
The Central FAX Number is 571-273-8300.
If attempts to contact the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers, can be reached at (571) 272 – 6874.
/Bret Hayes/
Primary Examiner, Art Unit 3641
6-Oct-25