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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 20, 2026 has been entered.
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 1-2, 4-8, 11, and 17-25 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.
Regarding claim 1, the recitation “the length of material consisting essentially of: a generally arcuate cross-sectional shape … and a generally linear cross-sectional shape …” (lines 5-12) renders the claim indefinite because the metes and bounds of the recited limitation cannot be determined. A cross-sectional shape is not a material, ingredient, component, or step, and it is therefore unclear what the transitional phrase “consisting essentially of” operates to exclude from the length of material. It is noted that the specification employs the phrase “comprise, consist essentially of, or consist of” only with respect to the composition of the length of material 4105 (a metal, polymer, fiber, carbon fiber, or a combination thereof in paragraph [0177]) but no reference to cross-sectional shape. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising."
Claims 2, 4-8, 11, and 17-25 depend from claim 1 and therefore are also rejected under this section.
Further, with regards to claim 11, the recitations of “a first face” (line 2) and “a second face” (line 3) have rendered the claim indefinite because the amended claim 1 has already set forth a first face and a second face (opposite the first face) as elements of the cover. It is therefore unclear whether the faces of claim 11 are the previously recited faces of the cover (in claim 1) or additional, distinct faces.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 recites that the securing portion is disposed on a first face and that the mating portion is disposed on a second face. Claim 1, as amended, has already required the limitations of claim 11; therefore, claim 11 recites no limitation beyond those already present in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 2, 4-8, 11, and 17-25, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori, US 2007/0028425 in view of Seo et al., US 9,668,550.
Regarding claim 1, Mori discloses a multi-modal fastener (1) including a first end (a distal end of a band body 2) and a second end (near element 6) opposite the first end (see figure 1), the multi-modal fastener comprising: a length of material (of a band body 2) extending substantially from the first end to the second end (figure 1); and a cover (an outer, molded resin cover portion of the band body 2; the band body is injection molded as disclosed in paragraph [0042]) surrounding the length of material (the interior of 2), the cover (of 2) comprising: a first face (a first surface of the band body 2), a second face (a second, opposite surface of the band body 2) opposite the first face, a securing portion (teeth 3 proximal to element 6) disposed on the first face and proximal to the second end (figures 1 and 2A-2C), and a mating portion (teeth 3 on the distal first end of 2) disposed on the second face and proximal to the first end (figure 1), the mating portion configured to reversibly mate with the securing portion (near both ends of the band body positioned outside the insertion hole, the band bodies are pressed to each other with the guide as a fulcrum, whereby the engagement of the teeth 3 is attained; see paragraphs [0012] and [0047] and figures 8A-8B). With regards to the requirement that the securing portion and the mating portion be disposed on opposite faces, Mori has further disclosed that wherein the engagement teeth may be formed on both surfaces of the band body (paragraph [0040]), such that a securing portion (teeth 3 proximal to 4) is disposed on a first face (of 2) and a mating portion (teeth 3 on the distal first end) is disposed on a second face (the opposite face of 2) opposite the first face.
Mori does not explicitly disclose the length of material (2) consisting essentially of: a generally arcuate cross-sectional shape when viewed along its longitudinal axis when the multi-modal fastener adopts a first stable resting configuration that is generally planar from the first end to the second end, and a generally linear cross-sectional shape when viewed along its longitudinal axis when the multi-modal fastener adopts a second stable resting configuration that is non-planar from the first end to the second end.
Seo (US 9,668,550) teaches a fastener (2) including a band body (1) comprising a length of material (a bistable spring 3) comprising a generally arcuate cross-sectional shape (see figure 7; the cross-section in a width direction of the material 3 maintains a downward curvature) when viewed along its longitudinal axis when the multi-modal fastener adopts a first stable resting configuration (see figure 10A) that is generally planar from the first end (31) to the second end (32; see figure 10A), and a generally linear cross-sectional shape (the cross-section in the width direction of the material 3 may be flat; see column 10, lines 43-46) when viewed along its longitudinal axis when the multi-modal fastener adopts a second stable resting configuration (see figure 10B) that is non-planar from the first end to the second end (figure 10B). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the length material of the band body (2) of Mori to comprise a bistable spring length material as taught by Seo so that the band body surrounds the bistable spring, in order to reinforce the band body in a flat state and to provide elasticity in a direction of bending in a bent state.
Regarding claim 2, the combination of Mori and Seo teaches the multi-modal fastener of claim 1, Mori further discloses wherein the securing portion (3 close to the guide 6) and the mating portion (3 on the distal end of the band) are separated by a substantially maximum distance when the fastener is in the first resting configuration (when the band body is flat).
Regarding claim 4, the combination of Mori and Seo teaches the multi-modal fastener of claim 1, Mori further discloses wherein the securing portion (3 close to 6) comprises at least one securing feature (toothed end) configured to reversibly mate with the mating portion (teeth 3 on the other end).
Regarding claim 5, the combination of Mori and Seo teaches the multi-modal fastener of claim 4, Mori further discloses wherein the at least one securing feature includes at least one tooth (see figure 1).
Regarding claim 6, the combination of Mori and Seo teaches the multi-modal fastener of claim 1, Mori further discloses wherein the mating portion (3 on the distal first end) comprises at least one mating feature (toothed end) configured to reversibly mate with the securing portion (teeth 3 proximal to the guide 6).
Regarding claim 7, the combination of Mori and Seo teaches the multi-modal fastener of claim 6, Mori further discloses wherein the at least one mating feature comprises at least one locking pawl (a tooth 3 beyond the guide 6 can be considered a pawl with the guide 6 acting as head portion for the band body to pass and engage with said pawl).
Regarding claim 8, the combination of Mori and Seo teaches the multi-modal fastener of claim 1, Mori further discloses wherein the securing portion (teeth 3 proximal to the guide 6) comprises at least one securing tooth (toothed end), and wherein the mating portion (teeth 3 on the distal first end) comprises at least one locking pawl (a tooth 3 on the distal end) configured to reversibly mate with the at least one securing tooth (that is beyond the guide 6).
Regarding claim 11, the combination of Mori and Seo teaches the multi-modal fastener of claim 1, Mori further discloses wherein the securing portion (teeth 3 proximal to the guide 6) is disposed on a first face (of the band body 2) and wherein the mating portion (teeth 3 on the distal first end) is disposed on a second face (on a different portion of the band body 2).
Regarding claim 17, the combination of Mori and Seo teaches the multi-modal fastener of claim 1 further comprising a handle (7) associated with the length of material.
Regarding claim 18, the combination of Mori and Seo teaches the multi-modal fastener of claim 1 except for wherein the length of material further comprises a throughhole disposed therethrough. In the previous Office action the examiner took Official Notice that it is well known in the tie/band fastener art that a punched hole can be provided for the purpose of mounting the tie to be secured. Applicant did not traverse the taking of Official Notice in the reply filed July 20, 2026; the noticed fact is therefore taken to be admitted prior art (AAPA). See MPEP 2144.03(C). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to further modify the fastener of the combination of Mori and Seo to include a throughhole on the length of material (2; where element 7 is present) so that the band fastener can be secured and/or fastened to another object.
Regarding claim 19, the combination of Mori and Seo teaches the multi-modal fastener of claim 1, [wherein the fastener is configured to reversibly mate with a mount (can be fastened or mounted to another structure)].
Claim language set in brackets [] set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of the fastener, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the band taught by the combination of Mori (US 2007/0028425) and Seo et al. (US 9,668,550), is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Regarding claim 20, the combination of Mori and Seo teaches the multi-modal fastener of claim 19, [wherein the mount is configured to reversibly mate with a plurality of fasteners].
Regarding claim 21, the combination of Mori and Seo teaches the multi-modal fastener of claim 1 further comprising a writable surface (on the exterior surface of the band body 2; it is further noted that Seo also teaches a writable surface on the flat surface of the device 2).
Regarding claims 22, 23 and 25, the combination of Mori and Seo teaches the multi-modal fastener of claim 4 or claim 6 except for wherein the securing feature comprises a self-fusing material and wherein the self-fusing material is a repositionable self-fusing material.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to consider a plastic that is self-fusing (when heat is applied), since it has been held to be within the general skill of a worker in the art to select a known (commercially available) material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 24, the combination of Mori and Seo teaches the multi-modal fastener of claim 1. Seo further teaches wherein the length of material (3) comprises a bistable spring material having a generally arcuate cross-sectional shape when viewed along its longitudinal axis (see figure 7). The combination does not expressly teach the spring material is spring steel. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to consider a spring steel material, since it has been held to be within the general skill of a worker in the art to select a known (commercially available) material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed July 20, 2026 have been fully considered but they are not persuasive.
Applicant argues that Mori does not teach a binding band including securing and mating portions disposed on opposite faces, and that Mori appears to teach binding bands wherein the securing and mating portions are disposed on the same single face (figures 8A-8B). The argument is found not persuasive. Mori is not limited to the embodiment illustrated in figures 8A-8B. Mori explicitly discloses at paragraph [0040] that “the engagement teeth may be formed on both surfaces of the band body”. Mori therefore discloses the claimed securing portion and mating portion. Alternatively, forming the engagement teeth on the second, opposite surface of the band body would have been a mere duplication of an essential working part. In re Harza, 274 F.2d 669, 124 USPQ 378.
Applicant further argues that the Office narrowly cites Seo for only a portion of its teachings and appears to disavow or ignore all other teachings of Seo, and that Seo is silent as to securing and mating portions. The argument is found not persuasive. Seo has been considered in its entirety and is relied upon for its teaching of a bistable spring length of material exhibiting the two claimed cross-sectional shapes in two configurations; the securing portion and the mating portion are disclosed by Mori, not Seo. It is noted one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, it is noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROWLAND DO whose telephone number is (571)270-5737. The examiner can normally be reached Monday-Thursday 8:30 - 7:00 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D./ Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677
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