DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/28/2025 has been entered.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claim 1 objected to because of the following informalities:
“causing the elastic limiter deformed” in line 17 should be written “causing the elastic limiter to be deformed”
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greep et al., (US 20180333193; hereinafter Greep).
Regarding claim 1, Greep (Figures 1-9 and 13) discloses a telescopic structure for an electrotome (104) capable of evacuating smoke ([0031], [0033]), comprising an electrotome pencil body (114), wherein the electrotome pencil body (114) is hollow inside and provided with an opening end at one end (distal end), ([0036]); the opening end (distal end) of the electrotome pencil body (114) is provided with a limit connection part (148), the limit connection part (148) is sleeved with a collar (152b), ([0078]); an elastic limiter (element 166b is configured to be compressed/flexed inward/outward when the device is moved between the locked and unlocked positions, so element 166b is elastic/flexing since it is capable of recovering size/shape after deformation/flexing) is provided between the limit connection part (148) and the collar (152b), ([0079]); the telescopic structure for the electrotome (104) capable of evacuating smoke further comprises a channel (the channel formed by the space radially inside elements 166b, the space/channel configured to house the extendable shaft 124) that penetrates the collar (152b) and the elastic limiter (166b) in sequence and communicates with the inside of the electrotome pencil body ([0081]), wherein the limit connection part (148) is provided with a limit block (150) at an end (proximal end) away from the electrotome pencil body (114), ([0058]-[0059]): and wherein the collar (152b) is provided with a protrusion (shown in annotated Figure 13 below) at an inner side of one end (distal end of collar 152b) adjacent to the electrotome pencil body (114), the protrusion (shown in annotated Figure 13 below) is in contact with the limit block (150) on an inside surface when the limit block (150) engages the limit groove (154b), ([0078]-[0079]), the channel (the channel formed by the space radially inside elements 166b) is provided with a smoking pipe (extendable shaft 124), the smoking pipe (124) passes through the channel (the channel formed by the space radially inside elements 166b) and is in communication with the electrotome pencil body (114), ([0081]); when the collar (152b) is moved backwards to cause a relative displacement between the collar (152b) and the limit connection part (148), the limit connection part (148) exerts a pressure on the elastic limiter (166b), causing the elastic limiter (166b) deformed (element 166b is configured to be compressed/flexed inward/outward when the device is moved between the locked and unlocked positions, so element 166b is deformed/flexed since it is capable of recovering size/shape after deformation/flexing); then a diameter of the channel (the channel formed by the space radially inside elements 166b) becomes larger ([0075]: as the limit connection part 148 is moved forward, causing the collar 152b to move relatively backward, the device moves into the unlocked position, wherein elements 166b flex away from shaft 124, causing the diameter of the channel formed by the space radially inside elements 166b to become larger), such that the smoking pipe (extendable shaft 124) is capable to be extended or retracted in the channel (the channel formed by the space radially inside elements 166b), ([0075]: in the unlocked position, the shaft 124 is allowed to be extended or retracted in the channel formed by the space radially inside elements 166b).
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Annotated Figure 13 from the Greep reference
Regarding claim 3, Greep (Figures 1-9 and 13) discloses wherein the limit block (150) is in contact with the elastic limiter (166b, 180) at an end (proximal end of limit block 150) away from the electrotome pencil body (124), ([0058]-[0059], [0078]-[0079]).
Regarding claim 5, Greep (Figures 1-9 and 13) discloses wherein the collar (152b) is provided with a limit groove (154b) inside, for installing the limit connection part (148), a spacing between two end surfaces of the limit groove (154b) is greater than a spacing between two end surfaces of the limit block (150), ([0058]-[0059], [0078]-[0079]).
Regarding claim 6, Greep (Figures 1-9 and 13) discloses wherein the collar (152b) is provided with a mounting groove (182) for mounting the elastic limiter (166b, 180); the mounting groove (182) is provided at 0 - 1 cm from a front end surface of the limit groove (154b), ([0058]-[0059], [0078]-[0079]).
Regarding claim 7, Greep (Figures 1-9 and 13) discloses wherein the elastic limiter (166b, 180) is annular, and the elastic limiter (166b, 180) has a longitudinal section of a concave arc; the channel (186) runs through a center of the elastic limiter (166b, 180), ([0058]-[0059], [0078]-[0079], [0081]).
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greep as applied to claim 1 above, and further in view of Simonsen, (US 20190110832).
Regarding claims 8-9, Greep discloses the telescopic structure for an electrotome capable of evacuating smoke according to claim 1, but fails to disclose wherein the collar comprises a collar body and a collar inner sleeve; the collar inner sleeve is clamped on an inner side of the collar body, and the elastic limiter is provided between a rear side surface of the collar body and a front end surface of the collar inner sleeve, further wherein the collar inner sleeve is provided with a limit part that protrudes inwardly, and is adapted with the limit connecting part. However, Simonsen (Figure 13) teaches a telescopic structure for an electrotome capable of evacuating smoke including a collar (12) comprising a collar body (outer body) and a collar inner sleeve (35); the collar inner sleeve (35) is clamped on an inner side of the collar body (outer body), wherein the collar inner sleeve (35) is provided with a limit part (37) that protrudes inwardly ([0062]-[0064]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Greep to include the collar comprising a collar body and a collar inner sleeve; the collar inner sleeve clamped on an inner side of the collar body, wherein the collar inner sleeve is provided with a limit part that protrudes inwardly and is adapted with the limit connecting part, as taught by Simonsen, because the modification would further fix the position of the pencil body as required by the user (Greep; [0063]). Furthermore, since the collar inner sleeve of the modified device would be provided on the inner surface of the collar disclosed by Greep, the elastic limiter would be provided between a rear side surface of the collar body (proximal side surface) and a front end surface (distal end surface) of the collar inner sleeve, wherein the limit part would be adapted with limit connecting part indirectly through the collar.
Response to Arguments
Applicant’s arguments filed 04/28/2025, with regard to the newly amended limitations of claim 1, have been fully considered and are persuasive. Therefore, the rejection(s) has/have been withdrawn. However, upon further consideration, a new ground(s) of rejection is/are made in view of a new interpretation of the Greep reference. Under the new interpretation, the channel defined by the claims is interpreted as the channel formed by the space radially inside elements 166b, the space/channel configured to house the extendable shaft 124 in Greep. Accordingly, as the limit connection part 148 is moved forward, causing the collar 152b to move relatively backward, the device moves into the unlocked position, wherein elements 166b flex away from shaft 124, causing the diameter of the channel formed by the space radially inside elements 166b to become larger. The smoking pipe (extendable shaft 124) is thus allowed to be extended or retracted in the channel formed by the space radially inside elements 166b. Therefore, Examiner the new interpretation of Greep discloses the invention as recited at least in amended independent claim 1.
Conclusion
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/C.C.P./Examiner, Art Unit 3794
/EUN HWA KIM/Primary Examiner, Art Unit 3794