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 .
Objection to the Drawings
1. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “500” has been used to designate both “a first recessed grip portion” and “a second recessed grip portion” as described in paragraph [0040] in the specification. 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. 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.
Rejections 35 U.S.C. § 112
2. 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-8 and 10-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor, at the time the application was filed, had possession of the claimed invention. Independent claim 1 as amended requires that the handle component is a non-plastic, non-rubber polymer handle. However, the specification at paragraph [0038] states that the handle component (104) is manufactured of wood, plastic, rubber compositions, or polymers, etc. In fact nowhere in the specification does the Applicant state that the handle (104) is non-plastic, non-rubber polymer but states the opposite has been manufactured from these materials. Applicant does not have support for this amendment in the specification; therefore, the limitation is considered new matter.
Claims 2-7 and 10-12 are rejected for their dependency on claim 1.
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 20 recites the limitation "plurality of finger-holes" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 13 and 17-19 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. In particular, independent claim 13 as amended requires that each finger-hole is protected by an abrasion resistant collared ring inserted therein and that the handle component further includes a first recessed grip portion positioned between the first and second ends and a second recessed grip portion positioned adjacent to the plurality of finger-holes near the first end. The Applicant depicts in FIG. 4 an embodiment with the finger-hole that is protected by an abrasion resistant collared ring (400) or grommet while FIG. 5 depicts a grip portion (500) having recessed finger portion and grip portion (See paragraphs [0037]-[0040] in the specification). In FIG. 5, while the grip portion (500), as mentioned above, is shown along with finger holes (106) an abrasion resistant collared ring (400) is not depicted. Therefore, there is no embodiment that depicts an embodiment that includes both the abrasion resistant collared ring and the grip portions as claimed in independent claim 13. Moreover, it is not clear what constitutes the first recessed grip portion and the second recessed grip portion since both labeled (500) in FIG. 5 in the drawings.
Claims 17-19 are rejected for their dependency claim 13.
Independent claim 20, requires providing a four integrated finger-holes vertically oriented along a length of the handle in line 4 whiles line 10-11 require that each of the finger-hole is protected by an abrasion resistant edge strip inserted therein and the handle component further includes a recessed textured grip portion. In the drawings, FIG. 3 depicts the paint brush that has four vertically oriented finger holes (116, 118, 120, 122) while depicts FIG. 4 an embodiment with the finger-hole that is protected by an abrasion resistant collared ring (400) or grommet while FIG. 5 depicts a grip portion (500) having recessed finger portion and grip portion (See paragraphs [0036]-[0040] in the specification). In FIG. 3, while the plurality of finger holes are shown, as mentioned above, an abrasion resistant collared ring (400) is not depicted. Further, there is no embodiment that depicts an embodiment that includes both the abrasion resistant collared ring and the grip portions nor there does the flow chart for the method describe finger-hole is protected by an abrasion resistant edge strip as claimed in independent claim 20.
Response to Arguments
3. Applicant’s arguments with respect to claims 1-8, 1-13 and 17-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's amendment necessitated the new grounds 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.
Conclusion
4. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DEANGILO JENNINGS whose telephone number is (571)270-1536. The examiner can normally be reached M-F 8-4:30pm. EST.
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, Edward F Landrum can be reached on (571) 272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL DEANGILO. JENNINGS
Examiner
Art Unit 3723
/MICHAEL D JENNINGS/Primary Examiner, Art Unit 3723