DETAILED ACTION
The Amendment filed 7/30/2026 has been entered.
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.
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 21 and 22 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 claim(s) 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(s), at the time the application was filed, had possession of the claimed invention. There is no support in the disclosure as filed, explicit or implied, for the limitations recited in claims 21 and 22. Although the applicant cites paragraphs 0131, 0178, and 0182 for support, paragraph 0131 provides no support and paragraphs 0178 and 0182 don’t exist. Moreover, Figures 90A-11 don’t disclose an item in contact with the lip.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, 4, 9, 12, 13, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCord (US 3,656,794).
Regarding independent claim 1, McCord discloses a suction tool for a system for sorting materials with a vacuum tube (see col. 2, lines 10-15), the suction tool comprising: a body of flexible material (see col. 2, lines 10-15) to be installed at a distal end of the vacuum tube (see col. 2, lines 10-15) and forming a tubular wall, the tubular wall being shaped with alternating rims and waists (see Figs. 1 and 2), and from a proximal end of the suction tool to a distal end thereof (see Figs. 1 and 2); an average diameter increasing proximally over a length of the body of flexible material (see Figs. 1 and 2), wherein the body ends at the distal end with a horn (11) having a flared edge forming a lip to enter in contact with items to be handled by the system for sorting materials and the body is integrally made of a single piece (see col. 2, lines 20-25 and Figs. 1 and 2), wherein a most proximal rim of the body is attached to a tubing connector (18) connecting the body to the vacuum tube, the most proximal rim having a largest diameter of the body (see Figs. 1 and 2), wherein each rim toward the distal end having a local rim diameter smaller than a local rim diameter of an immediately preceding rim and each waist toward the distal end having a local waist diameter smaller than a local waist diameter of an immediately preceding waist such that the body tapers from the most proximal rim toward the distal end, and the horn having a smallest diameter of the body (see Figs. 1 and 2) for selectively sucking up any one of the items smaller than the smallest diameter away into the vacuum tube (see col. 2, lines 20-25 and Figs. 1 and 2).
Regarding dependent claims 2, 4, and 9, McCord discloses that each rim has a local rim diameter larger than a local waist diameter of a next adjacent one of the waists (see Figs. 1 and 2). The average diameter increasing proximally over the length of the body of flexible material is implemented by having each rim having said local rim diameter being larger than the local rim diameter of a next one of the rims; each waist having said local waist diameter being larger than the local waist diameter of a next one of the waists (see Figs. 1 and 2). The body is made of rubber (see col. 2, lines 10-11).
Regarding independent claim 12, McCord discloses a suction tool for a system for sorting materials with a vacuum tube (see col. 2, lines 10-15), the suction tool comprising: a body of flexible material (see col. 2, lines 10-15) to be installed at a distal end of the vacuum tube (see col. 2, lines 10-15) and forming a tubular wall, the tubular wall being shaped by a succession of stages which are integrally formed with each other in a single piece, with alternating rims and waists (see Figs. 1 and 2), each pair of a rim and waist and connecting wall in between defining one of the stages, and from a proximal end of the suction tool to a distal end thereof (see Figs. 1 and 2); each one of the stages is larger than a next adjacent one of the stages (see Figs. 1 and 2), wherein the body ends at the distal end with a horn (11) having a flared edge forming a lip to enter in contact with items to be handled by the system for sorting materials and the body is integrally made of a single piece, wherein a most proximal rim of the body is attached to a tubing connector (18) connecting the body to the vacuum tube, the most proximal rim havinq a largest diameter of the body (see Figs. 1 and 2), and the horn having a smallest diameter of the body for selectively sucking up any one of the materials smaller than the smallest diameter away into the vacuum tube (see col. 2, lines 20-25 and Figs. 1 and 2).
Regarding claims 13 and 18, McCord discloses each rim has a local rim diameter larger than a local waist diameter of a next adjacent one of the waists within a same stage (see Figs. 1 and 2). The body is made of rubber (see col. 2, lines 10-11).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 10 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCord (US 3,656,794) in view of Blatt (US 2,934,086). McCord discloses all the limitations of the claim, but it does not explicitly disclose that the body is made of neoprene. Rather, Correa discloses that the body is made of “rubber or other similarly resilient materials”. However, Blatt discloses a similar tool in which the body is made of neoprene (see col. 3, lines 40-45) for the purpose of preventing damage of objects. It would have been obvious for a person of ordinary skill in the art, before the effective filing date of the applicant’s invention, to have the body made of neoprene, as disclosed by Blatt, for the purpose of preventing damage to objects.
Claim(s) 11 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCord (US 3,656,794) in view of Blatt (US 2,934,086), and further in view of Sperry (US 3,910,620). The combination of McCord and Blatt discloses all the limitations of the claim, but it does not explicitly disclose that the body has a Shore A hardness between 45 and 55. Although the Shore A hardness of the materials disclosed by McCord and Blatt encompasses the range of 45-55, neither disclosure explicitly states it. However, Sperry discloses a similar tool in which the body is made of material having a Shore A hardness between 45 and 55 for the purpose of handling warm objects. It would have been obvious for a person of ordinary skill in the art, before the effective filing date of the applicant’s invention to have the body have a Shore A hardness between 45 and 55, as disclosed by Sperry, for the purpose of handling warm objects.
Allowable Subject Matter
Claims 3, 5, 6, 15, and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 7/30/2026 have been fully considered but they are not persuasive.
The applicant states that McCord does not disclose a body that tapers from a most proximal rim having the larges diameter of the body to a horn, at the distal end, having the smallest diameter of the body, the rim and waist diameters decreasing in the distal direction. The examiner disagrees with the applicant. McCord, at least in Figures 1 and 2 discloses a body that tapers from a most proximal rim having the largest diameter of the body to a horn, at the distal end, having the smallest diameter of the body, the rim and waist diameters decreasing in the distal direction.
[AltContent: textbox (body)][AltContent: connector][AltContent: arrow][AltContent: connector][AltContent: arrow][AltContent: textbox (horn)][AltContent: textbox (waist)][AltContent: textbox (rim)][AltContent: textbox (waist)][AltContent: textbox (rim)][AltContent: textbox (Tubing connector)][AltContent: connector][AltContent: arrow][AltContent: connector][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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Conclusion
Applicant's amendment necessitated the new ground(s) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK HEWEY MACKEY whose telephone number is (571)272-6916. The examiner can normally be reached M - F 9-5.
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, Michael McCullough can be reached at 571-272-7805. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK H MACKEY/Primary Examiner, Art Unit 3653
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