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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/10/2026 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 1-6, 9-13, 15, 16, and 18-20 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. The independent claims have been amended to recite, “a most proximal rim connects to the vacuum tube and has a largest diameter of the body”. The disclosure as filed on 7/13/2022 does not provide express or implied support for this claim language. According to the applicant's disclosure the most proximal rim is attached to a tubing connector; and the tubing connector connects to the vacuum tube
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). McCord discloses a suction tool for a system for sorting materials with a vacuum tube, the suction tool comprising: a body of flexible material wall (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; 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 connects to the vacuum tube and has a largest diameter of the body, wherein the horn has 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). 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 (see Figs. 1 and 2); 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)).
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.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
The applicant states that McCord does not disclose that the “most proximal rim . . . has a largest diameter of the body.” The examiner disagrees with the applicant. At least in Figures 1 and 2 McCord discloses that the most proximal rim has the largest diameter of the body. The structure recited in the claims and illustrated in Figures 9A-11 is identical to the structure illustrated in Figures 1 and 2 by McCord.
Conclusion
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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