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 .
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 are finally 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. Subject matter in the claims that was not described in the specification in such a way as to convey possession of the claimed invention by the applicant is:
A. “second wall portions configured to face the first wall portion” (note claim 1. The claimed second wall portions appear from at least Fig. 6 to be a reference to different features of the buffer body designated by a numeral 50 in the figure. 6. See also specification [0038]. However, the specification refers to a wall portion 50, that is to only one wall portion 50. See specification [0038]. Thus, the claimed feature(s) “second wall portions” was not fully, clearly, concisely and exactly described in the specification as required by the Statute. If there is only a single wall portion 50, how can the claims refer to wall portions (plural)? If there is only a single wall portion, why does Fig 6 appear to show multiple wall portions? Additionally, the specification does not support the claim limitation “second wall portions configured to face the first wall portion”. As indicated above, [0038] only describes one wall portion 50. Furthermore, specification [0039] specifically teaches in lines 2 thereof that “the second wall portion 50 faces the first wall portion 22 of the packing box 2”. Therefore, it appears that there is only one wall portion 50 that faces the first wall portion 22, not more than one (even though Fig 6 shows more than one wall portion. For at least these reasons the claim limitations in question are not described in the full, clear, concise and exact terms required by the Statute, and therefore, they are not described in the specification in such a way as to convey possession of the claimed invention by the applicant.).
B. Likewise, the specification description of the third and fourth wall portion of the buffer body is not made in the full, clear, concise and exact terms required by the Statute, for reasons similar to those above, and claims reciting these features are rejected under the noted grounds.
C. “first recessed portions recessed in a first direction away from the second wall portions, the first direction being a direction away from the first wall portion when the buffer body is disposed between the outer box and the packing box…” (First, note the commentary above with respect to the claim phrase “second wall portions”. Second, per specification [0039], and with the specification referring to Fig. 6, recessed portions 53 are “recessed upward (an example of a direction away from the first wall portion 22….)”. This does not support the claim limitation “recessed…away from the second wall portions”. However, the claim limitation pointed to immediately above is also at odds with the follow-on claim limitation of “the first direction being a direction away from the first wall portion…”. Additionally, since the buffer body of Fig 6 is illustrated upside down in the figure (note specification [0037]), the first wall portion 22 of the packing box would appear to be positioned below the buffer body in terms of direction, and therefore, recessed portions 53 recessed upwards, as described in specification [0039] would appear to be recessed in a direction towards the first wall portion 22, not away from the first wall portion 22 as described in specification [0039] and claimed in claim 1. For at least these reasons the claim limitations in question are not described in the full, clear, concise and exact terms required by the Statute, and therefore, they are not described in the specification in such a way as to convey possession of the claimed invention by the applicant.).
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 1-8 are finally 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.
The claims are indefinite, because at least the portions thereof indicated above as not being well described cannot be properly interpreted.
The claims are also indefinite because they have been drafted in such a way that it is impossible to tell whether they are directed to the sub-combination of a buffer body only, or whether they are directed to the combination of a buffer body and one or more features including a battery, a packing box, and an outer box, etc. This is essentially the same rejection from last time, the specifics of which only differ from the last rejection based on the changes applicant has now made to the claims. Thus, as one example of the defect, and by way of further explanation, claim 1 the independent claim, appears to indicate on lines 1-2 thereof that what is claimed is only the noted sub-combination (only a buffer body), and that at least the lead acid battery, packing box and outer box also mentioned in the claim preamble are recited in the claims only functionally. However, in the same claim preamble, lines 2-3 of claim 1 requires that the packing box include a first wall portion configured to face the two terminals of the battery. Thus, even the claim preamble of claim 1 appears to further recite structural limitations of the packing box and the battery, suggesting that at least the packing box, and even the battery, might in fact be claimed.
Moreover, aside from the claim preamble, the body of claim 1 requires second wall portions (a feature or features of the buffer body) configured to face the first wall portion (a feature of the outer box). This is a claim limitation that depends structurally on the outer box, and which therefore also suggests that the outer box is positively claimed, not functionally claimed. Likewise claim 1 also requires the first recessed portions to extend in a direction away from the first wall portion, another structural limitation in the claim specifically depending on the packing box, and therefore, another limitation suggesting that the packing box is positively claimed. In yet another example in claim 1, the first recessed portions (of the buffer body) are claimed as being “configured to overlap each one of the two battery terminals”, another structural limitation depending on the battery and therefore ultimately indicating that perhaps the battery is claimed.
And so on throughout the claims.
Amendments to the claims are required to clarify the same. For example, regarding the combination/sub-combination issue amendments are required to clarify the scope of the claims. If applicant wishes to rely for patentability on features other than buffer body features, these should be positively recited in the claims.
The examiner notes that it is by now well settled that features that are not claimed may not be relied upon by the applicant in support of patentability.
The claims are so indefinite for the noted reasons that they have not been further treated on their merits.
Applicant's arguments filed 7/3/25 have been fully considered but they are not persuasive. The claim amendments are noted. On the other hand, while the commentary in applicant’s remarks appears to summarize the claim amendments, it does not adequately address the rejections themselves. For example, as should be evident, none of applicant’s remarks specifically address the points made by the examiner last time. For example, the examiner must be able to read the application specification while viewing applicant’s drawings and know exactly what is being claimed without reference to annotated drawings or other submissions that are not part of the subject application disclosure. In another example, applicant cannot expressly draft claims in such a way as to suggest that only a sub-combination is claimed and also draft the same claims to suggest that a combination is claimed.
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 JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/Primary Examiner, Art Unit 3736