DETAILED ACTION
The Examiner acknowledges Claim 1 has been amended and Claims 10-20 remain withdrawn.
Response to Arguments
Applicant's arguments [or lack thereof] with respect to the Drawing Objection have been fully considered but they are not persuasive. The Applicant has again, failed to address the Drawing Objection. The radial expansion member must be shown in the drawings.
Applicant’s arguments and amendments with respect to the 112 rejections [elements 8 and 9 from the previous Office Action] have been fully considered and are persuasive. The 112 rejections of Claims 1 and 7 have been withdrawn.
Applicant's arguments [or lack thereof] with respect to the 112 rejection of Claim 8 [element 10 from the previous Office Action] have been fully considered but they are not persuasive.
Applicant's arguments and amendments with respect to the Prior Art rejections have been fully considered but they are not persuasive:
The Applicant argues that Werstein teaches away from amended claim 1. However, the Examiner has found the amendments to be new matter [see 112(a) rejection below]. The Specification does not set forth that the anchor housing is removable telescopically from the anchor support without damaging the assembly [emphasis added where the Examiner has found new matter]. Werstein teaches that the anchor housing can be removed by exerting substantial force (Column 4, Line 7) and this is done telescopically as the anchor housing is inside the anchor support. He does recite that the anchor support [sheath] is damaged (Column 4, Line 6) but this is the only part, not the entire anchor assembly. The Applicant cites Paragraph 0006 of their invention for support of removing the anchor housing. But this excerpt is located in the “background of the invention” section as is about removing an anchor [not anchor housing] and repositioning. This is merely a desire for the invention to do so due to it location in the Specification and not a positive recitation of the necessary structure to do so. Furthermore, there is an embodiment in the invention that teaches removal is prevented (Paragraph 0044). Therefore, the Examiner maintains the rejection and urges the Applicant to use language from Paragraph 0042 and the first embodiment of Figures 1A-1M for any further amendments.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “radial expansion member” in Claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
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.
Claim 1 is 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 Specification does not support “removably telescopically”. The Specification is silent about any telescopic function of the anchor assembly. Furthermore, the Specification does not disclose “without damaging the assembly”. What Paragraph 0006 discloses is that there is a desire for the anchor to be easily removed for repositioning. Furthermore, this paragraph in the background of the invention section and is about the anchor, not the anchor housing. Lastly, Paragraph 0044 discloses that the anchor housing is deformed with a bulge or buckling thus preventing the anchor support from being removed.
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 8 recites the limitation "the anchor". There is insufficient antecedent basis for this limitation in the claim.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 6-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent # 3,798,866 to Werstein.
Regarding claim 1, Werstein teaches in Figures 1 and 2, a cast-in-place (Column 4, Line 25) concrete anchor assembly (14) [insert (Column 3, Line 5)] connectable to a concrete form (10) [horizontal sheet member (Column 2, Line 65)], the assembly (14) for supporting an external load from a concrete structure (Column 4, Lines 27-30), the assembly comprising: an anchor housing (16) [upper cylindrical body portion (Column 3, Line 6)], the anchor housing (16) including a load bearing flange (36) [shoulder (Column 3, Line 21)] and a connection member (20) [threaded socket (Column 3, Lines 7-8)] from which an external load may be connected to the cast-in-place concrete anchor (Column 4, Lines 27-31) assembly (14); an anchor support (40) [sheath (Column 3, Line 26)] for telescopically receiving (Column 3, Lines 64-67) the anchor housing (16) therein, the anchor support (40) further including a base support flange (52) [flangelike ears (Column 3, Line 32)] and a radial expansion member (54) [fingers (Column 3, Line 38)], wherein the cast-in-place concrete anchor assembly (14) includes a first configuration (Column 3, Lines 64-66) in which the anchor housing (16) is received in the anchor support (40) a first distance where the anchor housing (16) is not engaged with the radial expansion member (54), and wherein the cast-in-place concrete anchor assembly (14) includes a second locked configuration (Columns 3-4, Lines 66-7) in which the anchor housing (16) is received in the anchor support (40) a second distance greater than the first distance and where the anchor housing (16) engages the radial expansion member (54), forcing the radial expansion member (54) radially outward to lock (Column 4, Line 5) the assembly (14) to the form (10); and wherein in the second configuration (Columns 3-4, Lines 66-7) the anchor housing (16) is telescopically (Column 3, Lines 64-67) removable (Column 4, Line 7) from the anchor support (40) without damaging the assembly [the damage would occur to the anchor support and not the rest of the assembly (Column 4, Line 6)].
Regarding claim 2, Werstein teaches in Figures 1 and 2, the radial expansion member (54) flexes by means of an elastic or flexible material (Column 3, Lines 60-63).
Regarding claim 3, Werstein teaches in Figures 1 and 2, the anchor housing (16) is made of metal (Column 3, Lines 5-6).
Regarding claim 6, Werstein teaches in Figures 1 and 2, the radial expansion member (54) is in the form of at least one finger (Column 3, Line 38), the at least one finger being flexible (Column 3, Line 61) radially outward (Column 3, Line 60) in response to insertion (Column 3, Lines 64-66) of the anchor housing (16) into the anchor support (40).
Regarding claim 7, Werstein teaches in Figures 1, 2 and 4, the finger of the radial expansion member (54) is cantilevered [connected to sheath (Column 3, Lines 42-44)] and has a fixed end (58) and a free end (60) and the anchor housing (16) urges the free end (Columns 3-4, Lines 65-3) radially outward.
Regarding claim 8, Werstein teaches in Figure 2, the radial expansion member (54) includes a ramped surface (62) [bend (Column 3, Line 48)] that is inclined toward a central axis of the anchor (14).
Regarding claim 9, Werstein teaches in Figure 2, the incline of the ramped surface (62) toward the central axis of the anchor (14) is in a direction away from the load bearing flange (36).
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.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 3,798,866 to Werstein.
Regarding claim 4, Werstein teaches in Figures 1 and 2, the anchor housing (16) is made of metal (Column 3, Lines 5-6) but does not teach the anchor support is made of a non-metallic material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the anchor support from a non-metallic material since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It is also common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, etc. for the application and intended use of that material.
Regarding claim 5, Werstein teaches in Figures 1 and 2, the anchor housing (16) is made of metal (Column 3, Lines 5-6) but does not teach the anchor support is made of a plastic. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the anchor support from a plastic since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It is also common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, etc. for the application and intended use of that material.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW J TRIGGS whose telephone number is (571)270-3657. The examiner can normally be reached Mon-Thurs 6am-2pm EST.
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/ANDREW J TRIGGS/Primary Examiner, Art Unit 3635