DETAILED CORRESPONDENCE
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 .
Election/Restrictions
Applicant's election with traverse of species I in the reply filed on 9/12/2025 is acknowledged. The traversal is on the following grounds:
Applicant contends on pages 7-8 that a) the cited “special technical feature” is in fact the inventive contribution over the prior art and is common to all species, b) unity analysis does not require the special technical feature to be novel before determining unity, and c) unity is being conflated with novelty/obviousness. While it is agreed that the alleged “special technical feature” is common to all species, the feature does not constitute a “special technical feature”. Per the Restriction requirement of 7/31/2025, the “special technical feature” of “a second point on the leaf spring located below the first point that is capable of interacting with the first point as a result of stretching of the leaf spring under a load” is known from Keller (EP 3517800) at least. MPEP 1805(II) states, “Lack of unity of invention may be directly evident "a priori," i.e., before considering the claims in relation to any prior art, or may only become apparent "a posteriori," i.e., after taking the prior art into consideration.”, so accordingly the prior art is taken into consideration in a unity of invention analysis.
MPEP 1850(II) further states,
“An international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (PCT Rule 13.1 ). With respect to a group of inventions claimed in an international application, unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" is defined in PCT Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. The determination is made on the contents of the claims as interpreted in light of the description and drawings (if any).
Whether or not any particular technical feature makes a "contribution" over the prior art, and therefore constitutes a "special technical feature," should be considered with respect to novelty and inventive step. For example, a document discovered in the international search shows that there is a presumption of lack of novelty or inventive step in a main claim, so that there may be no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept.”
Since the purported “special technical feature” is not novel over Keller as demonstrated, the feature does not make a contribution over the prior art, and is therefore not a special technical feature. Therefore, since the inclusion of multiple inventions “is only permitted if all inventions are so linked as to form a single general inventive concept” and “unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features”, unity of invention does not exist in the instant application.
Applicant contends on page 9 that no search/examination burden was established. MPEP 1850(I) states, “when the Office considers international applications as an International Searching Authority, as an International Preliminary Examining Authority, and during the national stage as a Designated or Elected Office under 35 U.S.C. 371, PCT Rule 13.1 and 13.2 will be followed when considering unity of invention of claims of different categories without regard to the practice in national applications filed under 35 U.S.C. 111.” Since the application is a 371, no search/examination burden needs to be established, as that is a US restriction practice consideration.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-7 and 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/12/2025.
Note: Regarding claim 9, it is believed that the elected embodiment does not show a “U shape” for the short spring, but rather shows a “C shape”, so this claim is also withdrawn. As best understood, the short spring of fig. 14 may contain a “U shape” in sections among the legs of the short spring, as shown with parallel spring legs, but no such disclosure exists in the instant specification as to what embodiment(s) contain the “U shape”, so it is unclear if this is what was intended or not.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/28/2023 has been considered.
Claim Objections
Claim 8 recites, “the short spring remains between the at least one first point and the at least one second point has a C shape.”. It is believed this should recite, “the short spring remains between the at least one first point and the at least one second point and has a C shape.”
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wolf-Monheim (DE 102018207586
Regarding claim 1, Wolf-Monheim discloses (see figs. 1-3) A leaf spring (1) providing multiple spring rates, depending on displacement values (the “rate” of the spring changes based on deflection), comprising: at least one first point (2.4) on a single leaf spring (as shown), and at least one second point (2.5), wherein the at least one second point is located below the at least one first point (as shown), and is capable of interacting with the at least one first point as a result of stretching of the leaf spring under a load (see fig. 1 vs. fig. 3).
Regarding claim 8, Wolf-Monheim discloses (see figs. 1-3) a short spring (area around 2.1 to the right of 2.5), wherein the short spring remains between the at least one first point and the at least one second point (as shown) [and] has a C shape (left facing “C”, as shown).
Prior Art
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. The documents listed on the PTO-892 disclose various leaf springs.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID MORRIS whose telephone number is (571)270-3595. The examiner can normally be reached Monday thru Friday; 8:30 AM - 5:00 PM.
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, Robert Siconolfi can be reached at (571) 272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID MORRIS/
Primary Examiner
Art Unit 3616
/DAVID R MORRIS/Primary Examiner, Art Unit 3616