DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 16 of U.S. Patent No. 11,560,931. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1 and 2 include all the limitations of Patent claims 11 and 16.
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 (i.e., changing from AIA to pre-AIA ) 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 1-3, 5, 7-10, 12, 14, 16, 17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aston (US 2010/0284554).
Re claim 1, Aston et al. discloses a device for reducing impact forces upon a surface and capable of inhibiting breakage, comprising: a base (11) comprising a contact portion, the contact portion comprising an adhesive for securing the base to the surface ([0030]); a contact member (7) adjacent the contact portion, the contact member being movable away from and toward the surface; and a biasing member (4) biasing the contact member toward the surface; wherein a first portion of an impact force upon the surface is transferred from the contact member to the biasing member as the contact member moves away from the surface, and a second portion of the impact force is subsequently returned to the surface, the second portion being less than the first portion. (Fig. 1-6)
Re claims 2, 9 and 17, Aston et al. disclose wherein movement of the contact member (7) away from the surface temporarily separates the contact member from the surface.
Re claims 3 and 18, Aston et al. disclose wherein the contact portion (11) is annular. (See o-ring 12.)
Re claims 5 and 10, Aston et al. disclose wherein the biasing member is adjustable. ([0014])
Re claims 7, 12 and 20, Aston et al. disclose wherein the biasing member (4) is a magnet.
Re claim 8, Aston et al. discloses a device for inhibiting breakage, consisting of. a housing (1) having a contact end (11) and a distal end, the contact end having adhesive for securing the contact end to a surface ([0030]); a contact member (7) at least primarily disposed inside the housing, the contact member being movable inside the housing; and a biasing member (4) biasing the contact member toward the contact end and away from the distal end; wherein a first portion of an impact force upon the surface is transferred from the contact member to the biasing member as the contact member moves away from the surface, and a second portion of the impact force is subsequently returned to the surface, the second portion being less than the first portion. (Fig. 1-6)
Re claim 14, Aston et al. discloses wherein the adhesive is disposed on the contact end (11) in an annular configuration. ([0030])
Re claim 16, Aston et al. discloses a device for inhibiting a surface from breaking, comprising: a housing (1) having a contact end (11, 15) and a distal end, the contact end having adhesive for securing the contact end to the surface ([0030]), the housing having a cavity; a contact member (7) at least primarily disposed inside the cavity, the contact member being movable inside the housing toward and away from the contact end; and a biasing member (4) biasing the contact member toward the contact end and away from the distal end; wherein the housing has means for preventing the contact member from fully exiting the cavity ([0029]); and wherein a first portion of an impact force upon the surface is transferred from the contact member to the biasing member as the contact member moves away from the surface, and a second portion of the impact force is subsequently returned to the surface, the second portion being less than the first portion. (Fig. 1-6)
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20120127383 A.
Re claim 1, KR ‘383 teaches a device for reducing impact forces upon a surface (130) and capable of inhibiting breakage, comprising: a base (120) comprising a contact portion; a contact member (111) adjacent the contact portion, the contact member being movable away from and toward the surface; and a biasing member (112) biasing the contact member toward the surface; wherein a first portion of an impact force upon the surface is transferred from the contact member to the biasing member as the contact member moves away from the surface, and a second portion of the impact force is subsequently returned to the surface, the second portion being less than the first portion.
KR ‘383 does not teach the contact portion comprising an adhesive for securing the base to the surface. It would have been obvious to one of ordinary skill in the art to use adhesive for securing the base to the surface since adhesives are well known means for connecting components.
Re claim 2, KR ‘383 as modified teaches wherein movement of the contact member (111) away from the surface temporarily separates the contact member from the surface. Based on the amount of impact, the contact member is capable of temporarily separating from the surface.
Re claim 3, KR ‘383 as modified teaches wherein the contact portion is annular (121, 122a).
Re claim 4, KR ‘383 as modified teaches wherein the contact member (111) is spherical.
Re claim 6, KR ‘383 as modified teaches wherein the biasing member (112) is a helical spring.
Claims 5 rejected under 35 U.S.C. 103 as being unpatentable over KR 20120127383 A in view of Stubbs (US 1383582).
Re claim 5, KR ‘383 as modified does not teach wherein the biasing member is adjustable. Stubbs teaches a biasing member (22) biasing a contact member toward a surface wherein the biasing member is adjustable via threads (13, 19, 25). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide an adjustable configuration as taught by Stubbs in order to allow for the desired pressure.
Claims 4, 6, 11, 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Aston (US 2010/0284554) in view of KR 20120127383 A.
Re claims 4, 6, 11, 13 and 19, Aston does not teach wherein the biasing member is a helical spring or wherein the contact member is spherical. KR ‘383 teaches a impact absorbing device wherein the biasing member is a helical spring or wherein the contact member is spherical. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the helical spring and spherical contact member as taught by KR ‘383 in order to simplify the invention and provide impact absorption at a lower cost.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Aston (US 2010/0284554).
Re claim 15, Aston does not teach wherein the surface is glass. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the device on glass in order to reduce vibration as taught by Aston.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hartel, Van Loan, Jr., Salice, Schaefer et al., KR ‘120, Song and JP ‘446 teach similar devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELANIE TORRES WILLIAMS whose telephone number is (571)272-7127. The examiner can normally be reached Tuesday - Friday 7:00AM-3:00PM.
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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.
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/MELANIE TORRES WILLIAMS/
Primary Examiner
Art Unit 3616
MTWDecember 23, 2025