This is a Final office action for serial number 18/165,225.
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
Claims 17-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim.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 April 10, 2025.
Claims 24 and 25 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 27, 2026.
The traversal is based on the grounds that the embodiments are directed to a unitary concept and based on various policy arguments. These arguments are unpersuasive. The arguments set forth by the applicant (i.e., a want of a serious burden on the examiner, or inventions having the same classification) are arguments commonly set forth when traversing a restriction of the invention. (See MPEP 803). While there is a policy of compact prosecution, the plain language of the rules set forth that an examiner may require restriction there is no policy to reduce the number of patents; in fact, an argument could be made that it is less confusing to have a separate patent for each invention. The applicant’s argument that the various inventions do not result in a serious examination and a search burden to the examiner is a general allegation without specifically pointing out how searching each invention is not a burdensome search. The examination of the multiple inventions will result in a search burden since the inventions require a different field of search including different classes/subclasses or electronic resources, and/or employing different search queries using varying search terms (hammer not included within search term, in addition original claim 1 before amendment did not include first and second jaw arms), and/or the prior art applicable to one invention would not likely be applicable to another invention and/or the inventions. The examination of multiple inventions will raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph therefore resulting in a serious examination. Since the applicant has not submitted persuasive arguments that the embodiments are not distinct from one another, the requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 7 and 22 are objected to because of the following informalities: The specification teaches that the first hammer bracket 80 and second hammer bracket 82 are positioned on the first jaw arm 76 and the third hammer bracket 88 and fourth hammer bracket 90 are positioned on the second jaw arm 78. Claim 7 claims that the second hammer bracket 82 is located on the second jaw arm 78 and the third hammer bracket 88 is located on the first jaw arm 76. Appropriate correction is required.
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, 3, 6, 7, and 9-16 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 provide and fails to describe how the elected species Figures 1-5 teaches when the first jaw arm being longer than the second jaw arms have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend in parallel to one another therefore, as failing to comply with the written description requirement, since the specification does not provide the type of material thus providing support for equal spring tension.
The claims have been rejected under 35 U.S.C. 112 for the above reasons. Please note that the Examiner may not have pointed out each and every example of indefiniteness. The applicant is required to review all the claim language to make sure the claimed invention is clear and definite.
All words in a claim must be considered in determining the patentability of theclaim against the prior art. If no reasonably definite meaning can be ascribed to certainterms in the claim, the subject matter does not become obvious, the claim becomesindefinite. In re Wilson, 424F.2d 1382, 1385 (CCPA 1970). The examiner's analysis ofthe claims, in particular claim language within the claims as rejected under 35 USC 112 above, indicates that considerable speculation as to the meaning of the terms employed and assumptions as to the scope of the claims needs to be made, as the examiner does not understand what is exactly being claimed by the applicant. Any rejection under 35 U.S.C. 102 should not be based on such speculations and assumptions. In re Steele, 305 F.2d 859,862 (CCPA 1962); Ex parte Head, 214 USPQ 551 (Bd.App. 1981). Accordingly, the applicant should not assume that any claims not rejected using prior art is considered allowable since the examiner can not clearly determine the limitations of the claim due to indefiniteness. The applicant should be aware that once the claims have been corrected to remove the problems concerning indefiniteness, prior art may be used to reject the claims and the next action made final or if the application is in a final status the amendment after final may not be entered as requiring further search and/or consideration.
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.
(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.
Claim(s) 1, 3, 6 and 9-12 is/are rejected, best understood, under 35 U.S.C. 102 (a) (1) as being anticipated by Felt 10,711,985. The applicant is reminded that the hammer mill or hammer are not positively claimed therefore the prior art only need to be capable of performing the functions related to the hammer mill or hammer.
Felt discloses:
For (Claim 1) A shipping assembly (see figure below) comprising: a body; a pair of jaws having a first jaw arm and a second jaw arm extending from a bottom of the body; and a stop arm extending from a top of the body; wherein the first jaw arm and the second jaw arm are angled towards one another in a direction away from the bottom of the body; wherein the first jaw arm and the second jaw arm have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another
For (Claim 3) The shipping assembly of claim 1 wherein the first jaw arm is longer than the second jaw arm.
For (Claim 6) The shipping assembly of claim 1 wherein the bottom of the body has an angled portion that extends from a midpoint of the bottom to an end of the body;
For (Claim 9) The shipping assembly of claim 2 further comprising the first jaw arm having a first recess, wherein a thickness of the first recess is less than the rest of the first jaw arm, and the second jaw arm having a second recess, wherein a thickness of the second recess is less than the rest of the second jaw arm;
For (Claim 10) The shipping assembly of claim 1 further comprising a stop extending outwardly from the stop arm in relation to a front surface of the body;
For (Claim 11) The shipping assembly of claim 10 further comprising the stop having a vertical projection and a horizontal projection that extend outwardly in relation to the front surface of the body and intersect at a peak;
For (Claim 12) The shipping assembly of claim 10 further comprising a handle opening positioned through the stop arm above the stop.
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Stop
Vertical projection
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[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Handle opening (11)
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2nd jaw arm recess (15))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Body (7)
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Claim(s) 1, 6, 7, 9, 10, 14, 15, and 16 is/are rejected, as best understood, under 35 U.S.C. 102(a) (1) as being anticipated by Adams, IV et al. (Adams) 2018/0187867. The applicant is reminded that hammer is not positively claimed therefore the prior art only need to be capable of performing the functions related to the hammer.
Adams discloses:
For Claim 1, A shipping assembly comprising: a body (10); a pair of jaws (31, 32) having a first jaw arm (31) and a second jaw arm (32) extending from a bottom of the body; and a stop arm (see figure below) extending from a top of the body; wherein the first jaw arm (31) and the second jaw arm (32) are angled towards one another in a direction away from the bottom of the body; wherein the first jaw arm (31) and the second jaw arm (32) have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another.
For Claim 6, The shipping assembly of claim 1 wherein the bottom of the body has an angled portion (38) that extends from a midpoint of the bottom to an end of the body.
For Claim 7, The shipping assembly of The shipping assembly of further comprising a first hammer bracket extending outwardly from the first jaw arm in relation to a front surface of the body; a second hammer bracket extending outwardly from the second jaw arm in relation to the front surface of the body; and a third hammer bracket extending outwardly from the first jaw arm in relation to the front surface of the body and positioned away from the first hammer bracket such that a gap is positioned between the first hammer bracket and the third hammer bracket, and wherein the second hammer bracket on the second jaw arm is positioned in alignment with the gap.
For Claim 9, comprising the first jaw arm having a first recess, wherein a thickness of the first recess is less than the rest of the first jaw arm, and the second jaw arm having a second recess, wherein a thickness of the second recess is less than the rest of the second jaw arm.
For Claim 10, comprising a stop extending outwardly from the stop arm in relation to a front surface of the body.
For Claim 14, comprising a collar extending from the bottom of the body between the pair of jaws.
For Claim 15, comprising the collar having a first collar arm and a second collar arm that extends outwardly in an arcuate fashion in relation to the bottom of the body, wherein the first collar arm and the second collar arm terminate leaving a gap.
For Claim 16, comprising the first collar arm having a first protrusion at an end.
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Stop )][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (body
Front surface
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1st collar arm
2nd collar arm (38)
Gap of collar
2nd arm (31)
2nd hammer bracket
Gap between 1st and 3rd hammer brackets)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (1st hammer bracket (37)
1st arm (32)
3rd hammer bracket (36))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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1st protrusion)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Stop arm)][AltContent: arrow][AltContent: textbox (Stop arm)][AltContent: arrow]
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Claim(s) 22 and 23 is/are rejected, best understood claim 23, under 35 U.S.C. 102(a) (1) as being anticipated by Adams, IV et al. (Adams) 2018/0187867. The applicant is reminded that hammer is not positively claimed therefore the prior art only need to be capable of performing the functions related to the hammer.
Adams discloses:
For Claim 22, A shipping assembly comprising: a pair of jaws having a first jaw arm and a second jaw arm extending from a bottom of a body; and a stop arm and a second stop extending from a top of the body; a first hammer bracket extending outwardly from the first jaw arm in a forward direction (since the claim only discloses a forward direction and no other directions in regards to the claim language, in the broadest sense this limitation is met) in relation to a front surface of the body; a second hammer bracket extending outwardly from the second jaw arm in relation to the front surface of the body; and a third hammer bracket extending outwardly from the first jaw arm in relation to the front surface of the body and positioned away from the first hammer bracket such that a gap is positioned between the first hammer bracket and the third hammer bracket, and wherein the second hammer bracket on the second jaw arm is positioned in alignment with the gap on the first jaw arm.
For Claim 23, The shipping assembly of claim 22 further comprising the first hammer bracket and the second hammer bracketing each having a channel that face one another, wherein the channel of the first hammer bracket opens towards the second hammer bracket and the channel of the second hammer bracket opens towards the first hammer bracket; wherein the channel is formed in the first hammer bracket and the second hammer bracket respectively.
[AltContent: textbox (Stop arm
Body
2nd jaw arm
Channel of 2nd hammer bracket
2nd hammer bracket
Channel of 1st hammer bracket)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Stop arm
body
1st jaw arm
1st hammer bracket
3rd hammer bracket )][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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Handle )][AltContent: arrow][AltContent: textbox (2nd stop)][AltContent: arrow][AltContent: arrow][AltContent: textbox (collar)][AltContent: arrow][AltContent: textbox (Handle opening)][AltContent: textbox (1st jaw arm
Body )][AltContent: arrow][AltContent: textbox (2nd jaw arm)][AltContent: arrow][AltContent: arrow]
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Claim(s) 1, 10, and 12-16 is/are rejected, best understood claim 23, under 35 U.S.C. 102(a) (1) as being anticipated by Adams, IV et al. (Adams) 2018/0187867.
Adams discloses:
For Claim 1, A shipping assembly (see annotated figure below) comprising: a body ; a pair of jaws having a first jaw arm and a second jaw arm extending from a bottom of the body; and a stop arm (see figure below) extending from a top of the body; wherein the first jaw arm and the second jaw arm are angled towards one another in a direction away from the bottom of the body; wherein the first jaw arm and the second jaw arm have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another.
For Claim 10, The shipping assembly of claim 1 further comprising a stop extending outwardly from the stop arm in relation to a front surface of the body.
For Claim 12, The shipping assembly of claim 10 further comprising a handle opening positioned through the stop arm above the stop.
For Claim 13, The shipping assembly of claim 12 further comprising a handle (see paragraph 0037, which teaches of a device which the body/jaw arms can be handled or held by) extending through the handle opening.
For Claim 14, The shipping assembly of claim 1 further comprising a collar extending from the bottom of the body between the pair of jaws.
For Claim 15, The shipping assembly of claim 14 further comprising the collar having a first collar arm and a second collar arm that extends outwardly in an arcuate fashion in relation to the bottom of the body, wherein the first collar arm and the second collar arm terminate leaving a gap.
For Claim 16, The shipping assembly of claim 15 further comprising the first collar arm having a first protrusion at an end.
[AltContent: textbox (Handle opening above stop)][AltContent: textbox (2nd stop)][AltContent: arrow][AltContent: arrow][AltContent: textbox (collar)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Stop arm
Handle )][AltContent: textbox (1st jaw arm
Body )][AltContent: arrow][AltContent: textbox (2nd jaw arm)][AltContent: arrow][AltContent: arrow]
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Response to Arguments
Applicant's arguments filed April 27, 2026 have been fully considered but they are not persuasive.
In regards to applicant’s arguments that,
There is a strong presumption that written description support for a claimed invention is present in a specification as filed. MPEP § 2163. In order to satisfy the written description requirement, an applicant must provide a disclosure that reasonably conveys to one skilled in the art that the applicant possessed the claimed invention at the time of filing. MPEP § 2163.02. Once an applicant has demonstrated that the specification supports the claimed subject matter, the burden shifts to the examiner to establish a prima facie case by identifying the specific claim limitation at issue and providing reasons why persons skilled in the art would not recognize a description of that limitation in the disclosure. MPEP § 2163.04. A general allegation that the specification does not explain "how" a limitation is achieved is insufficient. MPEP § 2163.
Here, the limitation at issue has been present in the claims since filing as it appeared as original claim 5 and is therefore entitled to this presumption. Furthermore, specific support is found in the specification, including at [0018], [0062], [0063], and [0079]. Yet further still, Figures 13 and 14 depict the claim limitation.
The burden has therefore shifted to the Office, and the Office has not met its burden. The Action only concludes without reasoning that "[t]he specification does not provide and fails to describe how the elected species Figures 1-5 teaches when the first jaw arm being longer than the second jaw arms have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend in parallel to one another therefore, as failing to comply with the written description requirement." Given the deficiencies in raising this rejection, Applicant respectfully requests its withdrawal.
in response to applicant’s arguments, the examiner traverses the argument with the following remarks. A mere allegation that the applicant has demonstrated that the specification supports the claimed subject matter by pointing to where the limitations are recited within the specification, by paragraph, does not provide sufficient support for how the limitation can be performed or made therefore the 35 USC 112 rejection stands. The limitation, “wherein the first jaw arm and the second jaw arm have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another”, is recited within the specification however support for how the limitation as claimed solely relies on knowledge known by one of ordinary skill in the art using conventional material and expected amounts of material used to accomplish the limitation as claimed. If the rational as argued by the applicant to overcome the rejection under 35 USC 112 is merely it should be understood by one of ordinary skill in the art to know how to use and/or make the limitations as claimed by stating the function can be accomplished within the knowledge of one having ordinary skill in the art, then how can the applicant in the same instant believe that any prior art used to reject the claims within the application must specifically cite the exact limitation as claimed by the applicant within the claims or specification of the prior art. Felt may not word for word recite the exact limitations of the applicant’s claim limitation however using the full disclosure of Felt one skilled in the art can clearly understand that Felt teaches the limitations “wherein the first jaw arm and the second jaw arm have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another”.
The following response to the applicant’s arguments is copied and included immediately below to provide proof that the examiner clearly responded to the applicant’s arguments in the prior response.
In regards to applicant’s arguments
Claim 1 As amended, claim 1 requires, in part, wherein the first jaw arm and the second jaw arm have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another. The prior art does not disclose this limitation.
In response to applicant’s arguments the examiner traverses the argument with the following remarks. The applicant is referred to the 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 as stated above and included below.
Claims 1, 3, 6, 7, and 9-16 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 provide and fails to describe how the elected species Figures 1-5 teaches when the first jaw arm being longer than the second jaw arms have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend in parallel to one another therefore, as failing to comply with the written description requirement. Felt would clearly disclose, as best understood, the limitations of wherein the first jaw arm and the second jaw arm have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another since Felt such as the applicant’s invention teaches of a first jaw arm being longer than the second jaw arm therefore teaching of equal spring tension as best understood when extended to be parallel to each other. The applicant is silent to how such equal spring tension is accomplished when the first jaw arm is longer than the second jaw arm as elected in Figures 1-5 by the applicant in reply filed on April 10, 2025 therefore as best understood Felt teaches the claimed invention since the claimed limitation is unclear and not described.
In addition there is no reason why the examiner cannot or should not include a new 35 USC 112 rejection within a non-final office action for original limitations of claim 5 as long as the rejection is not made final within that office action. The rational for stating that a rejection is not proper because it was not introduced early in prosecution is not sound since, a rejection as long as it is found to be valid can be raised within prosecution as long as the office action is submitted as non-final and not Final. For the above reasons, the current office action has been made final and is appropriate.
In regards to applicant’s arguments that,
There is a strong presumption that written description support for a claimed invention is present in a specification as filed. MPEP § 2163. In order to satisfy the written description requirement, an applicant must provide a disclosure that reasonably conveys to one skilled in the art that the applicant possessed the claimed invention at the time of filing. MPEP § 2163.02. Once an applicant has demonstrated that the specification supports the claimed subject matter, the burden shifts to the examiner to establish a prima facie case by identifying the specific claim limitation at issue and providing reasons why persons skilled in the art would not recognize a description of that limitation in the disclosure. MPEP § 2163.04. A general allegation that the specification does not explain "how" a limitation is achieved is insufficient. MPEP § 2163.
Here, the limitation at issue has been present in the claims since filing as it appeared as original claim 5 and is therefore entitled to this presumption. Furthermore, specific support is found in the specification, including at [0018], [0062], [0063], and [0079]. Yet further still, Figures 13 and 14 depict the claim limitation.
The burden has therefore shifted to the Office, and the Office has not met its burden. The Action only concludes without reasoning that "[t]he specification does not provide and fails to describe how the elected species Figures 1-5 teaches when the first jaw arm being longer than the second jaw arms have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend in parallel to one another therefore, as failing to comply with the written description requirement." Given the deficiencies in raising this rejection, Applicant respectfully requests its withdrawal.
in response to applicant’s arguments, the examiner traverses the argument with the following remarks. The allegation that the applicant has demonstrated that the specification supports the claimed subject matter by pointing to sections [0018], [0062], [0063], and [0079] that include the language, “wherein the first jaw arm and the second jaw arm are angled towards one another in a direction away from the bottom of the body; wherein the first jaw arm and the second jaw arm have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another” which is recited within the claims. This does not satisfy the 35 USC 112, first paragraph that the specification fails to provide adequate support for the claim language since how to perform such limitation within the claim limitation should be clear and fully provided within the specification. The specification should include how the arms are capable of having equal spring tension allowing the arms to extend parallel to one another not just a mere allegation the arms can perform the function. The specification makes no mention of the materials used to form the arms or how such equal spring tension results from arms that are as elected within figures 1-5 of different lengths such as providing the type of material used to accomplish the function or some testing of the new and inventive concept found in the claims therefore the 35 USC 112 rejection stands since the examiner should not guess or assume how an invention is made.
In regards to applicant’s arguments that,
Claim 1 requires, in part, wherein the first jaw arm and the second jaw arm have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another. The prior art does not disclose this limitation.
Anticipation requires that the same invention, including each element and limitation of the claims, was known or used by others before it was invented by the patentee. Hoover Group, Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302 (Fed. Cir. 1995). Each element and limitation must be expressly or inherently described in a single prior art reference. Elan Pharms., Inc. v. Mayo Foundation for Medical Educ. & Research, 304 F.3d 1221, 1227 (Fed. Cir. 2002). "The single reference must describe and enable the claimed invention, including all claim limitations, with sufficient clarity and detail to establish that the subject matter already existed in the prior art and that its existence was recognized by persons of ordinary skill in the field of the invention." Id. (citing Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)), see also PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1566 (Fed. Cir. 1996) (emphasis added).
Felt is an enclosed gutter clip for mounting decorative lights to gutters, shingles, and building structures. Felt discloses only that the gutter clip 1 "is designed so that the protrusion 4 and the cantilever 8 provide pressure on opposite sides of the gutter and that the strut 7 rigidly couples the body and the cantilever 8. Nothing within Felt's specification (explicitly, implicitly, or inherently) discloses the elements 2 and 8 have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel to one another. Moreover, the Action is void of any attempt to explain, with factual recitations to Felt, the basis for sustaining a rejection on Section 102 grounds.
in response to applicant’s arguments, the examiner traverses the argument with the following remarks. Felt states within paragraph [0024] and [0029]
[0024] One advantage of the present clip is that the clip 1 can flex to some extent to accommodate the gutter, eaves or structure. The present preferred clip has a standard distance 14 (see FIG. 4) of approximately ⅛ inch between body 2 and lobe 9 when clip 1 is attached to a gutter, eaves or other structure and is in a relaxed condition. The opposing ends of clip 1, i.e., body 2, cantilever 8 and lobe 9, can be pulled apart such that the distance 14 would be as much as 2 inches to accommodate the width of the gutter, eaves or shingles. Thus, the present clip can be fitted over structures from approximately ⅛ inch to 2 inches. When placed on a gutter, eaves, shingles or other structure, the protrusions 4 provide optional support in holding clip 1 in place.
[0029] Referring to FIG. 1, the clip 1 may be formed from a synthetic resin and it is a one piece construction. The clip 1 is made from a resin which may be an acrylic, a polycarbonate, a nylon, a polyethylene or polypropylene or mixtures thereof
which provides support and evidence that the first jaw arm (2) and the second jaw arm (9) have equal spring tension such that when a hammer is received in the pair of jaws, the first jaw arm and the second jaw arm extend parallel with one another. Paragraph [0024] states, the first jaw arm (2) can be separated from the second jaw arm (9) by up to 2 inches therefore providing a range of separation between the first jaw arm and second jaw arm which will result in the first and second jaw arms to extend parallel to one another therefore meeting the applicant’s claimed limitation. Paragraph [0029] within Felt provides support and evidence for the first and second jaw arms being made of materials that are well known within the art to produce “equal spring tension” within a clip therefore meeting the applicant’s claimed invention.
In response to applicant’s arguments that,
Adams is a bulb gripper for holding decorative lights, having a U-shaped body with inward- projecting teeth and tabs on opposing arms designed to frictionally grip a cylindrical decorative light socket. Adams' arms are designed to flex outward and grip a cylindrical light socket by inward convergence; i.e., the arms grip by applying converging pressure on a cylinder, not by deflecting upon receipt of a flat planar object and returning to a parallel orientation. Adams lacks any disclosure to sustain a rejection of claim 1 on anticipation grounds.
Therefore, as the prior art does not disclose each and every element of claim 1 and its respective dependent claims, it cannot anticipate or render obvious these claims.
in response to applicant’s arguments, the examiner traverses the argument with the following remarks. The claim does not claim that the claims have to flex in order to extend in a parallel manner to one another, it only states that when a hammer is inserted the arms are to extend parallel to one another. Adams teaches that the arms are made of a resilient and flexible material allowing the arms to apply a converging pressure to hold an object. Adams teaches that the arms are capable of supporting an object, such as a hammer (not positively claimed), wherein the arms are parallel to one another especially since the hammer’s shape is not being positively claimed (therefore hammer can be planar, curved, etc). Adam’s figure 1 shows that the arms (see figure below) can support an object wherein the arms during an object supported position results in the first and second jaw arms being parallel to one another therefore meeting the applicant’s claimed invention, since the arms are formed of polypropylene.
[AltContent: textbox (arm)][AltContent: arrow][AltContent: arrow][AltContent: textbox (arm)]
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In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., hammer) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., arms not deflecting upon receipt) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant’s arguments that,
As amended, claims 7 and 22 require, in part, a first hammer bracket extending outwardly from the first jaw arm in a forward direction in relation to a front surface of the body. The prior art does not disclose this limitation. In contrast, and as interpreted by the Office (see following page), the first hammer extends from the jaw arm but not in a forward direction in relation to the front surface as required. Therefore, as the prior art does not disclose each and every element of claims 7 and 22, and any respective dependent claims, it cannot anticipate or render obvious these claims.
in response to applicant’s arguments, the examiner traverses the argument with the following remarks. Adam teaches the first hammer bracket extending outwardly from the first jaw arm in a forward direction in relation to a front surface of the body, since the claim only discloses a forward direction and no other directions in regards to the claim language, in the broadest sense this limitation is met.
[AltContent: textbox (Channel of 2nd hammer bracket
2nd hammer bracket
Channel of 1st hammer bracket)][AltContent: textbox (1st hammer bracket)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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In response to applicant’s arguments that,
Claim 11 requires, in part, the stop having a vertical projection and a horizontal projection that extend outwardly in relation to the front surface of the body and intersect at a peak. The prior art does not disclose this limitation.
In contrast, Felt discloses a socket guide ridge 12 that is circular and does not have a horizontal projection and a vertical that extend outwardly in relation to the front surface of the body and intersect in a peak. Applicant highlights that the Action fails to address the required intersection at a peak.
An Action must also be complete as to all matters, unless the application is so fundamentally defective as to warrant limited the completeness of the action. 37 C.F.R. § 1.104(b). To be complete with respect to all matters, the Office must have a full and complete consideration of the claimed subject matters under the applicable statutes and rules, including whether the claimed subject matter is patentable. 37 C.F.R. § 1.104(a)(1). In doing so, the Office must consider all words in the claim to consider the patentable weight of the claimed invention. In re Wilson, 57 C.C.P.A. 1029, 1032 (1970). For a claim to be rendered anticipated, each and every element and limitation must be expressly or inherently described in a single reference. Elan Pharms. Inc. v. Mayo Found. For Med. Edu. And Res., 304 F.2d 1221, 1227 (Fed. Cir. 2002).
The examiner is also required to provide the applicant with enough reasons, information, and references as may be useful to aid the applicant to judge the propriety of continuing the prosecution of the application. 37 C.F.R. § 1.104(b). Failure to do so works against the clear directives of MPEP § 2173.06 to clearly articulate any rejection early on in the prosecution process so that the applicant has the opportunity to evidence the patentability of the claimed subject matter or to otherwise reply completely at the earliest opportunity.
Accordingly, the present Action is deficient for these grounds as well. Applicant respectfully notes that at least because the outstanding Action is incomplete under 37 C.F.R. § 1.104(b) in this regard and does not meet the requirements of MPEP § 707.07(f), the next Action in this case cannot be made final.
in response to applicant’s arguments, the examiner traverses the argument with the following remarks. Felt teaches as shown below that the stop’s vertical projection (vertical part of 12) and (horizontal part of 12) extend outwardly from the body (7) since the vertical projection (vertical part of 12) and horizontal projection (horizontal part of 12) of stop 12 extend above and extend outward from the body 7 therefore meeting the applicant’s claimed limitation. The applicant is under the impression that stating, “extending from” means the vertical projection and horizontal projections must extend directly from the front surface however the claim states, “in relation to the front surface” therefore in the broadest sense Felt teaches the applicant’s claimed limitation, “extend outwardly in relation to the front surface”.
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Body 7)][AltContent: arrow][AltContent: textbox (Stop
Vertical projection
Horizontal projection)]
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[AltContent: arrow][AltContent: arrow][AltContent: textbox (Body (7)
Front surface
Angled portion
First jaw arm (2)
1st jaw arm
recess (3) )][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Handle opening (11)
Stop (10)
Stop arm (16)
Second jaw arm (8)
2nd jaw arm recess (15))]
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In response to applicant’s arguments that,
Claim 12 requires, in part, a handle opening positioned through the stop arm above the stop. The prior art does not disclose this limitation.
Based on the Office's interpretation of Felt and Adams, the "handle opening" is positioned centrally within the stop and therefore is not above the stop as required. Applicant asserts further that the rejection based on Adams found on page 16 is incomplete as the alternative interpretation provided does not articulate how each and every limitation is disclosed by Adams, including, without limitation, a front surface.
Therefore, as the prior art does not disclose each and every element of claim 12 and its respective dependent claims, it cannot anticipate or render obvious these claims.
in response to applicant’s arguments, the examiner traverses the argument with the following remarks. Adams clearly teaches as shown below that the handle opening (shaped hole) positioned through the stop arm (shown as including the handle opening/hole) above the stop (the small protrusion at the bottom of the stop arm as shown in the figure which is below the handle opening therefore the handle opening is above the stop, small protrusion as shown) therefore meeting the applicant’s claimed invention. The applicant states that Adams page 16 is incomplete as the alternative interpretation since the front surface of the body is not provided in the office action. The applicant does not provide in the claim how the front surface of body is positioned within the device other than stating in a broad sense, a front surface which does not claim any other surface of the body therefore in the broadest sense the stop extends outwardly in relating to the front surface of the body since the stop as shown below extends outwardly from the body whether front surface, back surface, or bottom surface, etc. therefore meeting the claimed invention.
[AltContent: arrow][AltContent: textbox (Stop extends outwardly from body )][AltContent: arrow][AltContent: textbox (Stop arm)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (collar)][AltContent: arrow][AltContent: textbox (Handle opening)][AltContent: textbox (1st jaw arm
Body )][AltContent: arrow][AltContent: textbox (2nd jaw arm)][AltContent: arrow]
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In response to applicant’s arguments that,
Claim 12 requires, in part, a handle opening positioned through the stop arm above the stop. The prior art does not disclose this limitation.
Based on the Office's interpretation of Felt and Adams, the "handle opening" is positioned centrally within the stop and therefore is not above the stop as required. Applicant asserts further that the rejection based on Adams found on page 16 is incomplete as the alternative interpretation provided does not articulate how each and every limitation is disclosed by Adams, including, without limitation, a front surface.
Therefore, as the prior art does not disclose each and every element of claim 12 and its respective dependent claims, it cannot anticipate or render obvious these claims.
in response to applicant’s arguments, the examiner traverses the argument with the following remarks. Felt clearly teaches as shown below that the handle opening (11) positioned through the stop arm (16) above the stop (10, which is the projection area of 10 at the lower side of 10) therefore the opening (11) is above the stop (10 lower end ledge) therefore meeting the applicant’s claimed invention in the broadest sense.
[AltContent: arrow][AltContent: textbox (Handle opening (11)
Stop (10)
Stop arm (16))][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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In response to applicant’s arguments that
Claim 13 requires, in part, a handle extending through the handle opening. The prior art does not disclose this limitation.
The Office asserts this feature is anticipated by Adams at [0037]. This is, respectfully, incorrect. Paragraph [0037] of Adams discloses, in full:
FIG. 10 shows the first embodiment 10 attached to a mounting structure 50 having a slot 52 that is sized to receive the head of a suction cup. The suction cup can be
attached to a window or mirror.
A fuller consideration of Adams uncovers no such indication to substantiate the Office's contention that Adams "teaches a device which the body/jaw arms can be handled or held by extending through the handle opening." If the disclosure were present it would be of no matter because it still would not disclose a handle extending through the handle opening, but rather only that the device can be held by a body or jaws.
To the extent the Office relies upon the annotated structure indicated at the bottom of page 16, Applicant respectfully asserts that the dual reliance on one structure to disclose both the stop arm and the handle is improper. See Lantech Inc. v. Keip Machine Co., 32 F.3d 542, 547 (Fed. Cir. 1994) ("When a claim requires two separate elements, one element construed as having two separate functions will not suffice to meet the terms of the claim."); Ex Parte Konstant, Appeal No. 2009-001901, Decision on Appeal at 7 (BPAI Aug. 20, 2009) ("Consistent with the principle that all limitations in a claim must be considered to be meaningful, it is improper to rely on the12
same structure in the Mulholland reference as being responsive to two different elements (the upper flange/upper support width and the outer face) in claims 1, 10, and 18."); Ex Parte Weideman, Appeal No. 2008-3454, Decision on Appeal at 7 (BPAI Jan. 27, 2009) ("Consistent with the principle that all limitations in a claim must be considered to be meaningful, it is improper to rely on the same structure in the Lohr reference as being responsive to two different elements (seat bottom and center support) in claim 1."); Ex Parte Koutsky, Appeal No. 2008-0557, Decision on Appeal at 4 (BPAI Sep. 23, 2008)("When a claim requires two separate elements, one element construed as having two separate functions will not suffice to meet the terms of the claim.").
in response to applicant’s arguments, the examiner traverses the argument with the following remarks. The applicant’s argument is based on the fact that the examiner states that paragraph 0037 teaches a handle and that the handle is disclosed in paragraph 0037 as a suction cup. Adams clearly teaches of a handle as a suction cup since the applicant’s claim 13 only requires a “handle extending through the handle opening” with no other structural limitations claimed. Therefore the suction cup which would extend through the handle opening, as shown below, and being used to hold the device by a user clearly meets the applicant’s claimed invention (especially since the applicant’s handle as disclosed in applicant’s specification is a zip tie which traditionally a zip tie is not known as a handle but can be used to hold or transport the device therefore, showing as evidence a “suction cup” is and can also meet the limitation or purpose of a handle in the broadest sense as is claimed by the applicant).
[AltContent: textbox (Stop arm)][AltContent: arrow][AltContent: textbox (Stop extends outwardly from body )][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (collar)][AltContent: arrow][AltContent: textbox (Handle opening)][AltContent: textbox (1st jaw arm
Body )][AltContent: arrow][AltContent: textbox (2nd jaw arm)][AltContent: arrow]
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Conclusion
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 KIMBERLY T WOOD whose telephone number is (571)272-6826. The examiner can normally be reached M-Thur 9:00am-5:30pm flexible schedule.
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, Jonathan Liu can be reached at (571) 272-8227. 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.
/KIMBERLY T WOOD/ Primary Examiner, Art Unit 3631
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