This is a Non-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Claims 17-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim.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.
The inventions are independent or distinct, each from the other because:
Newly submitted claims 24 and 25 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Inventions I (new claims) and II (original claim) are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the original pair of jaws did not include a first and second jaw arms or the type of hammer or any hammer. The subcombination has separate utility such as a cable holder or a clamp for a sting lights, or a holder for accessory holder.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 24 and 25 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
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 23 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.
Claim 23 recites the limitation "second hammer bracketing" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites the limitation "the channel" in line 2. There is insufficient antecedent basis for this limitation in the claim. The examiner is not sure if the claim is referring to “channel facing” or a new “channel”.
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
Horizontal projection)]
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[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))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Body (7)
Angled portion
First jaw arm (2)
1st jaw arm
recess (3) )]
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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
Collar/angled portion (38)
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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[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Stop arm stops)][AltContent: arrow][AltContent: textbox (Stop arm )][AltContent: textbox (Recess of jaw)]
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[AltContent: arrow][AltContent: textbox (Collar gap)][AltContent: textbox (2nd collar arm)][AltContent: textbox (1st collar arm
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 extending from a top of the body; 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 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 facing, 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.
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Stop arm
Body
2nd jaw arm
Channer of 2nd hammer bracket
2nd hammer bracket
Channel of 1st hammer bracket)][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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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: arrow][AltContent: arrow][AltContent: textbox (collar)][AltContent: textbox (stop)][AltContent: arrow][AltContent: textbox (Handle opening)][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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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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Felt 10,711,985 in view of Miyatake et al. (Miyatake) 9279521.
Felt discloses all of the limitations of the claimed invention except for the handle is a zip-tie.
Miyatake teaches it is known to have
For Claim 13 further comprising a handle extending through the handle opening, wherein the handle is a zip-tie (figure 4a-4B, column 3, lines 15-22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with reasonable expectation of success to have modified Felt to have comprising a handle extending through the handle opening, wherein the handle is a zip-tie as taught by Miyatake for the purpose of attaching wire bundles or supports to the shipping assembly as is well known in the art.
Claim(s) 3 is/are rejected, as best understood, under 35 U.S.C. 103 as being unpatentable over Adams, IV et al. (Adams) 2018/0187867 in view of Adell 4787175. 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 all of the limitations of the claimed invention except for wherein the first jaw arm is longer than the second jaw arm. Adell teaches that it is known
For claim 3 The shipping assembly of claim 1 wherein the first jaw arm is longer than the second jaw arm.
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (1st jaw arm longer than 2nd jaw arm)][AltContent: arrow][AltContent: textbox (2nd jaw Arm )]
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Claim(s) 11 is/are rejected, as best understood, under 35 U.S.C. 103 as being unpatentable over Adams, IV et al. (Adams) 2018/0187867.
Adams discloses all of the limitations of the claimed invention except
For (Claim 11) 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.
It would have been an obvious matter of design choice to have modified Adams to have made 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, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art since the applicant has not shown how the chosen shape is critical.
Response to Arguments
Applicant's arguments filed August 4, 2025 have been fully considered but they are not persuasive.
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.
Conclusion
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.
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/KIMBERLY T WOOD/ Primary Examiner, Art Unit 3631