DETAILED ACTION
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 .
Response to Arguments
Applicant's arguments filed 9/25/2025 have been fully considered but they are not persuasive.
Examiner thanks applicant for removal of “so as to be rotatable 360 degrees”, this reduces issues. Applicant does not address the 112b rejection of claim 14; therefore, claim 14 is still rejected under 112b.
Applicant argues that Cappiello in view of Pero does not make up for the language of claim 4, presently in claim 1, for the following three reasons:
“Cappiello does not disclose or suggest a groove”, since applicant argues the second throat 38 is “not a groove formed in the shaft, but rather created by spacing apart the twisted section of the shaft”. Examiner notes that being formed by the parts that create the shaft, and unitary with the shaft, makes the “second throat” 38 considered as part of the shaft. The applicant does not claim the method of making, and therefore, the method of creating the second throat is not germane to the claim language, nor to distinguishing the second throat from the shaft. Further, the figures show that the “second throat” has the structure of a groove; three closed sides and one open side. Applicant’s argument is not persuasive.
Applicant asserts the modification requires modifying the detent 30 of Pero, which is the modifying reference. Examiner notes that Pero clearly discloses a convex surface 33 on cap member 32, which engages concave areas 18 and 26 on the pivoting arm 25. Applicant’s claim requires the concave area on the cap member 32 rather than on the pivoting arm 25. Examiner contends that this is an obvious reversal of known parts (MPEP 2144.04(VI)A) that performs the same function, essentially reversing which side of a shirt has buttons and which side has holes. This is an obvious modification; applicant does not argue that it is not obvious. Applicant merely argues it is “improper” with no MPEP citation, and that it shows hindsight. Applicant’s arguments are not persuasive.
Applicant argues that placing a groove/concavity where convex bump 33 is on Pero would therefore not engage the existing concavities 18 or 26. Examiner notes that the modification is to reverse the known concave/convex features so that the functionality of engagement still exists, not to merely change half of the engagement feature to make the feature inoperable. Applicant’s arguments are not persuasive.
Claim Rejections - 35 USC § 112
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.
Claims 14 are 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.
Regarding claim 14, applicant claims the system “further comprises a base configured to be secured to an earring”. Examiner notes that the base as claimed is further configured to be secured to an ornamental article. If the ornamental article is attached to the system as claimed, then the combination of the ornamental article and the system can be considered an earring. The record is not clear how the system can be “configured to be secured” to another entire earring.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 2, 5, 14-16, 21, 24-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over 2004/0079110 Cappiello in view of 2859501 Pero.
Regarding claim 15, Cappiello discloses a locking and holding system comprising:
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a body section comprising: a shaft 35 comprising two twisted interlocking members 32, 34; two arms (on either side of pivot pin 16), each of the two arms extending from a respective one of the two twisted interlocking members of the shaft (as shown in figure 3); and a recess formed between the two arms (as shown in figure 3); and
a locking bar 40 pivotally engaged with the body section (by pivot pin 16) and movable between a first position with a longitudinal axis of the locking bar substantially parallel to a central axis of the shaft (figure 2b), and a second position with the longitudinal axis of the locking bar substantially perpendicular to the central axis of the shaft (figure 2a);
wherein the body section and the locking bar are connected at a pivot point (using pivot pin 16) about which the locking bar pivots between the first position and the second position (figures 2a and 2b);
wherein the body section further comprises a mechanism 38 for engaging the locking bar 40 by compressing the locking bar when the locking bar 40 engages the mechanism 38 (as shown in figure 3);
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Cappiello discloses that the bar 40 is caught in the particular location of figure 3 by the use of a compressive location 38 of the body section. Cappiello does not disclose that this compressive force to hold bar 40 in a particular location includes a spring. Cappiello discloses the use of a groove (“second throat 38”) to engage a protrusion (edge) of the bar 40.
Pero discloses an “interchangeable button” (title) having a similar structure, with a body 16, locking bar 24, which is pivoted to the body 16 at pivot pin 22, which is in the center of locking bar 24. Locking bar 24 is held in two positions (figures 1 and 7) by spring 34. The body section 16 further comprises a cap member 32 disposed on a first end of the spring 34 positioned nearest to the locking bar 24 (cap member 32 abuts locking bar 24 in figures 3 and 7), wherein the cap member 32 is biased (by the spring 34) such that it impedes pivoting of the locking bar into the first position when the spring is in a decompressed form (pressing the cap member 32 into the recess 26): and wherein the cap member 32 comprises a convex feature disposed on a surface proximal to the locking arm 25, the convex feature being dimensioned to be received in a channel 26 of the locking bar 26 in the first position.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the spring compressive mechanism of Pero in location of the compressive mechanism of Cappiello, as these are known equivalents to act on a locking bar with similar structure. Further, the spring will provide a “snap” engagement (column 2, line 31), enabling the user to know the locking bar of Cappiello is in the correct position without looking. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to reverse the shapes known in Pero to engage the cap and the locking bar, to be the reverse, as Cappiello teaches the use of a groove in the location of the cap, to engage a protruding edge of the locking bar. It would have been obvious to one having ordinary skill in the art at the time of the invention was made to have the cap of Pero with a groove similar to Cappiello instead of with a convex feature as known in Pero, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.04 (VI) (a).
Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. MPEP 2114. Examiner notes the phrases in italics above, and throughout the action, are considered intended use. Examiner contends that the structure capable of performing the intended use is met in the prior art, and is described how the structure disclosed performs the claimed functions in the parentheses; therefore, all italicized language is considered and shown in the prior art. Further, examiner notes that the disclosed structure is capable of performing the intended use claimed by applicant.
Regarding claim 2, Cappiello as modified discloses the system according to claim 1, wherein the shaft further comprises a chamber (space t2 in Cappiello) housing the spring (as shown in Pero).
Regarding claim 5, Cappiello as modified discloses the system according to claim 1, wherein the two intertwining members of the shaft (in Cappiello) are opposing ends of a wound, single coiling member.
Regarding claim 14, as best understood, Cappiello as modified discloses the system according to claim 1, wherein the body section further comprises a base configured to be secured to an ornamental article (the abstract, [0001] and [0004] of Cappiello describe this device can be an earring, and therefore is capable of holding an ornamental article and being worn in the ear).
Regarding claim 24, Cappiello as modified discloses the system according to claim 1, wherein the locking bar 40 comprises rounded or tapered edges on each end (as shown in figures 2a/2b and 3 of Cappiello).
Regarding claim 25, Cappiello as modified discloses the system according to claim 1, wherein the locking bar 40 has a thickness that is less than a width of the recess (as shown in figure 3), to allow the locking bar to pass through the recess during rotation of the locking bar (as discussed above in claim 1).
Regarding claim 26, Cappiello as modified discloses the system according to claim 1, wherein when the locking bar 40 is turned from the second position (perpendicular, figure 2a of Cappiello, figure 1 of Pero) to the first position (co linear figure 2b of Cappiello and figure 3 of Pero), an end of the locking bar abuts the cap (as shown in Pero, figure 3), impeding rotation of the locking bar unless additional force is applied by the user to push the locking bar into a parallel formation with the two arms (as is taught in Pero).
Regarding claim 27, Cappiello as modified discloses the system according to claim 26, wherein when the locking bar 40 is pushed towards the cap (figure 5 of Pero, in the location of the compressive area 38 of Cappiello), the edge of the locking bar pushes the cap downward (as taught in Pero), compressing the spring; and when the locking bar 40 is moved back from the first position towards the second position configuration (figure 2a of Cappiello), the spring pushes the cap towards the arms and back into the recess.
Regarding claim 15, Cappiello discloses an earring (examiner notes that “earring” is a device that is intended to be used in an ear, but can also be used in other locations, such as in clothing, and piercing in other body parts. Therefore, examiner notes that a device having the structure as claimed meets the intended use of “earring”. The abstract, [0001] and [0004] indicate the Cappiello device “insertable into a pierced body part”.) comprising:
a locking and holding system configured to secure the earring to a body piercing (abstract, [0001], [0004]), comprising:
a body section comprising: a shaft 35 comprising two twisted interlocking members 32, 34; two arms (on either side of pivot pin 16), each of the two arms extending from a respective one of the two twisted interlocking members of the shaft (as shown in figure 3); and a recess formed between the two arms (as shown in figure 3); and
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a locking bar 40 pivotally engaged with the body section (by pivot pin 16) and movable between a first position with a longitudinal axis of the locking bar substantially parallel to a central axis of the shaft (figure 2b), and a second position with the longitudinal axis of the locking bar substantially perpendicular to the central axis of the shaft (figure 2a);
wherein the body section and the locking bar are connected at a pivot point (using pivot pin 16) about which the locking bar pivots between the first position and the second position (figures 2a and 2b);
wherein the body section further comprises a mechanism 38 for engaging the locking bar 40 by compressing the locking bar when the locking bar 40 engages the mechanism 38 (as shown in figure 3);
wherein the body section is configured to engage with the locking bar in the first position and impede pivoting of the locking bar from the second position into the first position (in the position of figure 2b, the locking arm 40 is squeezed between arms 32 and 34 at the end of the cylindrical section, which retains the locking arm 40 in the position of figure 2b, [0020] and [0021]);
and wherein a first end of the locking and holding system comprises a base, and a second end of the locking and holding system opposite the first end comprises the locking bar 40 (locking bar 40 is farthest most extension of the locking and holding system shown in Cappiello, figures 2b and 3) and wherein the shaft 35 is disposed in between the first end and the second end (as shown in figure 3).
Cappiello discloses that the bar 40 is caught in the particular location of figure 3 by the use of a compressive location 38 of the body section. Cappiello does not disclose that this compressive force to hold bar 40 in a particular location includes a spring.
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Pero discloses an “interchangeable button” (title) having a similar structure, with a body 16, locking bar 24, which is pivoted to the body 16 at pivot pin 22, which is in the center of locking bar 24. Locking bar 24 is held in two positions (figures 1 and 7) by spring 34. The body section 16 further comprises a cap member 32 disposed on a first end of the spring 34 positioned nearest to the locking bar 24 (cap member 32 abuts locking bar 24 in figures 3 and 7), wherein the cap member 32 is biased (by the spring 34) such that it impedes pivoting of the locking bar into the first position when the spring is in a decompressed form (pressing the cap member 32 into the recess 26): and wherein the cap member 32 comprises a convex feature disposed on a surface proximal to the locking arm 25, the convex feature being dimensioned to be received in a channel 26 of the locking bar 26 in the first position.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the spring compressive mechanism of Pero in location of the compressive mechanism of Cappiello, as these are known equivalents to act on a locking bar with similar structure. Further, the spring will provide a “snap” engagement (column 2, line 31), enabling the user to know the locking bar of Cappiello is in the correct position without looking. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to reverse the shapes known in Pero to engage the cap and the locking bar, to be the reverse, as Cappiello teaches the use of a groove in the location of the cap, to engage a protruding edge of the locking bar. It would have been obvious to one having ordinary skill in the art at the time of the invention was made to have the cap of Pero with a groove similar to Cappiello instead of with a convex feature as known in Pero, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.04 (VI) (a).
Regarding claim 16, Cappiello as modified discloses the earring of claim 15, wherein the shaft further comprises a chamber housing the spring (as shown in Pero, and Cappiello has the space in width T2).
Regarding claim 21, Cappiello as modified discloses the earring according to claim 15, wherein the two intertwining members of the shaft (as shown in Cappiello) are opposing ends of a wound, single coiling member.
Claim(s) 6 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘110 Cappiello modified by Pero as applied to claims 1 and 15 above, and further in view of ‘804 Cappiello.
Regarding claims 6 and 22, ‘110 Cappiello as modified discloses the apparatus of claim 15, the locking bar 40 has a through hole configured to fit a pivot pin 16 such that the locking bar 40 is configured to pivot around the pivot pin 16, and the two arms are integrally formed with the intertwining members of the shaft. ‘110 Cappiello recognizes ‘804 Cappiello as inventor’s own prior art, describing the method of assembly of the device of figures 15-16 of ‘804 Cappiello in column 10, lines 10-28. This discloses “wire 81 is bent about a portion of locking bar 23 to form two substantially equal length parallel wire segments 83…segments 83 are then intertwiningly twisted to form the intertwined, twisted, rope-like elongated shaft 82”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the ‘110 Cappiello device of figure 3 in the manner described by ‘804 Cappiello, as this is old and well known in the art. Further, this would still allow ‘110 Cappiello to retain the thin gap 38 which retains the locking bar in the parallel position, but would remove the redundant thin gap 36 from the ‘110 Cappiello device. Having one of the two thin gaps still allows ‘110 Cappiello to retain the locking bar in the parallel position, albeit in a less secure (meaning, locking bar 40 of ‘110 Cappiello has less frictional contact) manner.
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 EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571)272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY M MORGAN/ Primary Examiner, Art Unit 3677