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 with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-16 are 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. Since amended claim 1 claims “a second outer surface comprising a lengthwise recess corresponding in shape to the raised feature on the first outer surface to engage said raised feature” which lacks any written description since the disclosed recess of the second tubular portion is in the inner surface not outer surface.
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 1-16 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 1, the phrase “a second outer surface comprising a lengthwise recess corresponding in shape to the raised feature on the first outer surface to engage said raised feature” is unclear what the applicant is referring to since applicant does not disclose a lengthwise recess in the outer surface of the second tubular portion, applicant instead discloses a lengthwise recess in the inner surface of the second tubular portion which is how it will be interpreted for the purpose of this examination, and it is unclear how the inner surface recess of the second tubular portion can “engage said raised feature” of the first tubular portion since applicant claimed “the second generally tubular portion being contiguous with the first generally tubular portion” hence it is not possible for the recess to engage “said raised feature” but can instead engage an identical raised feature of a second identical adapter or extender.
Regarding claim 3, the newly amended claim language is unclear what the applicant is referring to and is unclear what limitation the applicant is attempting to further limit, the phrase “comprising a valve a faucet body of the valve” is unclear what limitation comprises such features and is unclear what the applicant is referring to; and the phrase “protrudes toward an escutcheon adjacent a wall to accommodate distance variations between the valve and a wall” is unclear what limitation the applicant is further limiting or if applicant is merely further limiting the intended use of the “stop tube” and attempting to positively claim structure to the intended use; and the limitation “a wall” is introduced twice in the claim and it is unclear if applicant is referring to the same wall or another.
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.
Claim(s) 1-3, 7-8, and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Young (U.S. Patent No. 3,582,116).
Regarding 1, Young discloses an adapter or extender (Figs. 1-3) comprising: (a) a first generally tubular portion (12) having a first uniform cross-section (Figs. 1-3) defining a first opening (upper opening of 16) and a first outer surface (Figs. 1-3) comprising a raised feature (11) on the outer surface; and (b) a second generally tubular portion (10) having a second uniform cross-section (Figs. 1-3) defining a second opening (lower opening of 16) and a second inner surface comprising a lengthwise recess (11) corresponding in shape (Column 1 line 62-Column 2 line 11) to the raised feature (11) on the first outer surface to engage said raised feature (11), the second generally tubular portion (10) being contiguous (Fig. 2) with the first generally tubular portion (12) and the second opening (lower opening at 16) and the second outer surface being larger (Figs. 1-3) than the first opening (upper opening at 16) and the first outer surface (Fig. 3), respectively; wherein the first and second uniform cross-sectional shapes (Fig 3) of the first and second tubular portions (12 and 10), respectively, are configured to (the term “configured to” merely limits the claim to capable of performing the claimed function) allow: (i) coupling of another device (3) with the first generally tubular portion (12) in a rotatably locked configuration (Column 1 line 62-Column 2 line 11); and (ii) coupling of the first generally tubular portion (12) with a second opening in a second generally tubular portion (10) of another identical adapter or extender (capable of coupling with an identical extender since each female end can couple with a corresponding male end as disclosed in Column 1 line 62-Column 2 line 11) in a rotatably locked configuration (positioned to fit snugly and firmly as disclosed in Column 1 line 62-Column 2 line 11).
Regarding claim 2, Young discloses an adapter or extender (Figs. 1-3), wherein the coupling (i) and (ii) forms a close or tight-fitting relationship (positioned to fit snugly and firmly as disclosed in Column 1 line 62-Column 2 line 11).
Regarding claim 3, Young discloses an adapter or extender (Figs. 1-3), wherein the another device (3) is a stop tube (valve stem 3 can be interpreted as a stop tube for the recited intended use) for connecting a shower or tub handle (7) to a water supply (1) and comprising a valve a faucet body (1) of the valve and protrudes toward an escutcheon (5) adjacent a wall (2) to accommodate distance variations (4 or 4a) between the valve (1) and a wall (2).
Regarding claim 7, Young discloses an adapter or extender (Figs. 1-3), wherein coupling with another identical adapter or extender (the claimed functional language of claim 1 that is limited to “configured to”) is provided by the first generally tubular portion (12) having a first uniform cross-section (Figs. 1-3) with a first outer surface (11) configured to (the term “configured to” merely limits the claim to capable of performing the claimed function) allow the first generally tubular portion (11) to be at least partially insertable into a corresponding second opening (capable of coupling with an identical extender since each female end can couple with a corresponding male end as disclosed in Column 1 line 62-Column 2 line 11) of an identical adapter or extender (8) in a mating and rotatably locked configuration (positioned to fit snugly and firmly as disclosed in Column 1 line 62-Column 2 line 11).
Regarding claim 8, Young discloses an adapter or extender (Figs. 1-3), wherein the mating and rotatably locking function (positioned to fit snugly and firmly as disclosed in Column 1 line 62-Column 2 line 11) between two or more identical adapters or extenders (8) is provided by a raised notch or ridge (11), positioned along a lengthwise portion of a first outer surface (Figs. 1-3) of a first generally tubular portion (12) on one adapter or extender (8), that is engageable with a corresponding lengthwise recess (11) in a second opening (at 10) of a second generally tubular portion (10) in another adapter or extender (8).
Regarding claim 11, Young discloses a device (Figs. 1-3) comprising an adapter or extending (8) coupled to a stop tube (3).
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) 4-6, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young (U.S. Patent No. 3,582,116) in view of Huang (U.S. Patent No. 8,607,662).
Regarding claim 4, Young discloses the essential features of the claimed invention but lacks disclosure wherein the coupling with the stop tube is provided by the first generally tubular portion having a first uniform cross-section configured to allow the first generally tubular portion to be at least partially insertable into a corresponding opening in the stop tube in a mating and rotatably locked configuration.
Huang teaches an adapter or extender (Figs. 1-11) for extending a stop tube (42), the adapter (30) having a first generally tubular portion (31) and a second generally tubular portion (32), wherein the first generally tubular portion (31) is configured to be insertable into an opening (Fig. 2) in the stop tube (42) in a mating and rotatably locked configuration (Column 4 lines 28-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the extender of Young with an extender as taught by Huang for the advantage of enabling the use in different water control bases with different sizes (Column 4 lines 50-56). A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976).
Regarding claim 5, Huang (modified above) teach wherein the coupling of the adapter or extender (30) to the stop tube (42) is by sliding one end (Fig. 11) of the stop tube (42) over the first generally tubular portion (31) in a rotatably locked configuration (Column 4 lines 28-67).
Regarding claim 6, Huang (modified above) teach wherein the rotatably locked coupling of the adapter or extending (30) to the stop tube (42) is provided by a raised notch or ridge (311), positioned along a lengthwise portion (Fig. 2) of the first outer surface of the first generally tubular portion (31), that is engageable with a recess (422), corresponding to the shape of the raised notch or ridge (311) on the first generally tubular portion (31), provided on an inner surface (Fig. 2) of the stop tube (42).
Regarding claim 9, Young disclose the essential features of the claimed invention but lacks disclosure wherein raised notches or ridges are provided on each exterior surface of the first and second generally tubular portions, wherein the raised notches or ridges have flat sides that protrude radially from the first and second generally tubular portions.
Huang teaches an adapter or extender (Figs. 1-11) for extending a stop tube (42), the adapter (30) having a first generally tubular portion (31) and a second generally tubular portion (32), wherein the first generally tubular portion (31) and the second generally tubular portion (32) each a have raised notch or ridge (311 and 323) provided on their exterior surface (Fig. 2), and each notch or ridge (311 or 323) has flat sides (Fig. 2) that protrude radially (Fig. 2) from the first and second generally tubular portions (31 and 32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the extender of Young with an extender as taught by Huang for the advantage of enabling the use in different water control bases with different sizes (Column 4 lines 50-56). A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976)..
Claim(s) 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young (U.S. Patent No. 3,582,116) in view of Greitzer (U.S. Patent No. 3,301,580).
Regarding claim 10, Young discloses the essential features of the claimed invention but lacks disclosure of positively reciting the adapter or extender coupled to another identical adapter or extender.
Greitzer teaches an adapter or extender (12) having first and second tubular portions (22 and 60) that can be coupled to an identical adapter or extender (12a) in a rotatably locked configuration (Column 4 lines 6-35).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to couple a duplicate of the adapter or extender of Young as is taught by the coupled adapters or extenders of Greitzer, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 12, Young discloses a device (Figs. 1-3) coupled to a stop tube (3).
Claim(s) 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young (U.S. Patent No. 3,582,116) in view of Huffington et al. (Pub. No. US 2013/0312856).
Regarding claim 13, Young discloses the essential features of the claimed invention but lacks disclosure wherein the adapter or extending is made of a rubber or thermoplastic rubber material and optionally additional polypropylene.
Huffington et al. teach an adapter or extender (140) that is made of a thermoplastic material (paragraph 42).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the adapter or extender of Young to be a thermoplastic material as taught by Huffington et al., since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 14, Young discloses an adapter or extender (Figs. 1-3) formed by injection molding (product by process).
The adapter or extender produced/formed by injection molding does not limit the claim. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product in the prior art, the claim in unpatentable even though the prior product was made by a different process (see MPEP 2113).
Regarding claim 15, Huffington et al. (modified above) teach a TPR material (paragraph 42) is a dynamically vulcanized polymer alloy of cured EPDM rubber in a polypropylene matrix.
Regarding claim 16, Young modified above disclose the essential features of the claimed invention but lack disclosure wherein additional polypropylene is present to control hardness.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the adapter or extender of Young with additional polypropylene, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
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 Reinaldo Sanchez-Medina, telephone number 571-270-5168, fax number 571-270-6168. The examiner can normally be reached on Monday-Friday (7:30AM-4:00PM EST).
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/REINALDO SANCHEZ-MEDINA/Primary Examiner, Art Unit 3753