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 .
Information Disclosure Statement
The patent number 2003471291 on the IDS has not been considered as this is not a valid patent number. It appears that the applicant was attempting to cited D3471291 which has been cited on the 892 and made of record.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the
“series of interconnected guard rail sections”
“metal frame”
“vertical bars spaced at regular intervals”
“end caps”
“adjustable supports”
“smooth rounded edge”
“telescopic legs”
“locking mechanism”
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings also should contain reference characters to identify elements.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-5 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.
Regarding claims 1, 4, and 5, how the series of guard rail sections would be arranged and what would constitute the metal frame, end caps, adjustable supports, locking mechanism, and/or vertical spaced bars is not no explained in the disclosure in such a way to allow one of ordinary skill in the art to make and use the invention. See drawing objections above. What these elements look like and how they interact are not explained adequately in the disclosure. The names used in the detailed description do not match those used in the claims and one of ordinary skill in the art cannot identify which specification/drawing elements they correspond with to make and use the invention. For example, where is the locking mechanism located, how does it lock the elements?
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 2 and 3 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.
The term “High strength steel” and “approximately” in claims 2 and 3 are relative term which renders the claim indefinite. The terms “high strength steel” and “approximately” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While the terms high strength steel is know, the metes and bounds of the specific requirements are not strickly defined, therefore determining what would qualify as high strength steel in light of the specification is not clear.
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.
(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, 2, 4, and 5 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Palmer (5718305).
As best understood in light of the drawing objections and 112 rejections above.
Regarding claim 2, Palmer discloses a guard rail system comprising: a series of interconnected guard rail sections (two sections 16 show in figure 2), each comprising a metal frame using high strength steel (28, “H.S.S. … steel” C7 L 4-5) and vertical bars (38) spaced at regular intervals (figure 2); end caps (44) closing off the ends of the guard rail sections; and adjustable supports (at least one of 50, 46, 48 ,52, 54, 56) for stabilizing the guard rail system on uneven surfaces.
Regarding claim 4 Palmer discloses the end caps (44) include smooth rounded edge (fig. 3).
Regarding claim 5 Palmer discloses telescoping leg (48 telescopes with 28) with a locking mechanism (50) for adjusting the height.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer (5718305).
Regarding claim 3, Palmer disclosed the invention as described previously, but lacks specifically disclosing the interval of approximately 4 feet.
While the interval between is shown at a distance, the length of the distance is not specifically disclosed. 4 feet of spacing would be a known and predictable distance of spacing to one of ordinary skill in the art. There is no specific unpredictable advantage provided to using 4 feet of spacing and therefore it would be obvious ton one of ordinary skill in the art before the effective filing date of the claimed invention to using a spacing of 4 feet since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and the device having the claimed relative dimension would not preform differently than the prior art, the claimed device was not patentably distinct. (MPEP 2144.04 IV. A).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL TROY whose telephone number is (571)270-3742. The examiner can normally be reached Monday -Thursday, 9:00 am - 5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL J TROY/ Supervisory Patent Examiner, Art Unit 3637