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 .
Amendment filed 7/30/2025 has been entered. Claims 20-38 remain pending in the present application.
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 27-28 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.
Claim 27 recites the limitation "the shelf" in Line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 27 does not depend from claim (directly or indirectly) 23 which establishes the shelf. It is suggested that the Applicant amend claim 27 to read “a shelf” or change the dependency of claim 27 to depend either directly or indirectly from claim 23.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means,” and are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: means for preventing foreign material from contaminating the socket in claim 25, means to connect to a drive arm in claim 30, and means for receiving the bearing in claim 37.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Applicant defines the means for preventing foreign material as the protective boot, the means to connect to a drive arm as threads and means for receiving the bearing as the outer diameter of an elongated end approximately equal to an inner diameter through the bearing.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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.
Claims 20-25, 30-32 and 34-38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson US 2009/0136289 (hereinafter Johnson).
Re. Cl. 20, Johnson discloses: A swiveling ball joint assembly (Fig. 1), comprising: a rigid housing (12, 88, Fig. 1-4) having a socket (see Fig. 4, where 70 is located) and an integral flange (16a-c, Fig. 5) extending outwardly from the socket to define a flange plane (see Fig. 1-4), the rigid housing substantially enclosing the socket and defining a closed bottom end (see Fig. 4); an elongated shaft (72, Fig. 4) defining an axis of rotation (see 14 Fig. 4, through the center of 72) and having a ball end (70, Fig. 4) and a coupling end (76, Fig. 4), the ball end enclosed within the socket and the coupling end extending in a direction substantially normal to the flange plane (see Fig. 4); and a bearing (80, 82, Fig. 4) concentrically aligned with the axis of rotation and rotatably attached to the shaft between the ball end and the coupling end (see Fig. 4, between ball 70 and coupling end 76), wherein the bearing is operable to allow the flange to rotate with respect to the bearing (see Fig. 4, 82, 80 is operable to rotate relative 72 so that the flanges 16a-c rotate about the shaft 72).
Re. Cl. 21, Johnson discloses: two or more flanges extending outwardly from the socket (see Fig. 5, there are three flanges 16a-c).
Re. Cl. 22, Johnson discloses: the flange comprises at least one mounting hole (see 22, Fig. 5).
Re. Cl. 23, Johnson discloses: the rigid housing further comprises a shelf (60, Fig. 4) located between the ball end and the coupling end of the elongated shaft (see Fig. 4, between 76 and 70).
Re. Cl. 24, Johnson discloses: the bearing abuts the shelf (see Fig. 4, 80, 82 abuts the underside of 60).
Re. Cl. 25, Johnson discloses: a means for preventing foreign material from contaminating the socket (106, Fig. 4).
Re. Cl. 30, Johnson discloses: the coupling end further comprises a means to connect to a drive arm (threads 76, Fig. 4).
Re. Cl. 31, Johnson discloses: the bearing is configured to be set into a bearing housing on the drive arm (see Fig. 4, the bearing using 80, 82 is configured to be set into a housing on a drive arm as claimed in the intended use recitation, by having 12 seated into a drive arm).
Re. Cl. 32, Johnson discloses: the means to connect to a drive arm comprises a threaded end (see 76, Fig. 4).
Re. Cl. 34, Johnson discloses: the coupling end has a length approximately equal to the height of the socket (see Fig. 4, the end with 76 is “approximately equal” to a height of socket since they are illustrated as approximately the same; the Examiner notes that the term “approximately” is a term of degree which is undefined by the Applicant and therefore is a broad limitation).
Re. Cl. 35, Johnson discloses: the socket is configured to be set into a center of a driver plate (see Fig. 4, due to the exterior shape of the housing 12, it is configured to be set into a center of an appropriate driver plate as claimed in the intended use).
Re. Cl. 36, Johnson discloses: the bearing is configured to allow the driver plate to rotate with respect to a drive arm (see Fig. 4, the bearing is configured to allow 12 to rotate with respect to 72 and is therefore configured to be used in the claimed intended use by having a driver plate attached to 72 and the drive arm attached to 12 for instance).
Re. Cl. 37, Johnson discloses: the coupling end further comprises a means for receiving the bearing (see Fig. 4, 76 has a diameter smaller than the spacing between 80,82 thus proving a means for receiving the bearing).
Re. Cl. 38, Johnson discloses: the means for receiving the bearing comprises an elongated end having an outer diameter substantially equal to an inner diameter of an aperture defined through the bearing (see Fig. 4).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Sato US 2021/0033141 (hereinafter Sato).
Re. Cls. 26-29, Johnson does not disclose the means for preventing foreign material from contaminating the socket comprises a protective boot (Cl. 26), the protective boot extends from the socket to the shelf (Cl. 27), the protective boot circumvolves at least a portion of the elongated shaft (Cl. 28), the protective boot comprises a flexible material (Cl. 29). Sato discloses a ball joint assembly (Fig. 1) which includes a rigid housing (210, Fig. 1) which receives a ball (320)/elongated shaft (300, Fig. 1). Re. Cls. 25-29, Sato discloses a means for preventing foreign material from contaminating the socket (100, Fig. 1), the contamination prevention means comprises a protective boot (see 100, Fig. 1), the protective boot extends from the socket to the shelf (see Fig. 1, the boot 100 extends from over the socket 230 to shelf 211), the protective boot circumvolves at least a portion of the elongated shaft (see Fig. 1, circumvolves around shaft 310), the protective boot comprises a flexible material (rubber, Paragraph 0029, Lines 13-14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the annular seal of Johnson with the protective boot of Sato with reasonable expectation of success since it has been held obvious to replace one known means for another to achieve a predictable result (i.e. replacing the annular seal of Johnson with the boot of Sato). KSR Int’l Co. V. Teleflex Inc. 550 U.S. ___, 82 USPQ 2d 1385 (Supreme Court 2007) (KSR)
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Sanders US 1042484 (hereinafter Sanders).
Re. Cl. 33, Johnson does not disclose the threaded end has a non-circular configuration at an end distal to the bearing. Sanders discloses an elongated shaft (Fig. 5) which has a threaded end (4, Fig. 5) that has a non-circular configuration (see Fig. 5, due to flat portions 5) at an end distal to the bearing (see Fig. 5, end is distal to end 2, and since the threaded end in Johnson is distal to the bearing as shown in Fig. 4, the non-circular configuration in the combination would be distal to the bearing also).
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 Johnson threads to have the flat portions of Sanders with reasonable expectation of success since Sanders states that such a modification would allow a key to slide thereon to prevent circumferential movement of a washer (Lines 15-19 and Lines 27-29).
Response to Arguments
Applicant’s arguments with respect to claim(s) 20-38 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Phillipe US 2010/0252978 discloses another known ball joint assembly presented to the Applicant for their consideration.
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 CHRISTOPHER E GARFT whose telephone number is (571)270-1171. The examiner can normally be reached Monday-Friday 8:00 a.m. to 5:00 p.m..
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, Terrell McKinnon can be reached at (571)272-4797. 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.
/CHRISTOPHER GARFT/Primary Examiner, Art Unit 3632
Prosecution Insights