DETAILED ACTION
This communication is a first Office Action Non-Final rejection on the merits. The Restriction election received on 12/23/2025 has been acknowledged. Claim(s) 1-6 and 12-14 have been cancelled and claims 15 and 16 have been added. Claims 7-11,15, and 16 are now pending and have been considered below.
Election/Restrictions
1. Applicant’s election of Group II (claims 7-11, 15, and 16) in the reply filed on 12/23/2025 is acknowledged.
2. Claims 1-6 and 12-14 are withdrawn (now cancelled) from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected invention Groups I and III. Election was made without traverse in the reply filed on 12/23/2025.
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 “a first fastening strip along a bottom of the step cover”, “a first complimentary fastening strip along a top side of the step”, “a second first fastening strip along a bottom of the step cover”, and “a second complimentary fastening strip” of claim 8 must be shown or the feature(s) canceled from the claim(s). In addition, the “coupling a second end hook to a first eyelet on the extender and placing one or more additional eyelets into a center of the dual hook spring” of claim 9 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 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.
Claim(s) 7-11, 15, and 16 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Regarding claim 7, at line 5, the recitation “the rug” renders the claim indefinite because it lacks antecedent basis. For purpose of this Office Action, it is assumed that the limitation is meant to recite --the step cover--.
Regarding claim 9, at lines 1-3, the recitation “coupling a second end hook to a first eyelet on the extender and placing one or more additional eyelets into a center of the dual hook spring” renders the claim indefinite because the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. It is unclear as to whether “a first eyelet” is referring to the same previously recited limitation or if this is a different eyelet. It is further unclear as to how the one or more additional eyelets could be placed into a center of the dual hook spring.
Allowable Subject Matter
Claim(s) 11 is rejected as being dependent upon a rejected base claim, but would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and if rewritten in independent form including all of the limitations of the base claim and any intervening claims. In particular, the limitation “said step of torsioning is provided by unravelling at least a portion of one or more coils on the eyelet” would overcome the prior art rejection since no prior art of record, alone or in combination, teaches this configuration and such a modification to include the step would require modifying the modifier reference which would involve hindsight reconstruction.
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 of this title, 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) 7-10 and 15, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Prest (U.S. Patent No. 10,398,245) in view of Thebaud et al. (U.S. Patent No. 4,835,029).
Regarding claim 7, Prest teaches a method for covering a step (col. 8, lines 4-5), said method comprising the steps of: (a) wrapping a step cover across the top of the step and to an underside of the step to locate forward and rear ends of the step cover along the underside of the step (col. 8, lines 5-10); (b) drawing a rear edge along a rear end of the step cover toward a forward edge along a forward end of the rug (col. 8, lines 10-15); and (c) coupling the rear end with the forward end via an elongated fastener (col. 8, lines 15-18) by: (i) coupling a dual hook spring first end (60 – bottom end) to a rear end attachment point (71).
Prest does not specifically disclose coupling a dual hook spring second end to an extender, the extender including an eyelet adapted to couple said dual hook spring second end, and coupling a far end of the extender to the forward end by hooking an extender hook on the extender to the forward end at a forward end attachment point.
Thebaud et al. discloses a sheath assembly including coupling a dual hook spring second end (upper end of lower spring 41) to an extender (ring 42 + upper spring 41), the extender including an eyelet (42) adapted to couple said dual hook spring second end (figure 46c), and coupling a far end of the extender to the forward end (at 19) by hooking an extender hook on the extender (hook at top of upper spring 41) to the forward end at a forward end attachment point (19; figure 46c).
Therefore, from the teaching of Thebaud et al., 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 method for covering a step of Prest to include coupling a dual hook spring second end to an extender, the extender including an eyelet adapted to couple said dual hook spring second end, and coupling a far end of the extender to the forward end by hooking an extender hook on the extender to the forward end at a forward end attachment point, as taught by Thebaud et al., in order to provide length and tension variability to the sheath assembly in order to accommodate covering items of varying sizes.
Regarding claim 8, Prest teaches (d) fastening a first fastening strip (66) along a bottom of the step cover (figure 2) with a first complimentary fastening strip (19) along a top side of the step (figure 4), (e) fastening a second first fastening strip (67) along a bottom of the step cover (figure 2) with a second complimentary fastening strip (17) along a front side of the step (figure 6).
Regarding claim 9, Thebaud et al. in the combination does not specifically disclose said step of coupling includes coupling a second end hook to a first eyelet on the extender and placing one or more additional eyelets into a center of the dual hook spring.
However, it would have been an obvious matter of choice to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus to have a duplicate coupling of a second end hook to a first eyelet on the extender and placing one or more additional eyelets into a center of the dual hook spring, since such a modification would have only involved a mere duplication of a component. Absent any persuasive evidence that a particular configuration of the claimed duplicate part is significant, a duplicate part is generally recognized as being within the level of ordinary skill in the art In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). It has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. Therefore, it would have been obvious to one of ordinary skill in the art to include coupling a second end hook to a first eyelet on the extender and placing one or more additional eyelets into a center of the dual hook spring, in order to further secure the cover onto the step for additional stability and to prevent unintentional displacement or slippage.
Regarding claim 10, Thebaud et al. in the combination discloses the step of torsioning the extender eyelet to relieve tension along the fastening system (it is understood that the upper spring 41 is a spring which inherently provides torsion capable of relieving tension along the fastening system).
Regarding claim 15, Thebaud et al. in the combination discloses the eyelet comprises a single revolution (figure 46c).
Claim(s) 16, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Prest (U.S. Patent No. 10,398,245) in view of Thebaud et al. (U.S. Patent No. 4,835,029), and further in view of Butler (U.S. Patent No. 1,198,105).
Regarding claim 16, Prest as modified does not specifically disclose the eyelet comprises more than one revolution.
Butler discloses a key ring hook (title) the eyelet (10) comprises more than one revolution (figure 2).
Therefore, from the teaching of Butler, 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 modified method for covering a step of Prest such that the eyelet comprises more than one revolution, as taught by Butler, in order to provide a canonical split key ring as a readily available off-the-shelf manufacturing element in place of the solid ring, to reduce manufacturing costs and to further facilitate removal and attachment via the split attachment feature, to facilitate connection to different types of spring ends.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The cited patents listed on the included form PTO-892 further show the state of the art with respect to step covers in general.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMAR HIJAZ whose telephone number is (571)270-5790. The examiner can normally be reached on 8-6 EST Monday-Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached on (571) 270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMAR F HIJAZ/Examiner, Art Unit 3633