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 .
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.
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, 6, and all subsequent dependent claims 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.
Claims 1, 6, and all subsequent dependent claims 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 claims 1 and 6, the limitation, “… in a state where a wall surface corresponding to an embankment portion exists on the outside diameter side while a wall surface corresponding to an embankment portion does not exist on the inside diameter side,… in a state where the wall surface corresponding to the embankment portion exists on the inside diameter side while the wall surface corresponding to the embankment portion does not exist on the outside diameter side” does not satisfy the written description requirement as it is incomprehensible, and therefore cannot be described in a way as to meet the requirements of the MPEP. Furthermore, as the meets and bounds of the claim are incomprehensible, the claim limitation renders the claim indefinite under 112B.
Therefore, the rejection of claims 1 and 6 under both 35 U.S.C. § 112A and 112B, for the reasons set forth above, prevents the examiner from making a proper determination of the scope of the claimed subject matter, and thereby prevents the examiner from making a proper determination of the merits of the claimed subject matter as it relates to the prior art.
Whilst the Examiner might speculate as to what is meant by the claim language, the uncertainty provides the Examiner with no proper basis for making the comparison between that which is claimed and the prior art. Rejections under 35 U.S.C. § 102 or 103 should not be based upon speculation as to the meaning of terms employed and assumptions as to the scope of the claims. Please see MPEP section 2173.06 for further guidance.
In the interest of compact prosecution, rather than reject the entire claim without examination, the Examiner will examine the claim as if this particular claim limitation did not exist.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smetz, US 20050069379.
Regarding claim 1, Smetz discloses: A hanging fitting (Fig. 1-10, attachment member 1 and suspension link 2) to be mounted on a cargo and comprising a rotary fitting (Fig. 1-10, attachment member 1) to which a lifting means is to be coupled,
the rotary fitting comprising:
an anchor fitting (Figs. 1-3, fastening member 13 and threaded bolt 14, Figs. 4-6, fastening member 21 and threaded bolt 14, Figs. 7-9, fastening member 26 and connecting member 29) to be fixed to a mounting surface of the cargo;
a rotary coupling member (Fig. 1-10, the upper portion of attachment member 1) pivotally supported by the anchor fitting on a rotation axis perpendicular to the mounting surface of the cargo;
a first bearing which supports the rotary coupling member rotatably with respect to the anchor fitting (Fig. 1-10, bearings 16 and/or 17); and
a second bearing (Fig. 1-10, bearings 16 and/or 17) which supports the rotary coupling member rotatably with respect to the anchor fitting and is spaced apart from the first bearing in an axial direction of the rotation axis,
the rotary coupling member being provided with a rotary shaft part (Fig. 1-10, pin 12) which projects toward the anchor fitting;
the anchor fitting being provided with a fixing portion (Fig. 1-10, threaded bolt 14 and connecting member 29) to be mounted on the cargo, and a fitting coupling part (Fig. 1-10, fastening member 13, 21 and 26) integrated with the fixing portion;
the fitting coupling part (Fig. 4-9, fastening member 21 and connecting member 29)being provided with a coupling recessed part into which the rotary shaft part is inserted ;
the first bearing comprising a circumscribed recessed groove recessed from an inner wall surface of the coupling recessed part, an inscribed recessed groove recessed from an outer peripheral surface of the rotary shaft part and facing the circumscribed recessed groove, and a plurality of first bearing balls inserted into an endless passage formed by the inscribed recessed groove and the circumscribed recessed groove (see Figs. 1-9); and
the second bearing comprising a circumscribed step part provided at an opening portion of the coupling recessed part into which the rotary shaft part is inserted, and recessed from an inside diameter side to an outside diameter side, an inscribed step part provided at a root portion of the rotary shaft part and facing the circumscribed step part, and a plurality of second bearing balls inserted into an endless passage formed by the circumscribed step part and the inscribed step part (see Figs. 1-9).
Regarding claim 2, Smetz further discloses: the fixing portion (Fig. 1-10, threaded bolt 14 and connecting member 29) has an anchor seat part having a seat surface which comers into close contact with the mounting surface of the cargo (see Figs. 1-9).
Regarding claims 3 and 7, Smetz further discloses: a diameter of the second bearing ball is provided smaller than a diameter of the first bearing ball (Distinctly seen in Fig. 8 and possibly seen in Fig. 5).
Regarding claims 4, and 8-10, Smetz further discloses: a projecting part projecting from a first thrust surface orthogonal to the axial direction toward the rotary coupling member projects around the opening portion of the coupling recessed part of the fitting coupling part (see Examiner Illustration 1, which illustrates Figs. 5 and 8); and
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Examiner Illustration 1
a projecting height in the axial direction from a bottom portion of the circumscribed step part to a top part of the projecting part is provided larger than the diameter of the second bearing ball (see Examiner Illustration 1. It is clear from both that the projecting portion is significantly larger than the ball bearings).
Regarding claims 5 and 11-13, Smetz further discloses: the rotary coupling member is provided with a facing recessed part recessed from a second thrust surface facing the first thrust surface; and the projecting part enters the facing recessed part to form a labyrinth structure (see Examiner Illustration 1).
Regarding claim 6, Smetz anticipates the device of claims 1-5, 7-13. Therefore, under MPEP 2112.02, Process Claims [R-07.2015], the method of claim 6 is also anticipated, and therefore rejected. “Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986)”.
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 DANIEL JEREMY LEEDS whose telephone number is (571)272-2095. The examiner can normally be reached Mon-Thurs, 0730-1730.
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, Anna Kinsaul can be reached at 571-270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL JEREMY LEEDS/Primary Examiner, Art Unit 3731
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