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 .
DETAILED ACTION
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 7/20/2023 and 8/4/2023 was/were considered by the examiner.
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.
Claim 29 recites “connecting means” but the specification does not recite any specific structure performing the function of connecting.
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 20-30 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 20 is unclear in that it lacks proper antecedent basis for “the biassing member”.
Claims 21-30 are unclear for their dependency from claim 20.
Claim 29’s limitation “connecting means” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Applicant merely states “any suitable means”. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim(s) 18-26, 28, and 31-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cline US 2642689.
Regarding claim 18, Cline discloses a device for removably connecting a leash (13) to a board (11 or 12) comprising:
a first leash connecting member (a first male member) (27 and 19) attachable to the leash and engageable with a second board securing member (a second female member) (14) securable to the board,
the first male member being configured to have two positions,
a first locked position, wherein the first male member is locked to the second female member (Figs. 3 and 4), and
a second unlocking position, wherein the first male member is removable from the second female member (Fig. 5),
wherein the first male member is configured to be able to change between the first and second positions by application of hand pressure (Fig. 3).
Regarding claim 19, Cline further discloses that the hand pressure is exerted against that of a biassing force (of spring 26) configured within the first male member to bias the first male member towards the locking position. Note that there is no additional structure to the apparatus in this claim. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Regarding claim 20, Cline further discloses that the first male member has a locking member (27 and 19) configured to secure the first male member to the second female member (14) to reach the first locked position (Figs. 3 and 4) and, on application of unlocking force, to the locking member, applied by hand pressure overcoming the locking force of the biassing member (26), configured to permit the first male member to reach the second unlocking position (Fig. 5).
Regarding claim 21, Cline further discloses that ball bearings (Fig. 4, 21) are present in positions within the device, and where each of the first male member, the second female member and the locking member are configured, along with the positioning of each ball, to permit each ball to be uniformly subject to the pressure exerted in use of the device and to be movable under a planned program between a locked position (Figs. 3 and 4) to lock the first male member to the second female member and to an unlocking position (Fig. 5) where the first male member can be disengaged from the second female member.
Regarding claim 22, Cline further discloses that the locking member comprises two parts (27 and 19), an inner part (27) and an outer part (19) both parts being configured to allow the inner part to be slidable within the outer part and locked against rotational movement (due to 31) within the outer part, both parts being configured to receive the ball bearings in an arrangement to permit the inner part to slidably move within the outer part under the locking force applied by the biassing member to the locked position (Figs. 3 and 4) and under hand pressure applied to the inner part against the force applied by the biassing member to the unlocking position, the two parts and the positioning of each ball within the two parts, being configured to allow each part and each ball to move for each ball to be able to follow its planned program, such that in the unlocking position (Fig. 5) the first male member can slide within the second female member to be removable from the second female member.
Regarding claim 23, Cline further discloses that each ball (21) is retained within the first male member (19) when disengaged (Fig. 5) from the second female member (14).
Regarding claim 24, Cline further discloses having 3 or 4 ball bearings (Fig. 4).
Regarding claim 25, Cline further discloses having 3 ball bearings (Fig. 4).
Regarding claim 26, Cline further discloses that the pressure to move from the locked position (Figs. 3 and 4) to the unlocking position (Fig. 5) is applied by hand in a direction (longitudinally) that is maintained to hold the first male member in the unlocking position, and which prevents movement to disengage the first male member (27 and 19) from the second female member (14) in a direction other than that opposite (longitudinally) to that maintained by the unlocking movement.
Regarding claim 28, Cline further discloses that the board (11 or 12) having secured within its surface the second female member (Figs. 1-3).
Regarding claim 31, Cline discloses a device for removably connecting a leash (13) to a board (11 or 12) comprising:
a first leash connecting member (a first male member) (27 and 19) attachable to the leash and engageable with a second board securing member (a second female member) (14) securable to the board,
the first male member being configured to have two positions,
a first locked position, wherein the first male member is locked to the second female member (Figs. 3 and 4), and
a second unlocking position, wherein the first male member is removable from the second female member (Fig. 5), and
wherein the first male member is configured to have ball bearings (21) positioned such that the ball bearings can move between two positions (compare Figs. 4 and 5), a first position (Fig. 4) where the first male member is locked to the second female member and a second position (Fig. 5) where the first male member can be removed from the second female member and wherein when removed from the second female member the first male member retains each ball bearing (Fig. 5).
Regarding claim 32, see claim 19.
Regarding claim 33, Cline discloses a device for removably connecting two pieces of an apparatus together comprising
two members, a first male member (27 and 19) and a second female member (14), the first male member (27 and 19) securable to one piece of apparatus (14) and the second female member (14) being securable to the second piece of apparatus (27 and 19),
the first male member being configured to be in two positions in relation to the second female member, a first locked position (Fig. 4) in which the first male member is locked to the second female member and therefore the two pieces of apparatus are connected and a second unlocking position (Fig. 5) in which the first male member can be separated from the second female member to disconnect the two pieces of apparatus,
the first male member having two parts, a first outer part (19) and a second inner part (20) both configured to allow the inner part to be slidable within the outer part and locked against rotational movement (via 31) of the inner part within the outer part,
both parts being configured to receive ball bearings (21) in an arrangement to permit the inner part to slidably move within the outer part under a locking force applied by a biassing member (26) toward the locked position and under hand pressure applied to the inner part against the force applied by the biassing member to the unlocking position (Fig. 3 and 5),
the two parts and the positioning of each ball within the two parts, being configured to allow each part and each ball to move for each ball is subject to the same pressure exerted in use of the device and to be able to follow a predetermined program to move between a locked position and an unlocking position (Figs. 4 and 5) and to allow hand pressure to be applied to the inner part to move to a position where the first male member is in the unlocking position (Figs. 4 and 5).
Regarding claim 34, Cline further discloses that the hand pressure applied to the inner part to move to move the inner part to the unlocking position is in one direction (longitudinally) and while hand pressure is maintained on the inner part, a further force can be applied, to the first male member, in a reverse direction (longitudinally) to that applied by the hand force to separate the first male member from the second female member to thereby disconnect the two pieces of apparatus.
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, 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) 27, 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Cline US 2642689.
Regarding claim 27, Cline does not teach that the board is a surfboard. However, the claim is directed to the apparatus of the device, not what the intended use of the device in a particular board. During examination, statements reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. Since the apparatus claim is directed to the structural details of the device and the type of board has no affect on the device, it is determined that specifying the type of board is not given patentable weight.
Regarding claim 29, Cline further discloses a leash (13) for the board which comprises a length of flexible cord having at one end (at 11) a connecting means (32) to removably connect that end and having at the other end (at 12) the first male member (Fig. 1). However, it does not teach that the lease is connected to the leg of a user. This is an intended use. See claim 27 above.
Regarding claim 30, Cline further discloses that the leash includes the cord (13) and first male member (27 and 19). However, it does not teach that they are supplied in separate packages. This is an intended use.
Conclusion
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BRIAN O. PETERS
Primary Examiner
Art Unit 3745
/BRIAN O PETERS/Primary Examiner, Art Unit 3745