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 .
Specification
The disclosure is objected to because of the following informalities:
In paragraph 0010, line 1, "includes" should read "including."
In paragraph 0032, line 5, reference number “208” should read “31.”
Appropriate correction is required.
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 10 and 14 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 10 recites the limitation "the body of the switch is removably coupled to the second extending portion." in line. There is insufficient antecedent basis for this limitation in the claim. The examiner does not understand if the applicant is positively claiming the switch. A previous reference to the switch exists only in the preamble of claim 1. The rejection might be overcome by amending the claim language to focus on the limitations of the second extending portion, for example “the second extending portion is configured to removably couple to the body of the switch,” to avoid issues of insufficient antecedent basis. For compact examination, it is assumed that the preceding suggestions will be implemented.
Claim 14 recites the limitation "the body of the switch comprises two rounded indents such that each rounded indent is configured to receive an extended button of the two extended buttons of the second arm" in lines 1-3. There is insufficient antecedent basis for this limitation in the claim. The examiner does not understand if the applicant is positively claiming the switch. A previous reference to the switch exists only in the preamble of claim 1. The rejection might be overcome by amending the claim language to focus on the limitations of the two extended buttons, for example “the two extended buttons of the second arm are configured to be received by the two rounded indents on the body of the switch,” to avoid issues of insufficient antecedent basis. For compact examination, it is assumed that the preceding suggestions will be implemented.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, and 5-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peters (US 4438930).
Regarding claim 1, Peters discloses a mechanical housing (Figure 2, element 20) configured to secure a switch to a pinball playfield, the mechanical housing comprising:
a base portion (Figure 2, element 22) having an upper face (Figure 2, element 22. An upper face is inherent to a surface with a lower face) and a lower face (Figure 2, element 25);
a first extending portion (Figure 1, element 13), wherein the first extending portion extends upward from the upper face of the base portion (Figure 2, element 22 – in the directional sense, element 13 does extend upward from element 22); wherein the first extending portion comprises an oblong slot (Figure 1, element 14) configured to receive at least a portion of a trigger of the switch; and
a second extending portion (Figure 2, element 23), wherein the second extending portion extends downward from the lower face of the base portion, and wherein the second extending portion is configured to receive at least a portion of a body of the switch (Figure 2, element 23 holds the body of the switch, Figure 2, element 17, in place).
Further regarding claim 1, Peters discloses a first extending portion (Figure 1, element 13) wherein at least a portion of the first extending portion is configured to be positioned through a circular through-hole in the pinball playfield (Figure 2, element 12). Peters does not disclose a first extending portion configured to be positioned through an oblong through-hole in the pinball playfield.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the mating through hole arrangement oblong instead of circular simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since the feature of providing a mating arrangement between the first extending portion and the playfield is taught in Peters, which would serve the purpose of securing the oblong slot to the playfield for the trigger of the switch, merely claiming that the mating through hole is round, oblong, or any other particular mating shape would not change the overall operation of the device and is, therefore, an obvious matter of engineering design choice and is not a patentable advance.
Regarding claim 2, Peters discloses the mechanical housing of claim 1, wherein the base portion further comprises an aperture extending from the lower face to the upper face such that the aperture is configured to receive a mechanical fastener (Column 2, line 50-52).
Regarding claim 4, Peters discloses all limitations of claim 1, however Peters does not explicitly disclose the radius of curvature of the first and second ends of the oblong slot. There is no evidence of record that establishes that changing the radius of curvature of the first or second ends of the oblong slot would result in a difference in function of the Peters device. Further, a person having ordinary skill in the art, being faced with modifying the pinball switch housing of Peters, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed ranges. Lastly, applicant has not disclosed that the claimed range solves any stated problem, indicating that the oblong slot “could” (Paragraph 0023) have a radius of curvature of the first or second ends within the claimed ranges, and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the pinball switch housing of Peters to have a first end of the oblong slot with a radius of curvature ranging between 0.005 inches and 0.05 inches, and a second end of the oblong slot with a radius of curvature ranging between 0.005 inches and 0.05 inches 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 a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
Regarding claim 5, Peters discloses all the limitations of claim 1. However, Peters does not disclose an oblong slot that is rectangular in shape.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the oblong slot of the first extending portion rectangular in shape instead of obround simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since the feature of the oblong slot is taught in Peters, which would serve the purpose of receiving at least a portion of a trigger of the switch, merely claiming that the oblong slot is elliptical, rectangular, or any other particular shape would not change the overall operation of the device and is, therefore, an obvious matter of engineering design choice and is not a patentable advance.
Regarding claim 6, Peters discloses all the limitations of claim 1. However, Peters does not disclose an oblong slot that is elliptical in shape.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the oblong slot of the first extending portion elliptical in shape instead of obround simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Since the feature of the oblong slot is taught in Peters, which would serve the purpose of receiving at least a portion of a trigger of the switch, merely claiming that the oblong slot is elliptical, rectangular, or any other particular shape would not change the overall operation of the device and is, therefore, an obvious matter of engineering design choice and is not a patentable advance.
Regarding claim 7, Peters discloses the mechanical housing of claim 1, wherein at least a section of the trigger of the switch extends further upward than an upper end of the oblong slot of the first extending portion (Figure 2, element 34).
Regarding claim 8, Peters discloses the mechanical housing of claim 7, wherein the oblong slot of the first extending portion centers the trigger of the switch such that a center of the trigger of the switch is aligned with a center of the oblong slot (Figure 2, element 34).
Regarding claim 9, Peters discloses the mechanical housing of claim 1, wherein the second extending portion is configured to couple with the body of the switch such that the second extending portion holds the body of the switch in place (Figure 2, element 23 holds the body of the switch, Figure 2, element 17, in place).
Regarding claim 10, Peters discloses the mechanical housing of claim 9, wherein the body of the switch is removably coupled to the second extending portion (Column 2, line 48-50).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peters (US 4438930) in view of Pennsylvania Racing Products (https://www.prpracingproducts.com/product/wide-open-throttle-micro-switch-mounting-brackets/).
Regarding claim 3, Peters discloses all the limitations of claim 1, but does not disclose a mechanical housing where the aperture is the only through-hole in the base portion.
Pennsylvania Racing Products reveals that it is known in the art of microswitch housings to provide a mount with a base portion comprising only one through hole. It would be obvious for one of ordinary skill in the art to have modified Peters to incorporate the teachings of Pennsylvania Racing Products to provide a microswitch housing with the aperture as the only through hole in the base portion to allow greater flexibility when mounting to a playing surface.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peters (US 4438930) in view of Pinball Life (https://www.pinballlife.com/black-plastic-microswitch-bracket.html).
Regarding claim 11, Peters discloses all the limitations of claim 9, but does not disclose the second extending portion further comprising a first flange and a second flange.
Pinball Life reveals that it is known in the art of microswitch housings to provide a mount with an extending portion comprising a first flange and a second flange (see figure below). It would be obvious for one of ordinary skill in the art to have modified Peters to incorporate the teachings of Pinball Life to provide a microswitch housing with the second extending portion further comprising a first flange and a second flange to allow the switch body to be held securely in place.
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Regarding claim 12, Peters in view of Pinball Life teaches the limitations of claim 11, a first arm, and an opening configured to receive the body of the switch (see figure below) but does not teach a first flange comprising a plurality of support members.
Pinball Life reveals that it is known in the art of microswitch housings to provide a plurality of support members on a flange of the extending portion of the housing. It would be obvious for one of ordinary skill in the art to have modified Peters to incorporate the teachings of Pinball Life to provide a plurality of support members on the first flange to structurally reinforce the flange and allow the switch body to be held securely in place.
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Regarding claim 13, Peters in view of Pinball Life teaches the mechanical housing of claim 12. Peters does not teach a second flange comprises a plurality of support members and a second arm, wherein the second arm comprises two extended buttons extending from the second arm towards the first arm.
Pinball Life reveals that it is known in the art of microswitch housings to provide a second flange comprising a plurality of support members and a second arm, wherein the second arm comprises two extended buttons extending from the second arm towards the first arm (see figure below). It would be obvious for one of ordinary skill in the art to have modified Peters to incorporate the teachings of Pinball Life to provide a second flange comprising a plurality of support members and a second arm, wherein the second arm comprises two extended buttons extending from the second arm towards the first arm to allow the switch body to be held securely in place.
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Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peters (US 4438930) in view of Pinball Life (https://www.pinballlife.com/williamsbally-sub-microswitch-5647-12693-32.html).
Regarding claim 14, Peters in view of Pinball Life teaches the mechanical housing of claim 13, but does not teach the body of the switch comprising two rounded indents such that each rounded indent is configured to receive an extended button of the two extended buttons of the second arm.
An additional Pinball Life product pages reveals that it is known in the art of microswitches to provide a compatible microswitch, where the body of the switch comprises two rounded indents such that each rounded indent is configured to receive an extended button of the two extended buttons of the second arm (see figure below). It would be obvious for one of ordinary skill in the art to have modified Peters to incorporate the teachings of Pinball Life to provide a microswitch, where the body of the switch comprises two rounded indents such that each rounded indent is configured to receive an extended button of the two extended buttons of the second arm to allow the switch body to be held securely in place.
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Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peters (US 4438930) in view of Gomez et al. (US 2016/0121202), hereafter referred to as Gomez.
Regarding claim 15, Peters discloses the mechanical housing of claim 1, but does not disclose a mechanical housing is made out of a transparent or translucent material.
Gomez et al. reveals that it is known in the art of pinball switch housings to make a mechanical housing for a rollover switch that is made out of a transparent or translucent material (Paragraph 0019, line 5-9). It would be obvious for one of ordinary skill in the art to have modified Peters to incorporate the teachings of Gomez et al. to provide a microswitch housing made out of a transparent or translucent material to allow light from a light source to illuminate at least a portion of the mechanical housing.
Regarding claim 16, Peters in view of Gomez et al. teaches the mechanical housing of claim 15, but does not teach a mechanical housing is non-opaque.
Gomez et al. reveals that it is known in the art of pinball switch housings to make a mechanical housing for a rollover switch that is made out of a non-opaque material (Paragraph 0019, line 5-9). It would be obvious for one of ordinary skill in the art to have modified Peters to incorporate the teachings of Gomez et al. to provide a microswitch housing made out of a non-opaque material to allow light from a light source to illuminate at least a portion of the mechanical housing.
Regarding claim 17, Peters in view of Gomez et al. teaches the mechanical housing of claim 15, but does not teach a mechanical housing where the transparent or translucent material allows light from a light source to illuminate at least a portion of the mechanical housing.
Gomez et al. reveals that it is known in the art of pinball switch housings to make a mechanical housing for a rollover switch that is made out of a non-opaque material (Paragraph 0019, line 1-5). It would be obvious for one of ordinary skill in the art to have modified Peters to incorporate the teachings of Gomez et al. to provide a microswitch housing made out of a transparent or translucent material to allow light from a light source to illuminate at least a portion of the mechanical housing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KALYN G YOUNGER whose telephone number is (571)272-0733. The examiner can normally be reached Monday-Friday 8 AM-5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.G.Y./Examiner, Art Unit 3711
/NICHOLAS J. WEISS/Supervisory Patent Examiner, Art Unit 3711