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 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.
Claim 16 is 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. In claim 16, there is no antecedent basis for “the axial direction”.
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 1-4, 9 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wright (US 5,205,614). In the embodiment shown in Fig. 6, Wright disclose an adjustable protective cap arrangement comprising: a main part (32) capable of surrounding a ball joint nut (17) having a central through hole to receive a portion of a stud (18); a cap part (26) connected to a smaller diameter end (46) of the main part wherein the cap part is threaded to the main part (at 16) so the axial position of the cap part relative to the main part would be capable of adjustment depending on how far the cap part is threaded onto the main part; and an annular plug-in part (54). The main part includes the thread to be an external thread and the cap part includes the thread to be on an internal surface; the hexagonal shape the cap part is read as a knurl; the plug-in part is a set screw which is receivable in the through hole and is surrounded by the main part with an end read as an internal surfaces with is configured to mate with an external surface of the nut provide an interfacing surface to provide a rotational lock when mated (column 3, lines 59-61). The protective cap is on a vehicle.
As pointed to below, an end of the annular plug-in-part is receivable in the through hole where its’ end face is configured to mate with the lock nut and the hole in the main part where the plug-in-part is screwed in has it’s perimeter that surrounds the plug-in-part. The plug-in-part is installed along the axis of the plug-in-part into the hole of the main part.
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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.
Claims 1-4, 8-9 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Wright (US 5,205,614) in view of Bias (US 5,082,409). In the embodiment shown in Fig. 6, Wright disclose an adjustable protective cap arrangement comprising: a main part (32) capable of surrounding a ball joint nut (17) having a central through hole to receive a portion of a stud (18); a cap part (26) connected to a smaller diameter end (46) of the main part wherein the cap part is threaded to the main part (at 16) so the axial position of the cap part relative to the main part would be capable of adjustment depending on how far the cap part is threaded onto the main part; and an annular plug-in part (54). The main part includes the thread to be an external thread and the cap part includes the thread to be on an internal surface; the hexagonal shape the cap part is read as a knurl; the plug-in part is a set screw configured to mate with an external surface of the nut provide an interfacing surface to provide a rotational lock when mated (column 3, lines 59-61). The protective cap is on a vehicle. Wright does not disclose the plug-in part made of a resilient material. Bias discloses a protective cap including a main part (20) with a plug-in part configured to mate with an external surface of a nut. The plug-in part is a resilient spring clip (column 4, line 18) which is receivable in a hole (23) of the main part where its’ configured to mate with the lock nut (at 35), and the hole in the main part (at 50) which surrounds the plug-in part, and the plug-in-part is installed along the axis of the plug-in part into the hole of the main part. Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to replace the plug-in part disclosed in Wright with the plug-in part disclosed in Bias because they both are from the same field of endeavor and for the same purpose, namely for attaching a cap to a nut, where replacing one for the other would yield the same predictable parts.
Claim 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wright or Wright in view of Bias as applied to claim 1 above, and further in view of Nason (US 5,028,093). Wright discloses the main part to have the cap part connected at a first end (46), a second end (52) and, an intermediate part between the first and second ends but, does not disclose the second end with a larger diameter flange. Nason discloses a protective cap (10) with a larger diameter flange (24) at a second end. Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to provide the protective cap of Wright with a flange at a second end as disclosed in Nason to provide a seal against the wheel as discussed in Nason (column 2, lines 45-47).
Allowable Subject Matter
Claims 10-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Remarks
The 112(b) rejection has been overcome with the amendment.
The 102 rejection over Wright has been maintained since Wright teaches all the elements of the amended claims as pointed to above. While the elements are not the same as those disclosed, the claims are only interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The 103 rejection has been maintained unchanged.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Woolstencroft (US 7,384,225), Rosenbaum (US 4,890,967) and Rebbeck (US 10,040,568) are all cited to teach examples of plug-in-parts which are co-axial with a nut and that may be suitable for replacing the set screw of Wright.
THIS ACTION IS MADE FINAL. 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 FLEMMING SAETHER whose telephone number is (571)272-7071. The examiner can normally be reached M-F 8:30 - 7:00 eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Mills can be reached at 571-272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FLEMMING SAETHER/Primary Examiner, Art Unit 3675
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