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
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.
This application includes one or more claim limitations that use the word “means”, “step”, or a generic placeholder but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “lid apparatus” in Claims 1-13, 16-18, and 20, “lid unit” in Claims 1, 4-6, 8, 9, 14, and 16, “fastening element” in Claims 11 and 12, “contact element” in Claim 13, “material collection apparatus” in Claims 14 and 15, “fixation device” in Claim 16, “snap-fit unit” in Claim 16, and “material disposal unit” in Claims 16 and 20.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 4, and therefore dependent Claims 5 and 6, 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 pre-AIA the applicant regards as the invention. Specifically, Claim 4 appears to be dependent upon an unlisted claim. Therefore, the entire scope of the claim is unclear.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4, and therefore dependent Claims 5 and 6, are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 is dependent upon an unknown claim making it impossible to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 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.
Claims 1, 13-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Isono et al. JP 2009-220215 A (hereafter Isono et al.) in view of design choice.
Regarding Claim 1, Isono et al. teaches:
1. A lid apparatus (apparatus shown in Figure 11 for collecting debris) for a material collection container, the lid apparatus comprising:
at least one lid unit (dust collection adaptor 13) configured to at least partially close a material collection opening (opening reduced by insertion of dust collection adaptor 13 shown in Figure 7) of the material collection container (dust collection bag 14);
at least one container fixation interface (dust collection adaptor 13 annular connection interface with dust collection bag shown in Figure 7) arranged on the lid unit and configured to reversibly detach and fasten the lid unit on the material collection container (see discussion below);
at least one hand-held power tool interface (dust collection adaptor 13 interface into hole 12 with portion 20 shown in Figures 7 and 8) arranged on the lid unit and configured to fasten the lid unit on a hand-held power tool (orbital sander shown in Figure 7); and
at least one further fixation interface (dust collection adaptor 13 annular connection interface with hose 15 shown in Figure 9) configured to reversibly detach and fasten a material disposal unit (dust collector 15a)(see discussion below).
Isono et al. teaches a dust collection adapter that that is designed to be connected to either a dust collection bag 14 or a hose 15 of a dust collection 15a as shown in Figures 7 and 9 for collection of debris generated by an orbital sander. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention that the disclosed connection, which appears to be an annular snap fit, is configured to both be reversibly detachable and fasten to the dust collection bag, with the motivation to allow the debris to be emptied from the dust collection bag, and reversibly detachable and fasten to the hose of a dust collector, with the motivation to allow the device to be disconnected from the hose when the orbital sander operation is complete. Furthermore, it would have been obvious that cited connection is reversibly detachable and fasten allowing the user to switch between connection to a bag or hose as desired depending on the availability.
Regarding Claim 13, Isono et al. teaches:
13. The lid apparatus according to claim 1, wherein the hand-held power tool interface (dust collection adaptor 13 interface into hole 12 with portion 20 shown in Figures 7 and 8) comprises at least one contact element (protrusion 20c), which is made of an electrically conductive material such that the at least one contact element dissipates electrostatic charge (see discussion below).
Isono et al. teaches a dust collection adapter that that is designed to be connected to either a dust collection bag 14 or a hose 15 of a dust collection 15a as shown in Figures 7 and 9 for collection of debris generated by an orbital sander. It is common knowledge in the prior art that sanding dust creates static electricity due to friction (the triboelectric effect) as particles rub against each other, the sandpaper, and dust collection hoses, causing an imbalance of electrons, which leads to shocks, dust clinging, and potential hazards, especially in dry conditions. Therefore, for safety reasons, it would have been an obvious matter of design choice to one having ordinary skill before the effective filing date of the claimed invention to make the adapter out of an electrically conductive material allowing it to dissipate the expected electrostatic charge during operation.
Regarding Claim 14, Isono et al. teaches:
14. A material collection apparatus (apparatus shown in Figure 11 for collecting debris) for a hand-held power tool (orbital sander) comprising:
a material collection container (dust collection bag 14) configured to receive material discharged by the hand-held power tool (Figure 7); and
a lid apparatus comprising:
at least one lid unit (dust collection adaptor 13) configured to at least partially close a material collection opening (opening reduced by insertion of dust collection adaptor 13 shown in Figure 7) of the material collection container;
at least one container fixation interface (dust collection adaptor 13 annular connection interface with dust collection bag shown in Figure 7) arranged on the lid unit and configured to reversibly detach and fasten the lid unit on the material collection container (see discussion below);
at least one hand-held power tool interface (dust collection adaptor 13 interface into hole 12 with portion 20 shown in Figures 7 and 8) arranged on the lid unit and configured to fasten the lid unit on a hand-held power tool (orbital sander shown in Figure 7); and
at least one further fixation interface (dust collection adaptor 13 annular connection interface with hose 15 shown in Figure 9) configured to reversibly detach and fasten a material disposal unit (dust collector 15a)(see discussion below).
Isono et al. teaches a dust collection adapter that that is designed to be connected to either a dust collection bag 14 or a hose 15 of a dust collection 15a as shown in Figures 7 and 9 for collection of debris generated by an orbital sander. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention that the disclosed connection, which appears to be an annular snap fit, is configured to both be reversibly detachable and fasten to the dust collection bag, with the motivation to allow the debris to be emptied from the dust collection bag, and reversibly detachable and fasten to the hose of a dust collector, with the motivation to allow the device to be disconnected from the hose when the orbital sander operation is complete. Furthermore, it would have been obvious that cited connection is reversibly detachable and fasten allowing the user to switch between connection to a bag or hose as desired depending on the availability.
Regarding Claim 15, Isono et al. teaches:
15. A hand-held power tool (orbital sander) comprising the material collection apparatus according to claim 14 (shown in Figures 7 and 11).
Regarding Claim 16, Isono et al. teaches:
16. The lid apparatus according to claim 1, wherein:
the at least one container fixation interface (dust collection adaptor 13 annular connection interface with dust collection bag shown in Figure 7) is configured to reversibly detach and fasten the lid unit on the material collection container without tools;
the at least one hand-held power tool interface (dust collection adaptor 13 interface into hole 12 with portion 20 shown in Figures 7 and 8) is configured to fasten the lid unit on a discharge nozzle (dust discharge air passage 11) of the hand-held power tool (orbital sander shown in Figure 7); and
the at least one further fixation device (dust collection adaptor 13 annular connection interface with hose 15 shown in Figure 9) is a snap-fit unit configured to reversibly detach the material disposal unit without tools (see discussion below).
Isono et al. teaches a dust collection adapter that that is designed to be connected to either a dust collection bag 14 or a hose 15 of a dust collection 15a as shown in Figures 7 and 9 for collection of debris generated by an orbital sander. As previously presented in Claim 16, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention that the disclosed connection, which appears to be an annular snap fit, is configured to be removable and installable without tools with the motivation to allow the user to quickly remove, for emptying, or converting the desired connection without the need to stop and grab a specific tool in the process.
Regarding Claim 18, Isono et al. teaches:
18. The lid apparatus according to claim 13, wherein the electrically conductive material is a carbon fiber-reinforced plastic (see discussion below).
Isono et al. teaches a dust collection adapter that that is designed to be connected to either a dust collection bag 14 or a hose 15 of a dust collection 15a as shown in Figures 7 and 9 for collection of debris generated by an orbital sander. It is common knowledge in the prior art that sanding dust creates static electricity due to friction (the triboelectric effect) as particles rub against each other, the sandpaper, and dust collection hoses, causing an imbalance of electrons, which leads to shocks, dust clinging, and potential hazards, especially in dry conditions. Therefore, for safety reasons, it would have been an obvious matter of design choice to one having ordinary skill before the effective filing date of the claimed invention to make the adapter out of an electrically conductive material allowing it to dissipate the expected electrostatic charge during operation. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to use carbon fiber-reinforced plastic, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Regarding Claim 19, Isono et al. teaches:
19. The hand-held power tool according to claim 15, wherein the hand-held power tool is an eccentric, oscillating, or multi-sander (orbital sander).
Regarding Claim 20, Isono et al. teaches:
20. A material disposal unit comprising:
the lid apparatus according to claim 1 (see claim 1 rejection above),
wherein the material disposal unit (dust collector 15a) is a vacuum cleaner having a vacuum cleaner hose nozzle (hose 15).
Allowable Subject Matter
Claims 2-12 and 17 are objected to as being dependent upon a rejected base claim but it would be allowable if rewritten to overcome the rejection(s) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in form PTO-892 Notice of References Cited. Specifically, the prior art references include pertinent disclosures of dust collecting adaptors.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC CARLSON whose telephone number is (571)272-9963. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN KELLER can be reached on (571) 272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC CARLSON/Primary Examiner, Art Unit 3723