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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/2/2026 has been entered.
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 22 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.
Claim 22 recites “a plurality of lifting lugs” in line 2. It is unclear if these are the same lifting lugs as in claim 1 or different ones. For examination purposes, they will be presumed to be the same lifting lugs.
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, 10, 13-16, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (CN113148778, cited in IDS, with reference to translation) in view of Fontana (U.S. Patent 6,145,780) or alternatively Qiao et al. (CN113942875).
Claim 1: Ji et al. discloses a chain-install (intended use, see below) apparatus (Fig. 1), comprising: a support structure (1, 2 – see also Fig. 2); a first hub assembly (7) coupled to the support structure, the first hub assembly including a shaft (4), a first guard coupled to the shaft (one of the side walls of the hub 7 evident in Fig. 1), and a second guard coupled to the shaft (the other of the side walls), the first guard spaced apart laterally from the second guard and defining a first pocket therebetween (Fig. 1); and a first brake assembly (301-304) operably coupled to the first hub assembly (e.g. paragraph 22).
It is noted that when reading the preamble in the context of the entire claim, the recitation “chain-install” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the apparatus of Jin could be used as a chain-install apparatus if used in conjunction with chain.
Ji et al. discloses an apparatus substantially as claimed except for an attachment arrangement coupled to the support structure and configured to form a suspension arrangement in response to being coupled to a below the hook lifting device, wherein the attachment arrangement comprises a plurality of lifting lugs coupled to a top surface of the support structure and is further configured to facilitate transitioning of the chain-install apparatus from a fixed state on a ground surface to a lifted state above the ground surface. However, Fontana discloses a similar apparatus having a plurality of lifting lugs (14’) coupled to a top side of a frame of a support structure. Alternatively, Qiao et al. discloses a similar apparatus having a plurality of lifting lugs (18) coupled to a top side of a frame of a support structure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided lifting lugs as claimed for the purpose of improving the portability of the apparatus. It is noted that in either case, a similar lug implemented appropriately on the Ji device would be “configured to form a suspension arrangement in response to being coupled to a below the hook lifting device” (i.e. it would be presumed capable of being suspended via any lifting device) and would be “configured to facilitate transitioning of the chain-install apparatus from a fixed state on a ground surface to a lifted state above the ground surface” (i.e. applying some amount of lifting force to the lugs would “facilitate” or ease its lifting to some degree).
Claim 10: The support structure includes a base (generally a lower part of the support) and a frame (the remainder of the support); the first hub assembly is coupled to the frame of the support structure (via 33 – see Fig. 2); and the attachment arrangement is configured to form a suspension arrangement in response to being coupled to a crane (if some part of the frame, acting as the “attachment arrangement”, were coupled to a crane, then it could equally serve as a “suspension arrangement”). It is noted that neither “attachment arrangement” nor “suspension arrangement” have any particular structural denotation.
Claim 13: The first brake assembly further comprises a brake input (304) configured to control a braking force of a brake of the first brake assembly, the brake input coupled to the base (Figs. 1-3; paragraph 22).
Claim 14: The base includes a first lateral side spaced apart from a second lateral side (evident in Fig. 1, i.e. towards and away from the page), a handle is coupled to the first lateral side of the base (any of the support elements of the base, e.g. 22-24, could serve as a handle), the brake input is a lever (evident in Figs. 1 and 3; also referred to as a “handle”, e.g. paragraph 29), and the lever is coupled to a top side of the base (301, on an upper side of the lower region of the support structure) and spaced apart longitudinally from the handle (304 would be spaced from frame elements 22-24, for example).
Claim 15: The first brake assembly comprises: a brake input (304); a brake (302); and a brake drum (303) configured to spin with the shaft, the brake drum operably coupled to the brake, the brake input configured to vary a braking force applied by the brake to the brake drum (paragraphs 22, 29).
Claim 16: The first brake assembly includes a brake linkage (301, 61/62 – paragraphs 22 and 28-29) operably coupling the brake input (304) to the brake, and wherein the brake input is a lever (as discussed above).
Claim 22: As modified by Fontana or Qiao, the attachment arrangement comprises a plurality of lifting lugs (as cited above) coupled to a top side of a frame of the support structure.
Claims 2-3 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. and Fontana/ Qiao et al. as applied to claim 1 above, and further in view of Antrag auf Nichtnennung (DE102010006917, cited in IDS, hereafter Antrag) or alternatively Mio et al. (U.S. Patent 6,276,631).
Claim 2: Ji et al. and Fontana/Qiao et al. teach an apparatus substantially as claimed except for a chain that is winded around the first hub assembly within the first pocket, the chain extending from a first end to a second end, the first end coupled to the shaft. The apparatus is instead used for a cable. However, Antrag and Mio each teach that similar apparatus may be used to wind chain. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the Ji et al. apparatus for a chain rather than a cable for the purpose of similarly storing and paying-off a length chain with braking functionality if a chain were desired for a given application. In the case of Antrag, the chain may also serve to protect the cables. The examiner further notes that while not explicitly shown in Ji et al., a strand of material wound around a drum is typically attached to the shaft portion in some manner to allow the drum to wind in material and/or prevent it from entirely releasing, and so it would have been obvious for the first end to be coupled to the shaft. The term “coupled” is also broad, and merely winding the first end one or more times about the shaft may constitute coupling it thereto.
Claim 3: With further reference to Antrag, a first guard and a second guard (5) are spaced apart laterally by a first lateral distance (evident in Fig. 1), the chain includes a second lateral distance from a first lateral side of the chain to a second lateral side of the chain (the width of the chain as evident). The first lateral distance appears to be between 1.01 times and 2 times the second lateral distance (a single width of the chain generally fits with little clearance between the guards as shown). Antrag further discloses that the width between guards may be adjusted according to the width of the chain and to withstand different levels of stress (e.g. paragraphs 7, 10, and 12), and is thus a result effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adjusted the relative widths as claimed as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Please also note that in the instant application, paragraph 72, Applicant has not disclosed nay criticality for the claimed limitation.
Claim 12: In response to winding the chain in the first pocket of the first hub assembly, an outer surface of the chain would be expected to be spaced apart vertically from a radially outer edge of the first guard (again, this would depend, for example, on the chain, its thickness, and the extent to which it is wound, but the guards of Ji are substantially taller than the cable which is wound thereon, and a similar configuration is known from Antrag and/or Mio).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ji et al., Fontana/Qiao et al., and Antrag/Mio et al. as applied to claim 2 above, and further in view of Yui et al. (U.S. PGPub 2021/0371230).
The previously applied prior art teach an apparatus substantially as claimed except for the second end of the chain is coupled to the first guard. However, Yui et al. teaches that a second end (100b) of a strand of material wound about a hub may be coupled to a first guard (via 94 – paragraph 40). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have coupled the second end of the chain to the first guard for the purpose of storage or shipping, for example (see paragraph 44).
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al., Fontana/Qiao et al., and Antrag/Mio et al. as applied to claim 2 above, and further in view of Johnson (U.S. Patent 2,177,128).
Claim 5: Both Antrag and Mio further teach that the chain comprises a plurality of chain link segments, each chain link segment coupled to an adjacent chain link segment in the plurality of chain link segments (Antrag, paragraph 2; eident in Fig. 4 of Mio). The examiner also notes that this would be understood alone from “chain” in the claimed context. The chain does not necessarily comprise a set of attachment chain link segments, each attachment chain link segment in the set of attachment chain link segments including an attachment protrusion extending upward from a body of the attachment chain link segment. However, Johnson teaches a chain (e.g. similar to an energy chain as in Antrag) comprising a set of attachment chain link segments (any of 10), each attachment chain link segment in the set of attachment chain link segments including an attachment protrusion (11 or 12) extending upward from a body of the attachment chain link segment (evident in Fig. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the chain with attachment chain link segments as claimed in order to have supported a hose therein, for example).
Claim 7: Each attachment chain link segment (which may be any of the links 10) is separated from an adjacent attachment chain link segment by a set of chain link segments in the plurality of chain link segments (any arbitrary link 10 is separated from another one by several more of the chain links as shown).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al., Fontana/Qiao et al., Antrag/Mio et al., and Johnson as applied to claim 5 above, and further in view of Oishi et al. (U.S. Patent 7,325,391).
Claim 8: The previously applied prior art teach an apparatus substantially as claimed except for wherein the plurality of chain link segments includes a set of inner chain link segments and a set of outer chain link segments, and a first inner chain link segment in the set of inner chain link segments configured to couple to a first outer chain link segment in the set of outer chain link segments at a first longitudinal end and a second outer chain link segment in the set of outer chain link segments at a second longitudinal end. However, Oishi teaches a chain (e.g. similar to a basic chain as in Mio) wherein the plurality of chain link segments includes a set of inner chain link segments (38) and a set of outer chain link segments (37), and a first inner chain link segment in the set of inner chain link segments configured to couple to a first outer chain link segment in the set of outer chain link segments at a first longitudinal end and a second outer chain link segment in the set of outer chain link segments at a second longitudinal end (e.g. Fig. 3; column 6, line 60 - column 7, line 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have structured the chain as taught by Oishi since it is considered conventional (Id.).
Claim 9: Ji et al., Antrag or Mio, and Johnson teach an apparatus substantially as claimed except for wherein each chain link segment includes one of a hollow bearing pin chain, a solid bearing pin chain, and a deep link chain. However, Oishi further teaches that each chain link segment includes one of a hollow bearing pin chain, a solid bearing pin chain, and a deep link chain (column 7, lines 7-14). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have structured the chain as taught by Oishi since it is considered well-known, and the structures of the pins can be varied as needed or desired (Id.).
Claims 17-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. and Fontana/Qiao et al. as applied to claim 10 above, and further in view of Shin (KR101937952, cited in IDS, with reference to translation).
Claim 17: Ji et al. and Fontana/Qiao et al. teach an apparatus substantially as claimed except for a second hub assembly coupled to the frame of the support structure, the second hub assembly including a second shaft, a third guard coupled to the second shaft, and a fourth guard coupled to the shaft, the fourth guard spaced apart laterally from the third guard and defining a second pocket therebetween. However, Shin teaches a similar apparatus having multiple hub assemblies (21 - Fig. 3) coupled to a frame of a support structure (12), a second hub assembly (as well as additional ones each) including a second shaft (15), a third guard coupled to the second shaft, and a fourth guard coupled to the shaft (25 on either side), the fourth guard spaced apart laterally from the third guard and defining a second pocket therebetween (evident in Figs. 1 and 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a second hub assembly in order to have handled multipede types of wound articles (paragraph 24).
Claim 18: Referring to Shin, the first hub assembly is configured to rotate independently of the second hub assembly (evident in Fig. 3, e.g. each has its own shaft and brake system).
Claim 21: Referring to Shin, a second brake assembly is operably coupled to the second hub assembly (each hub assembly is associated with a respective brake assembly (30, 40, 42, 50, 51).
Response to Arguments
Applicant's arguments filed 1/2/2026 have been fully considered but they are not persuasive.
As noted in the previous Office Action, the Ji Apparatus does not include the ground, but is simply used in a manner in which it can be anchored thereto. If one were to detach the apparatus from the ground and suspend it from a crane, it would meet the claimed limitation. Even if this is not the intended use of Ji, it is nevertheless capable of use in this way. One might also lift the Ji apparatus off the ground for the purpose of moving or relocating it between uses, for example, and not just while installing chain, and so one may have been motivated to have provided some form of suspension arrangement.
With regard to claim 22 and the similar amendments provided in claim 1, the examiner maintains that Fontana and/or Qiao teach the provision of some form of suspension arrangement to a similar spool. The rings 18 of Qiao are clearly capable of being connected to an arbitrary (and not positively recited) lifting device. Applicant asserts without evidence that “the wrist rings would not be capable of physically performing the same functionality as the attachment arrangement as recited in amended claim 1”. However, the attachment arrangement is merely to “form a suspension arrangement” with a lifting device to “facilitate [i.e. ease] transitioning of the chain-install apparatus from a fixed state on a ground surface to a lifted state above the ground surface”. Certainly providing similar rings on Ji and providing some amount of lifting force thereto would “facilitate” lifting of the apparatus. Whether or not they are “reinforced to bear the weight of the apparatus in a suspended state” depend on the strength of the rigs and the weight of the apparatus, neither of which are known. One of ordinary skill, however, is not an automaton (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007)), and would be capable of engineering a sufficiently strong ring to provide the needed capacity for the application at hand. A larger load would obviously require scaling up of the lug appropriately, where the basic concept is otherwise the same.
The above discussion would similarly apply to Fontana, where even though Fontana is arguably applied to a smaller-scale apparatus, the basic concept of providing lugs for lifting would be easily applicable in a scaled-up form. With regard to analogousness, the examiner notes that both devices are classified under several similar subgroups within B65H. Both devices are drawn to spools for storing wound filamentary material, be it cable or chain. Both share similar structure. One could easily see a suspension arrangement as in Fontana and apply it to Ji et al. for similar purposes of transporting. Control and stability is not a claimed feature but as noted for capacity above, would be an obvious factor in applying the general concept on a larger scale.
In short, the concept of providing some form of lug to a piece of heavy equipment to allow lifting thereof is common to many apparatus across multiple fields of endeavor, and hardly represents an innovative leap for one of ordinary skill. Big heavy things exist, there is need to transport them, cranes and other lifting equipment also exist for that purpose, and lifting lugs are a common means for lifting heavy things with lifting equipment.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew P Travers/ Primary Examiner, Art Unit 3726
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