DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/12/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 9, 11, 12, 17-28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the device as claimed including “wherein the first configuration is different than the second configuration” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As disclosed 1) “the intermediate portion 16c may be formed having a greater or lesser number of such corrugations having any desired shape or combination of shape” and 2) “the intermediate portion 17c may be formed having a greater or lesser number of such corrugations having any desired shape or combination of shapes.” ¶ ¶ 0019, 0022. There is no disclosure that “the first configuration is different than the second configuration.
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure. When an explicit limitation in a claim "is not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation." Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998.” MPEP section 2163 (II)(3) (b).
The description as a whole implies that the opposing intermediate portions are the same, as shown in the figures. In other words, the number of corrugations might be more or less than nine on both opposing portions, but the opposing portions would still mirror each other.
“For example, in Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007), the examiner made a prima facie case by clearly and specifically explaining why applicant’s specification did not support the particular claimed combination of elements, even though applicant’s specification listed each and every element in the claimed combination. The court found the "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination . . . ." MPEP section 2163(II)(A).
The present disclosure does not include the invention as claimed including that “the first configuration is different than the second configuration.
Regarding claim 17, the device as claimed including “the second plurality of corrugations includes a different number of corrugations than the first plurality of corrugations” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As disclosed 1) “the intermediate portion 16c may be formed having a greater or lesser number of such corrugations having any desired shape or combination of shape” and 2) “the intermediate portion 17c may be formed having a greater or lesser number of such corrugations having any desired shape or combination of shapes.” ¶ ¶ 0019, 0022. There is no disclosure that “the second plurality of corrugations includes a different number of corrugations than the first plurality of corrugations.”
The description as a whole implies that the opposing intermediate portions are the same, because that is clearly shown in the figures. The number of corrugations might be more or less than nine on both opposing portions, but the opposing portions would still mirror each other.
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure. When an explicit limitation in a claim "is not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation." Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998.” MPEP section 2163 (II)(3) (b).
“For example, in Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007), the examiner made a prima facie case by clearly and specifically explaining why applicant’s specification did not support the particular claimed combination of elements, even though applicant’s specification listed each and every element in the claimed combination. The court found the "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination . . . ." MPEP section 2163(II)(A).
The present disclosure does not include the invention as claimed including that “the second plurality of corrugations includes a different number of corrugations than the first plurality of corrugations.”
Likewise, the new limitations of claims 18, 21, 22, 23, 24, 26, and 27 were not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 12 and 28, the invention as claimed including that “the plurality of corrugations is arranged such that the first contact points and the second contact points alternate throughout . . . a radial extent of the spring portion” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The plain meaning of “radial extent” is a straight line going from the middle of a circle or cylinder out to its perimeter.
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As disclosed, in applicant’s invention, every radial extent or radial ray/line extending from the central longitudinal axis can pass through at most one single contact point. No radial extent passes through more than one contact point. The first and second contact points are never disclosed as alternating along a radial extent. See e.g. radial extents labeled RE1 and RE2 below in applicant’s figures 8 and 9.
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Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROSS N GUSHI whose telephone number is (571)272-2005. The examiner can normally be reached Monday – Friday 8:00AM – 5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Koehler, can be reached at (571)272-3560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROSS N GUSHI/ Primary Examiner, Art Unit 2834
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