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 .
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, 5 and 19-20 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.
Claims 1 and 19 recite “a button magnetically attached to a portion of the housing” and “a button magnetically attached to a housing”, respectively. However, the original specification filed 12/20/2023 states in paragraph 34 “The button 170 may attach to any portion of a wheelchair 10 via at least one fastener 172 such as, but not limited to, a magnet, an adhesive fastener, a sleeve, a hook and loop fastener, etc.” (emphasis added) and therefore does not disclose the button being attached to the housing. As such, these limitations in claims 1 and 19 are considered new matter.
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 19 and 20 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 19 recites “a pair of half circular lids each attached to the body via a hinge” in line 5-6. However, line 5 states “the umbrella comprising a body”. As such, the claim reads as if the pair of half circular lids are attached to the umbrella. Figure 2 and paragraph 30 of the specification appear to teach the pair of half circular lids as being attached to the housing. For examination purposes, they will be treated as such. Clarification is required.
Claim 19 recites the limitation "the fastener" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites “securing the button to the wheelchair via a second fastener” in line 8. However, line 4 recites “button magnetically attached to a housing”. As such, the limitation of line 8 contradicts the limitation in line 4. As such, the claim reads as if the pair of half circular lids are attached to the umbrella. For examination purposes, the button is being treated as being attached to the wheelchair as disclosed in paragraph 34 of the original specification (see 112a rejection above). Additionally, it is unclear what the second fastener is and if it differs from the magnet used to “magnetically attach the button” (line 4). For examination purposes, the “second fastener” is being treated as a magnet that performs the magnetic attachment recited in claim 4. Clarification is required.
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.
Claim(s) 1, 8, 9, 11, 13-17 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fitzgerald et al. (US 9,526,306 B2) in view of Abbey et al. (US 10,357,120 B2).
Claim 1: Fitzgerald et al. discloses an automatic wheelchair umbrella device comprising :a housing (103) comprising a first fastener (104a or 104b); an umbrella (12) stored within the housing (FIGS. 1 and 2), the umbrella comprising an opening and closing mechanism (26); and a button (50) magnetically attached to a portion of the device.
Fitzgerald et al. teaches the button as attached to either the housing (as seen in FIG. 5) or as being attached to the wheelchair in a position closer to the user’s hand (as seen in FIG. 8; col. 6, lines 40-43), but is silent on the attachment method used to attach the button/controller to the wheelchair. It would have been obvious to use a magnet to attach the button to the housing or wheelchair frame since magnets are old and well-known connection means that work well with metallic objects. If a magnet was used as the attachment means between the button and the wheelchair, then the user would easily attach the button to the wheelchair without having to adjust or fasten anything (such as tying a strap or manipulating a buckle) due to the strong magnetic forces.
Fitzgerald et al. lacks a lid. Abbey et al. teaches a cylindrical/circular housing (12) comprising a lid (14), wherein the lid comprises a pair of half circular lids (16, 18) each attached to the housing via a hinge (20, 22). It would have been obvious to one of ordinary skill in the art to modify Fitzgerald et al. to include a lid comprise a pair of half circular lids, such as those taught by Abbey et al., so that the housing could be closed when the umbrella is not in use to reduce the amount of dirt, dust and debris that enters the housing, which can interfere with the operation of the mechanical components located on the interior of the housing that control the umbrella. Additionally, it noted the lid design comprising a pair of half lids would mean the umbrella could push the lid open itself while opening, thus saving an action having to be performed by for the user.
Claim 8: Fitzgerald et al. discloses an automatic wheelchair umbrella device comprising: a housing (103) comprising a first fastener (104a or 104b); an umbrella (12) stored within the housing (FIGS. 1 and 2), wherein a shaft (201) of the umbrella is attached to a track (202) within the housing and the umbrella comprises an opening and closing mechanism (204/18); a button (50); a motor (col. 5, lines 9-15); and a battery (28); and wherein the button is in wireless communication with the motor (col. 5, lines 58-62; col. 6, lines 46-48).
Fitzgerald et al. lacks a lid. Abbey et al. teaches a cylindrical/circular housing (12) comprising a lid (14), wherein the lid comprises a pair of half circular lids (16, 18) each attached to the housing via a hinge (20, 22). It would have been obvious to one of ordinary skill in the art to modify Fitzgerald et al. to include a lid comprise a pair of half circular lids, such as those taught by Abbey et al., so that the housing could be closed when the umbrella is not in use to reduce the amount of dirt, dust and debris that enters the housing, which can interfere with the operation of the mechanical components located on the interior of the housing that control the umbrella. Additionally, it noted the lid design comprising a pair of half lids would mean the umbrella could push the lid open itself while opening, thus saving an action having to be performed by for the user.
Claim 9: Fitzgerald et al. teaches the track as being a motorized track (202 is controlled by a motor, as discussed col. 5, lines 9-29).
Claim 11: Fitzgerald et al. teaches the opening and closing mechanism as being a motorized opening and closing mechanism (movement of 204 is controlled by 201, which is controlled by 202, which is controlled by a motor).
Claim 13: Fitzgerald et al. teaches the first fastener as comprising a hook and loop fastener, a strap fastener, an elastic fastener, a magnetic fastener, a mounting bracket fastener (19, 20), a suction cup fastener, a bolt fastener, a screw fastener, a tongue fastener, or a groove fastener.
Claim 14: Fitzgerald et al. teaches the umbrella further comprises a body comprising a support (203).
Claim 16: Fitzgerald et al. teaches the battery as comprising a charging port (that receives power cord 30).
Claim 17: Fitzgerald et al. teaches the button as controlling movement of the track (col. 5, lines 9-15; col. 6, lines 46-48).
Claim 19: Fitzgerald et al. discloses a method of using an automatic wheelchair umbrella device, the method comprising: providing an automatic wheelchair umbrella device comprising a button (50), a housing (103), and an umbrella (12) stored within the housing (FIGS. 1 and 2), the umbrella comprising a body (comprised of 106, 107), and an opening and closing mechanism (26); securing the housing to a wheelchair via the fastener (as seen in FIG. 8; col. 2, lines 33-42); securing the button to the wheelchair (as seen in FIG. 8); pressing the button to extend the umbrella from the housing (col. 5, lines 58-60); and pressing the button to retract the umbrella into the housing (col. 5, lines 58-60); and wherein the button is in wireless communication with the motor (col. 5, lines 60-62; col. 6, lines 46-48).
Fitzgerald et al. teaches the button as being located closer to the user’s hand on the wheelchair (as seen in FIG. 8; col. 6, lines 40-43), but is silent on the attachment method used to attach the button/controller to the wheelchair. It would have been obvious to use a magnet to attach the button to a wheelchair frame since magnets are old and well-known connection means that work well with metallic objects. If a magnet was used as the attachment means between the button and the wheelchair, then the user would easily attach the button to the wheelchair without having to adjust or fasten anything (such as tying a strap or manipulating a buckle) due to the strong magnetic forces.
Fitzgerald et al. lacks a lid. Abbey et al. teaches a cylindrical/circular housing (12) comprising a lid (14), wherein the lid comprises a pair of half circular lids (16, 18) each attached to the housing via a hinge (20, 22). It would have been obvious to one of ordinary skill in the art to modify Fitzgerald et al. to include a lid comprise a pair of half circular lids, such as those taught by Abbey et al., so that the housing could be closed when the umbrella is not in use to reduce the amount of dirt, dust and debris that enters the housing, which can interfere with the operation of the mechanical components located on the interior of the housing that control the umbrella. Additionally, it noted the lid design comprising a pair of half lids would mean the umbrella could push the lid open itself while opening, thus saving an action having to be performed by for the user.
Claim 20: Fitzgerald et al. teaches the automatic wheelchair umbrella device as further comprising a motorized track (202, controlled by a motor, as discussed col. 5, lines 9-29).
Claim(s) 5 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fitzgerald et al. (US 9,526,306 B2) in view of Abbey et al. (US 10,357,120 B2) as applied to claim 8 above, and further in view of Conde (US 7,069,939 B1).
Claim 5: Fitzgerald et al. teaches the use of fasteners and states that the fasteners (col. 3, lines 1-4). Conde teaches an automatic umbrella device comprising a housing (12) comprising a first fastener, wherein the first fastener is a strap (54). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination to include a strap as the first fasteners, as suggested by Conde, as an equivalent alternative that would allow the housing to attach to a large range of objects.
Claim 15: The combination of Fitzgerald et al. and Abbey et al. is discussed above but lacks the batteries being removable (and instead teaches rechargeable batteries). Conde teaches an automatic umbrella device comprising a battery (48) that is removable (col. 3, lines 12-16). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination to include removable batteries, as suggested by Conde, so that the wheelchair would not have to be connected to the wheelchair power supply, thus saving a setup step by the user.
Allowable Subject Matter
Claims 2 and 3 would be allowable if amended to overcome the rejection(s) under 35 U.S.C. 112(a), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 8 and 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DANIELLE JACKSON whose telephone number is (571)272-2268. The examiner can normally be reached M-F: 11AM-7PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Dunn can be reached at (571)272-6670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DNJ/Examiner, Art Unit 3636
/DAVID R DUNN/Supervisory Patent Examiner, Art Unit 3636
