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.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claims 10 recites “wherein the track is a spring-loaded track”. It is not understood how the track itself can be spring-loaded. Why would the track need to be spring-loaded? Does the track move from or within the housing? The specification merely states “In one embodiment, the mechanism 140 and the track 120 are spring-loaded. In this embodiment, pressing the button 170 releases the track 120 such that the umbrella 130 travels upwards and extends from the housing 110 via spring action” (paragraph 35). What happens when “the track is released”? What mechanisms are used to release it? Does the shaft of the umbrella which was previously recited as being “attached to the track within the housing” (claim 8, lines 3-4) move relative to the track – and if so, how and why? The drawings provide no further enlightenment about the track or how it operates as it was only depicted in FIG. 3 as an outlined objected. As such, one of ordinary skill would not know how to make or use the spring-loaded track as claimed.
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 1-20 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 1-20 recite “comprised of” multiple times throughout the claims when referring to one element “comprised of” another element. The use of this terminology make it unclear if the elements are only strictly formed of the listed element(s) and nothing else. For example, in claim 1, line 2 recites “a housing comprised of a first fastener”. Due to the wording, it is unclear if the “housing” is only comprised of a fastener, and if not, what the fastener is even attached to that is also part of the housing. Similarly, line 3 states “the umbrella is comprised of an opening closing mechanism”, which make it unclear if there is anything to the umbrella besides the opening and closing mechanism. It is noted this issue is persistent throughout all the claims and should be dealt with accordingly in each instance. Also in claim, the last line recites that a button is “comprised of a second fastener” which reads as if the button was only made of a fastener; as such it is not clear how a “fastener” can be a “button”, or how “button” can function if it is a “fastener”. The specification notes that the button “can be secured… via at least one fastener”, not that the button is a fastener.
Claim 18 recites the limitation "the body" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1, 4, 6 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McComb-James (US 9,649,235 B1).
Claims 1 and 4: McComb-James discloses an automatic wheelchair umbrella device comprising: a housing (101) comprised of a first fastener (103); an umbrella (102, 104) stored within the housing (FIG. 3), the umbrella comprised of an opening and closing mechanism (104); and a button (115) comprised of a second fastener (seen in the figures a sleeve element attaches the button 115 to tubing portion of the wheelchair).
Claims 6 and 7: McComb-James discloses a lid (123) attached to the housing via a hinge (col. 2, lines 60-62).
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vincenzi (EP 0596180 A1).
Claims 1 and 5: Vincenzi discloses an automatic wheelchair umbrella device comprising: a housing (1) comprised of a first fastener (strap seen in FIG. 3); an umbrella (15, 16) stored within the housing (FIG. 1), the umbrella comprised of an opening and closing mechanism (104); and a button (22) comprised of a second fastener (seen in FIG. 3, element 22 secures element 9 in place in the contracted configuration, and therefore can be considered a fastener).
Claim 2: Vincenzi discloses the umbrella as being comprised of a spring-loaded, telescopic shaft (comprised of portions 10 and 12, which telescope relative to each other as evidenced by FIGS. 3-5, where 10 slides through 12 to extend further therefrom in the upward direction, and is spring-loaded via spring 20).
Claim 3: Vincenzi discloses the opening and closing mechanism is comprised of a spring-loaded opening and closing mechanism 13/14 which is spring-loaded via spring 19).
Claim 4: Vincenzi discloses the second fastener as being comprised of a sleeve (as seen in FIG. 3, portion 9 is sleeve by 22).
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) 8, 9, 11-14 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 20090090703 A) in view of McComb-James (US 9,649,235 B1).
Claim 8: Lee et al. discloses an automatic wheelchair umbrella device comprising: a housing (140); an umbrella (120, 130) stored within the housing (as evidenced by FIG. 5a), wherein a shaft (120) of the umbrella is attached to a track (111/112/114) within the housing (as seen in FIGS. 2 and 5b) and the umbrella is comprised of an opening and closing mechanism (132); a motor (113c, 132a); and a battery (rechargeable battery to power the wheelchair as stated in the English translation of the specification; would be obvious to use the same battery to also power the umbrella device).
While Lee et al. appears to show the housing of Lee et al. as comprising a fist fastener (as evidenced by the holes shown in the upper side portion of 140 as seen in FIG. 3), Lee et al. does not explicitly disclose a first fastener. However, it would have been obvious to provide a fastener on the housing so the housing could be attached to the wheelchair and/or umbrella since fasteners are an old and well-known attachment means between two objects to help them stay fixed to each other.
Lee et al. does not disclose a lid that attaches to the housing via a hinge or a button comprising a second fastener. McComb-James teaches an automatic wheelchair umbrella device comprising: a housing (101) comprised of a first fastener (103) and a lid (123) that attaches to the housing via a hinge (col. 2, lines 60-62); an umbrella (102, 104) stored within the housing (as evidenced by FIG. 3), wherein the umbrella is comprised of an opening and closing mechanism (104); a button (115) comprised of a second fastener (seen in the figures a sleeve element attaches the button 115 to tubing portion of the wheelchair); a motor (111); and a battery (114). It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify Lee et al. to include a hinged lid and a button with a second fastener, as taught by McComb-James, so that the umbrella would be fully protected when not in use and the user could easily operate the umbrella electrically from the button placed by their hand.
Claim 9: Lee et al. discloses the track is a motorized track (111/112/114; controlled by motor 113c).
Claim 11: Lee et al. discloses the opening and closing mechanism is a motorized opening and closing mechanism (132, has motor 132a).
Claim 12: Mc-Comb-James discloses the button is in electrical communication with the motor (col. 3, lines 44-46).
Claim 13: As discussed above, it would have been obvious to include a first fastener in Lee et al. to order to fasten the housing to the wheelchair and/or umbrella. As such, it would have been obvious to use any of the fasteners from the following list as they are old and well-known: a hook and loop fastener, a strap fastener, an elastic fastener, a magnetic fastener, a mounting bracket fastener, a suction cup fastener, a bolt fastener, a screw fastener, a tongue fastener, or a groove fastener.
Claim 14: Lee et al. discloses the umbrella comprising a body (133) comprising a support (134).
Claim 16: Lee et al. discloses the battery is a charging port (Lee et al. teaches a rechargeable battery, as stated in the English translation of the specification; therefore, there must be a charging port to charge the rechargeable battery).
Claim 17: Mc-Comb-James discloses the button is in electrical communication with the motor/opening and closing mechanism (col. 3, lines 35-48); therefore, if the button was added to control the umbrella of Lee et al. the button would control movement of the track.
Claim 18: Lee et al. discloses a body comprised of a waterproof material (the body 133 would inherently be of a waterproof material is it is used to protect a user from the rain).
Claim 19: As discussed above, the combination of lee et al. and McComb-James discloses an automatic wheelchair umbrella device comprising: a button, a housing comprised of a fastener, and an umbrella stored within the housing, wherein the umbrella comprised of a body and an opening and closing mechanism. Therefore, the obvious method of using the automatic wheelchair would be to provide the automatic wheelchair umbrella device, fasten all portions such as the housing the button to the wheelchair and press the button to extend or retract the umbrella into the housing (as taught by McComb-James; col. 3, lines 35-48)
Claim 20: Lee et al. discloses the automatic wheelchair umbrella device is comprised of a motorized track (111/112/114; controlled by motor 113c).
Claim(s) 8, 10 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ranieri (US 2018/0116351 A1) in view Hasselbach (US 9,468,273 B1).
Claims 8 and 15: Ranieri discloses an automatic umbrella device that could be used on a wheelchair or by a wheelchair user, comprising: a housing (1) comprised of a first fastener (30) and a lid (29) that attaches to the housing via a hinge (as seen in FIGS. 1, 5 and 11, the lid is connected to the housing via “a flexible ligamentous joint” which can be considered a living hinge or a hinge, as defined by the Merriam-Webster online dictionary); an umbrella (18, 22, 9) stored within the housing (as evidenced by FIG. 13), wherein a shaft (9) of the umbrella is attached to a track (17) within the housing and the umbrella is comprised of an opening and closing mechanism (24); a button (25) comprised of a second fastener (25 forms part of a fastener that locks 9 to 1).
Ranieri lacks a motor and a battery. Hasselback teaches an automatic umbrella device that could be used on a wheelchair or by a wheelchair user, comprising: a housing (31) comprised of a lid (20) that attaches to the housing; an umbrella (80) stored within the housing (as evidenced by FIG. 3), the umbrella is comprised of an opening and closing mechanism; a button (91); a motor (41); and a removable battery (93). It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify Ranieri to include a motor and battery, as taught by Hasselbach, to order to automate the actuation of the open and closing mechanism to reduce the amount of work/effort the user has to exert in order to open the umbrella device which may be difficult for user with limited dexterity or strength.
Claim 10: As best understood, Ranieri discloses track is comprised of a spring-loaded track (spring 24 provides the spring force needed to push the shaft 9 which includes member 16 which receives the track 17).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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