Notice of Pre-AIA or AIA Status
This is a first office action on the merits for application serail number 18/392,627 filed 12/21/23. Claims 1-20 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s election without traverse of Group I, claims 1-12 in the reply filed on 11/17/25 is acknowledged.
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/17/25.
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 5-8 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.
It is not clear how the strip can have a width of both about .5 and about 3 inches, of both about 1 and about 2 inches or a length of both about 4 inches and about 8 inches or both about 5 inches and about 7 inches. As best understood, it appears applicant was attempting describe range between the two dimensions in each occurrence.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent 8,458,864 to Patton et al.
Patton provides a strip with a top surface 113 having a first end 111 provided with a first portion 120a of a hook and loop fastener adjacent a second complementary portion of a hook and loop 120b fastener. The portions separated by 131 which may be folded over. A third portion 120d of hook and loop fastener 120d is adjacent the second portion 120b and a fourth portion 120c is provided in the rear side.
When reading the preamble in the context of the entire claim, the recitation “a glove tab for use on a stretcher of an umbrella” 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.
Recitations 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. The strip of Patton is capable of being attached to an umbrella stretcher at the first end and removably securing a hook and loop portion of a glove to third portion 120d.
Note Patton also discloses that the fastener portions 120a-d may be snaps, buttons, tie mechanisms, magnetic mechanisms or combinations thereof (col.1, ln. 55 through col. 2, ln.4).
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 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over by U.S. Patent 8,458,864 to Patton et al.
Patton provides each of the element of the claims as noted above except the claimed width and length of the strip.
As best understood, it would have been an obvious choice of design at the time of the effective filing date of the invention to have dimensioned the strip of Patton to have a width between 0.5 and about 3 inches [cl. 5], between about 1 and about 2 inches [cl. 6] and a length between about 4 and about 8 inches [cl.7] or about 5 to about 7 inches [cl.8] as a change in size is generally recognized as being within the level of ordinary skill in the art ( In re Rose, 105 USPQ 237 (CCPA 1955)) and it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. AS Patton disclosed the strap may be used a variety of purposes (col. 1, lns. 5-8).sizing it up or down would have been obvious choice of design to one having ordinary skill in the art at the time of the effective filing date of the invention depending on the intended use/purpose absent any unexpected or unpredictable results.
With respect to claim 9, figure 3 shows portions 120a and 120b having substantially equal lengths.
With respect to claim 10, it would have been an obvious choice of design to one having ordinary skill in the art at the time of the effective filing date of the invention to provide portion 120d with a greater length than portions 120a or 120b because as noted above a change in size is generally recognized as being within the level of ordinary skill in the art. Absent any unexpected or unpredictable results making porting 120d longer than portions120a or 120b is viewed as a choice of design which would have been obvious to one having ordinary skill in the art at the time of the effective fling date of the invention.
With respect to claim 11, see column 1, lines 49-50 which recites 120c is disposed on the bottom surface in some embodiments.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 6,546,599 to Pelt in view of U.S Patent 8,458,864 to Patton et al.
Pelt provides glove tab comprised a strip with top surface, a first end at approximately 28 and second opposite end below 30, a first portion 30 provided with a magnet, a fold line 36, a second portion 32 provided with a magnet 34 adjacent the fold line and a third portion 26 adjacent the second portion provided with a loop portion 20 for removably securing the hook portion of a golf glove 12. The magnets 34 are attached with their poles oriented so that the magnets will attract each other when the second piece 28 is folded about the juncture or fold line 36.
Pelt fails to provide that the portions 34 are complementary hook and loop portions.
Patton teaches that at the time of the effective filing date of the invention complementary hook and loop attachment components were known mechanical equivalent to magnetic mechanisms.
“In some embodiments, the first attachment component 120a and the second attachment component 120b comprise a hook mechanism, a button mechanism, a tie mechanism, a magnet mechanism, a snap mechanism, or a combination thereof.” (last line column 1 through line 4 of column 2).
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention that complementary hook and loop portions could have been substituted for the magnetic portions 34 of Pelt. It would have been nothing other than an obvious substitution of mechanically equivalent fastening mechanisms, as evidenced by Patton, which perform substantially the same function in substantially the same manner absent any unpredictable or unexpected results.
Moreover, all the claimed elements are known in the prior art and one skilled in the art would have combined the elements at the time of the effective filing date of the invention as claimed by known methods with a reasonable expectation of success with no change to their respective functions, and the combination would have yielded predictable results to one having ordinary skill in the art of substituting a hook and loop fastener system for a magnetic fastening system.
When reading the preamble in the context of the entire claim, the recitation “for use on a stretcher of an umbrella” 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.
Recitations 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.
As the device of Pelt is taught as being folded over and supported by a user’s belt it is perfectly capable of being folded over a stretcher of a deployed umbrella.
With respect to claims 2-3, providing the hook and loop portions of the hook and loop fasteners on either portion is viewed as an obvious choice of design as the fastening system would function the same either way. Further, it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the arts. In re Einstein, 8 USPQ 167. U.S. Patent 6,606,768 to Henry et al. cited below specifally recites “Obviously, the positioning of the hooks and loops on the strap can be reversed” (col. 5, lns. 42-45).
With respect to claim 4, see figure 4 which shows loop portion 20 extending past the midpoint of portion 26.
With respect to claims 5-8, Pelt is silent as to the width and length of the strip.
As best understood, it would have been an obvious choice of design at the time of the effective filing date of the invention to have dimensioned the strip of Pelt to have a width between 0.5 and about 3 inches [cl 5], between about 1 and about 2 inches [cl. 6] and a length between about 4 and about 8 inches [cl.7] or about 5 to about 7 inches [cl.8] as a change in size is generally recognized as being within the level of ordinary skill in the art ( In re Rose, 105 USPQ 237 (CCPA 1955)) and it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. The strip of Pelt would perform its intended function dimensions as claimed.
With respect to claim 9, portions 34 in Figure 5 are illustrated having the same length.
With respect to claim 10, it would have been an obvious choice of design to one having ordinary skill in the art at the time of the effective filing date of the invention to provide portion 20 with a greater length than portions 34 to provide a larger surface area for the glove to attach to and as noted above a change in size is generally recognized as being within the level of ordinary skill in the art.
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: while references such as U.S. Patent 8,327,863 to Dupreee teach attachment means including a hook-and-loop fastener mechanism, an adhesive mechanism, a tie mechanism, the like, or a combination thereof none adequately teach or suggest fourth and fifth portions directly adjacent the fold line having a sticky surface in combination with first and second portions provided with one of a hook and loop fastener.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Note in particular:
JP H09149809A to Iwai which provides attaching a male hook and loop fastener 11 to a rib 53 of an umbrella by an appropriate means such as heat welding or ultrasonic welding. A female hook and loop portion 12 is fastened to a towel such that the towel may be removably hung from the umbrella.
U.S. Patent 2,754,532 to Kanehl et al. teaches a strip 12 provided with a female snap fastener 21 at one end which it to be folded over a belt 17 of a user and snaped toa complementary male snap fastener 20. A lower end is also provided with fastener portions to secure a towel 10. The lower snap 21 could inherently snap to a glove fastener such as 6 in U.S. Patent 2,710,409 to Burandt.
U.S. Patent 6,317,933 to Suenaga provides a strip 10 covered in male and female hook and loops 20. A top end is adapted to be folded over an elongated element 26. The band can arbitrarily divided into first through third portions an is capable of being attached to the stretcher of an umbrella and having a glove attached thereto. Suenaga has not been applied to avoid undue multiple rejections.
U.S. Patent 6,606,768 to Henry et al. provides a flexible strap/strip 33 with several hook and loop fastener means 46/47/52/53 useful to hanging or retaining objects. Henry teaches that obviously, the positioning of the hooks and loops can be reversed (col. 5, lns. 42-45).
U.S. Patent 8,327,863 to Dupreee teaches hanging charms to the stretchers 104 of an umbrella with an attachment means including a clip mechanism 115. In some embodiments, the attachment means includes a hook-and-loop fastener mechanism, an adhesive mechanism, a tie mechanism, the like, or a combination thereof. As shown in FIG. 5, a plurality of charm devices 100 can be attached to an umbrella 102.
Figure 4 of U.S. Patent 8,701,216 to Evans teaches providing a rib or stretcher 208 of an umbrella with a fastener/adhesive 204 for mating with a strap section 18 of golf glove. Evans also teaches the use of hook and loop fastenings in one embodiment. See 48/50/52. Connector 28 has a width of 0.5-1.5 inches.
U.S. 2007/0075106 to Meeh teaches attaching a Velcro® surface of a golf glove to the end of strap with a mating Velcro® surface 9.
U.S. 2014/02989930 to Moss and corresponding GB 2,496,007 which provides an elongate strip 20 with male and female press-stud fasteners at a top end. The strip adapted to be folded over and hung from a ring 70. The strap may also be attached to a user's clothing or some other accessory such as a golf bag or trolley to rest or hang freely [0024]. The lower end is adapted to removably secure to a golf glove. Moss has not been applied to avoid undue multiple rejections but substituting hook and loop fasteners for press-studs or snaps would have been an obvious choice of design in view of teaches such as the Patton reference applied above. Moss himself uses Velcro® in an embodiment of figure 9a though in a slightly different arrangement.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT CANFIELD whose telephone number is (571)272-6840. The examiner can normally be reached M-F 10-6, some Saturdays.
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ROBERT CANFIELD
Primary Examiner
Art Unit 3636
/Robert Canfield/Primary Examiner, Art Unit 3636