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 .
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the features of claims 23, 26 and 29 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 23, 26 and 29 are finally 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. The subject matter of claims 23, 26 and 29 was not described in applicant’s specification in the detail required by the Statute. See specification [0040] second sentence that appears to provide the most detailed description of the claim elements in question. Said differently, the subject matter of claims 23, 26 and 29 was not described in the specification in the full, clear, concise and exact terms required by the Statute. Once more see specification [0040] second sentence and then refer to the portion of 35 USC 112 cited above. Included in the finding is the fact that, the noted features do not appear to be shown in the application drawings (as set forth in paragraph 2 above).
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, 6-9, 14-18 and 21-29 are finally 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.
Claims 23, 26 and 29 are indefinite because the features sought to be claimed are not clear because they were inadequately described in the application specification including not shown at all in the application drawings.
All of the claims are indefinite for the reasons set forth previously. See the previous indefiniteness rejection at paragraphs 4 and 5 of the last Office action. Refer to the previous Office action at paragraphs 4 and 5 in which the claims were held to be indefinite for failing to indicate based on the way they were drafted whether they were directed to the sub-combination of the packaging only, or whether they were directed to the combination of the packaging and the wiper blade and/or the wiper arm. In view of the latest claim amendments, the claims are drafted in such a way that they specifically indicate that neither the wiper arm nor its arm side connector are positively claimed. For example, see the preambles of the independent claims. On the other hand, the claims are also drafted such that they recite structure that depends on the wiper arm or its features such as the arm side connector. For example, see the last two lines of claim 1 that require the size and shape of the packaging cutout to correspond to a size and shape of the arm side connector that the claim itself indicates in it’s preamble is only functionally claimed. Therefore, the claims are indefinite because they are drafted in such a way that they are not clear as to whether they are directed to the sub-combination of the packaging only, or whether they are directed to the combination of the packaging and the wiper blade and/or wiper arm.
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, 6-9, 14-15, 17-18 and 20-29 is/are finally rejected under 35 U.S.C. 103 as being unpatentable over Fournier et al. (2014/0262863) in view of Barr (3,899,073).
Initially the examiner notes that the indefinite claims are only interpreted to the extent possible. In other words the rejection can not fully address indefinite claim limitations. As to the indefiniteness based on the sub-combination/combination issue, the claims are interpreted to the extent possible as if being directed only to the sub-combination of the packaging, and recitations in the claims to the packaging content are not interpreted as being further structurally limiting. Finally, features of the claims mapped to the prior art last time are not necessarily specifically discussed again herein.
Thus, Fournier discloses all of the features of the claims but for a connector identification feature that is a cutout. For example, as discussed previously, Fournier discloses providing indicia on the packaging that relates to the packaging content, including to the use of the content (which in the case of Fournier is a wiper blade and related componentry, such that the indicia would relate to the wiper blade such as different blade sizes, and uses, including what it is to be attached to, etc.). Moreover, Barr discloses that such indicia can take the form of one or more cutouts, as indicated previously. Therefore, it would have been obvious in view of Barr to provide the indicia of the Fournier package as one or more cutouts for the purpose of making the package of Fournier more attractive to a prospective user thereof.
Regarding claims 14-15 see the examiner’s previous commentary. Same for claims not specifically mentioned above.
Regarding the new claims see the top of the Fournier package of Figs. 7 and 9A.
Claim(s) 16 is/are finally rejected under 35 U.S.C. 103 as being unpatentable over Fournier in view of Barr and further in view of Niedzwiedz (6,168,020). The rejection is set forth in detail in the previous Office action and it is incorporated herein in its entirety by reference.
Applicant's arguments filed 6/22/26 have been fully considered but they are not persuasive.
Regarding the outstanding rejection for indefiniteness based on the combination/sub-combination issue, the applicant argues that the claim amendments are intended to clarify that the claims are directed to the sub-combination of the packaging only, and that the recitation in the claims of the wiper arm and arm-side connector serve to define the structural character of the claimed connector identification feature, namely the specific size and shape requirements of the cutout. Therefore, applicant’s arguments only confirm that the examiner is properly reading the amended claims to on the one hand be drawn to the sub-combination of the packaging only, and on the other hand be drawn to the combination of the packaging and/or the wiper blade and wiper arm, because the claims themselves structurally depend on these features that are ostensibly only functionally claimed. Given that the applicant did not argue the grounds of the rejection in the reply, it is unclear why the applicant is presenting the same issue again, not just by the claim drafting but now also by applicant’s express arguments.
As to the prior art rejection the applicant argues that what the prior art fails to show is a cutout that is sized and shaped to correspond to a size and a shape of the arm side connector. However, the rejection never indicated that the prior art showed this feature. The claim is indefinite and has been interpreted as requiring the packaging only, with functional claim recitations interpreted to the extent possible as not being further structurally limiting. The examiner notes further that the only reason the claims are compared against the prior art even though they have been found to be indefinite is because this is a requirement at the examination level. So rather than indicate that the prior art shows a cutout that is sized and shaped to correspond to a size and a shape of the arm side connector (one of the same features that makes the claims indefinite) the rejection indicates that the prior art shows that it is obvious to provide indicia relating to the use of a packaging content, in this case a wiper blade (such as size, what it fits on, etc.), in the form of a cutout. That is all. Nothing more. If the applicant wants something to further structurally limit the claims, that thing should be positively claimed, not recited functionally, as usual.
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 JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/ Primary Examiner, Art Unit 3736
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