Notice of Pre-AIA or AIA Status
This is a first office action on the merits for application serial number 18/424,818 filed 3/11/24. Claims 1-6 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 .
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, 3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent 5,271,640 to Potochick et al.
Potochick provides a lighted ski pole 10 comprised of a transparent shaft 30 defined along an axis, with a handle 40 having a wrapped grip 50 mounted to the shaft 20 along the axis. An illuminator 60 is disposed within the handle (col. 5, lns. 36-28). The illuminator provided as a light source which may be provide as a commercially available candescent bult or an LED considered to meet the limitation of a “flashlight” [cl.3] (see col. 3, lns.31-36). A tip 20 is mounted to the shaft.
When reading the preamble in the context of the entire claim, the recitation “walking stick” 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.
Further, a recitation 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 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 9,930,941 to Sarauer in view of U.S. Patent 4,023,817 to Lah et al.
Sarauer provides a walking stick in Figure 3 having a translucent shaft (col. 3, ln. 65) with a handle 180 mounted to the top thereof and a tip 195 mounted to the bottom thereof. The handle is wrapped with a grip 185. A light source 167 is provided in the handle and considered to meet the limitation of a “flashlight” The light source is provided with a color selector 169.
Sarauer fails to teach the shaft is transparent.
Lah teaches that the shaft of an illuminated ski pole may be transparent or translucent.
(5) Where the warning signal comprises a light as shown in the embodiment of FIG. 4, the tubular wall 23 is either transparent or translucent whereby the light glows through the shaft 10 and is visible in twilight or darkened conditions. The lower portion 22b of the socket 22 extends a substantial distance downwardly whereby the ski pole affords a lighted area of substantial length.
(6) To enhance and reinforce the visual warning effect of the ski pole as shown in FIG. 4, the transparent or translucent wall 23 may incorporate a particular color such as red and, alternatively or in addition thereto, be provided with discrete units or fragments 40 (FIG. 4) of light diffusive material. The units 40 are preferably loosely spaced and uncrowded whereby light will reflect back and forth between the units and afford an overall sparkling effect to the glowing portion of the shaft 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 that the shaft of Sarauer could have been transparent rather than translucent as taught by Lah. It is noting other that choice of opacity of the shaft.
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 selecting the opacity of the shaft.
With respect to claim 2, Sarauer provides each of the elements of the claim as noted above except that the shaft 30 is between 30-72 inches in length. Saraeur recites The length may lie between the upper end and the lower end and the height is derived from the length. The height is generally understood to be measured from a floor to the location of the user's hand (e.g. the grip or the upper end). The elongated support shaft may also be adjustable in length providing a minimum and maximum height.
It would have been an obvious matter of design choice at the time of the effective filing date of the invention to have modified the structure of Sarauer to have the shaft between 30 and 72 inches in length since such a modification would have involved a mere change in the size of the components and would allow for the pole to be used as intended. 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). Further, 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.
Claim 5 rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 9,930,941 to Sarauer as modified above by U.S. Patent 4,023,817 to Lah et al. further in view of U.S. Patent 5,351,704 to Hunnicutt, Jr. et al.
Sarauer as modified by Lah provides each of the elements of the claim as noted above except for reflector within the tip.
Hunnicutt, Jr. et al. teaches that at the time of the effective filing date of the invention it was known to provide a reflector 98A in the tip of an illuminated walking stick opposite the light source to reflect the light back into translucent portion 22.
It would have been an obvious choice of design at the time of the effective filing date of the invention to one having ordinary skill in the art that the tip 195 of Sarauer could have been provided with a reflector as taught by Hunnicutt to reflect the light back towards the light source.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 5,271,640 to Potochick et al.
Potochick provides each of the elements of the claim as noted above except that the shaft 30 is between 30-72 inches in length.
It would have been an obvious matter of design choice at the time of the effective filing date of the invention to have modified the structure of Potochick to have the shaft 30 to between 30 and 72 inches in length since such a modification would have involved a mere change in the size of the components and would allow for the pole to be used as intended. 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). Further, 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 5,271,640 to Potochick et al. in view of U.S. Patent 6,293,684 to Ribbet.
Potochick provides each of the elements of the claim except specifying that the illuminator/LED provides a multiple of colors.
Ribbet teaches a stick having a transparent shaft 9 with a base or “handle” 1 mounted thereto. In the embodiment of figure 4, a flashlight illuminator 35 is provided in the handle. And a tip 37 is mounted to the end of the shaft. Ribbit teaches single or selectively colored LEDs at column 4, lines 41-44.
It would have been obvious at the time of the effective filing date of the invention that the LED illuminator 60 of Potochick could have been provide multiple colors as taught by Ribbet.
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 selecting colors. Further, this feature is old and well known in the LED arts.
Claims 1, 3, 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 5,056,821 to Fierro in view of U.S. Patent 4,023,817 to Lah et al.
Fierro provides a lighted ski pole 10 comprised of a transparent shaft 12 defined along an axis, with a handle 14 mounted to the shaft 12 along the axis. An illuminator 20 is disposed within the handle. The illuminator provided as a light bulb which considered to meet the limitation of a “flashlight”. The bulb may be of various different colors (col. 4, lns. 16-17).
When reading the preamble in the context of the entire claim, the recitation “walking stick” 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.
Further, a recitation 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.
Fierro fails to provide a tip mounted to the shaft along the axis.
Leh teaches that at the time of the effective filing date of the invention it was known to mount steel tip 19 to the bottom of ski prole for reinforcement.
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 a steel tip could have been provided at the end of the shaft Fierro to reinforce the tip. Steel is inherently reflective to at least some degree.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Note in particular:
U.S. Patent 2,245,349 to Lombardi teaches illuminated walking stick with bulb 17 and transparent or translucent shaft portion 14 with a tip 31 and handle 10.
Reflector 40 in the illuminated ski pole of U.S. Patent 4,066,889 to Hodgson.
U.S. Patent 8,985,802 to Nievas teaches an illuminated cane shaft may be transparent or translucent.
U.S. Patent 1,017,565 to Lard teaches a wrap for handle of a stick.
U.S. Patent 2,031,384 to Olivier teaches wrapping a handle of ski pole in leather covering 80.
U.S. Patent 6,394,116 to Winn et al teaches reflector 66 with the tip of an illuminated walking stick.
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