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 1-6 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. In claim 1, the second outer arm is required to have “a third tooth extending from” said arm and the latch (84) is also extending from the second outer arm in which the original disclosure fails to provide support for. Claims 2-6 depend from claim 1 and therefore are also rejected under this section.
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 and 23 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.
Regarding claim 1, the claimed second outer arm has a tooth extending therefrom, wherein said tooth and the fourth tooth being biased toward each other makes the second outer arm read on the other outer arm element 40 in which it also has another tooth (54) extending therefrom that is biased toward the fourth tooth (74) that extends from the second inner arm. However, it is unclear how the ‘second outer arm’ (40) has a latch (84) extending from also since the latch is disclosed as extending from an outer arm (80) in which the arm (80) does not have a tooth extending as claimed. For purpose of examination, it is assumed the latch is extending from a different (third) outer arm. Clarification and appropriate correction are required. Claims 2-6 depend from claim 1 and therefore are also rejected under this section.
Regarding claim 23, the same reasoning is applied concerning a third tooth extending from the second outer arm with regards to claim 1 above. It is unclear how the second outer arm comprises a tooth as set forth above.
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) 1-6 and 21-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith, US 5,987,714.
Regarding claim 1, as best understood, Smith discloses a clip comprising: a rear wall (24); a first outer arm (see an annotated figure 1 below) extending from the rear wall (24); a first inner arm (see the annotated figure 1) extending from the rear wall (24); a first tooth (22) extending from the first outer arm (see figure 3); a second tooth (22) extending from the first inner arm (figure 3), the first tooth (22) and the second tooth (22) being biased toward each other (via the spring configuration of the U-shaped bend connecting the inner and outer arms; see figure 3); a second inner arm (see the annotated figure 1) extending from the rear wall (24); a second outer arm (see the annotated figure 1) extending from the rear wall (24); a third tooth (22) extending from the second outer arm (figure 3); a fourth tooth (22) extending from the second inner arm (figure 3), the third tooth (22) and the fourth tooth (22) being biased toward each other (via the bend portion connecting the inner and outer arms); and a latch (36) extending from the second outer arm (30), the latch (36) being biased toward the first inner arm (via the bend structure of the rear wall 24; see the annotated figure 1).
PNG
media_image1.png
517
964
media_image1.png
Greyscale
Regarding claim 2, as best understood, Smith discloses the clip of claim 1, wherein the latch (36) comprises a ramp portion (inclined portion of 40); a middle portion (the middle 40 portion) connected to the ramp portion (see figure 1); and a tab (an end portion on 36) connected to the middle portion (see figure 1).
Regarding claim 3, as best understood, Smith discloses the clip of claim 1, wherein an end portion (having element 22) of the first outer arm (see the annotated figure 1) and an end portion (having element 22) of the first inner arm (of 18) flare away from each other (see figures 1 - 3).
Regarding claim 4, as best understood, Smith discloses the clip of claim 1, wherein a tab (an emboss of the recesses 40) of the latch (36) extends away (see figure 3) from the first inner arm (18).
Regarding claim 5, as best understood, Smith discloses the clip of claim 1, wherein the first inner arm (see the annotated figure 1) is positioned between the first outer arm (see the annotated figure 1) and the second outer arm (30; see figure 3)
Regarding claim 6, as best understood, Smith discloses the clip of claim 1, wherein: the third tooth (22) is in parallel with the first tooth (22); and the fourth tooth (22) is in parallel with the second tooth (22).
Regarding claim 21, Smith discloses a clip comprising: a rear wall (24) that defines a first portion (see the annotated figure 1) and a second portion (see the annotated figure 1); a first outer arm (28); an inner arm (see ‘the first inner arm’ in the annotated figure 1), wherein the first outer arm (28) and the inner arm (see the annotated figure 1) are joined together by the first portion (see the annotated figure 1); a second outer arm (30), wherein the second portion (see the annotated figure 1) is between, and joins together, the inner arm (of 18) and the second outer arm (30); a first end portion (15) extending from the first outer arm (28); and a second end portion (having element 22) extending from the inner arm (of 18), [wherein: the first end portion (15) and the second end portion (of 18) are configured to receive a first component (74), and the inner arm and the second outer arm (30) are configured to receive a second component (66)].
Claim language set in brackets [] set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of the clip, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the fastener disclosed by Smith (US 5,987,714), is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Regarding claim 22, Smith discloses the clip of claim 21, further comprising: a first tooth (22) extending from the first outer arm (28 having the end portion 15); and a second tooth (22) extending from the inner arm (of 18), the first tooth (22) and the second tooth (22) being biased toward each other (via the bend U-shaped configuration of 18).
Regarding claim 23, as best understood, Smith discloses the clip of claim 21, further comprising: a second inner arm (see ‘second inner arm’ in the annotated figure 1); a third tooth (40) extending from the second outer arm (of 18); and a fourth tooth (22) extending from the second inner arm (of 18), the third tooth (22) and the fourth tooth (22) being biased toward each other (via the bend U-shaped configuration of 18).
Regarding claim 24, Smith discloses the clip of claim 21, further comprising a latch (68) extending from the first outer arm (28), the latch (28) further extending away from the inner arm (of 18; figure 3).
Regarding claim 25, Smith discloses the clip of claim 24, wherein the latch (68) comprises: a ramp portion (an inclined portion); a middle portion (of 68) connected to the ramp portion (along the inclined portion); and a tab (an end portion of 68) connected to the middle portion (see figure 3).
Regarding claim 26, Smith discloses the clip of claim 25, [wherein the ramp portion (of 68) is configured to receive the second component].
Regarding claim 27, Smith discloses the clip of claim 25, [wherein the latch (68) and the tab (end portion of 68) are configured to urge the second component (66) against a portion of the rear wall (24) until the tab is pulled away from the second component].
Response to Arguments
Applicant's arguments filed February 6, 2026 have been fully considered but they are not persuasive. Applicant has amended claim 1 to further include a second outer arm, a second inner arm, a third tooth and a fourth tooth. Said amendment has necessitated a new ground of rejection wherein the prior art reference by Smith has been reconsidered to read on the amended claims 1-6.
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 ROWLAND DO whose telephone number is (571)270-5737. The examiner can normally be reached Monday-Thursday 8:30 - 7:00 PT.
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, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.D./ Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677
Prosecution Insights