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
Claims 1-9 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. Specifically, the limitation "wherein the adjustment segment comprises a pivot pin extending perpendicularly from a bottom side of the runner segment" is not disclosed in the specification or drawings as filed. In paragraph 44, the specification and drawing provides that the pin is on “a bottom side of the head” of the runner segment. The examiner notes if applicant specifically claims the runner segment incorporates a structure from which the pin extends, it will read over the prior art.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 10, 12, 14, 15, 17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Key et al. (US 6,824,148).
In re claim 10, Key teaches a runner assembly comprising: a mounting segment (16) coupling the runner assembly to at least one wheel assembly (20); a runner segment having a curvilinear body (16) adapted for displacing terrain and promoting forward locomotion of the utility cart (“sled portion”); and a hinge segment (29, 42, 44) mutually coupling the mounting segment and the runner segment, wherein the hinge segment comprises a fastening means for pivotally coupling the runner segment to the mounting segment, thereby enabling pivotal positioning and repositioning of the runner segment relative to the mounting segment (figs. 1-2).
Key differs in that it doesn’t deal specifically with a utility cart. The examiner takes official notice that utility carts are well known and conventional in the art and one of ordinary skill in the art would be motivated to include the runners on a utility cart for the same reason would use it on a stroller. To make travel on snow more manageable. Where a claimed improvement on a device or apparatus is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d 1509, 1518-19 (BPAI, 2007) (citing KSR v. Teleflex, 127 S.Ct. 1727, 1740, 82 USPQ2d 1385, 1396 (2007)). Applicant claims a combination that only unites old elements with no change in the respective functions of those old elements, and the combination of those elements yields predictable results; absent evidence that the modifications necessary to effect the combination of elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d at 1518-19 (BPAI, 2007) (citing KSR, 127 S.Ct. at 1740, 82 USPQ2d at1396. Since the applicant[s] have submitted no persuasive evidence that the combination of the above elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a) because it is no more than the predictable use of prior art elements according to their established functions resulting in the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time the invention was made.
In reclaim 12, Key teaches the curvilinear body of the runner segment comprises a curvilinear fin having a front tip and an opposing rear tail (front and back; see, e.g., fig. 1).
In reclaim 14 Key teaches the curvilinear fin comprises a recess disposed longitudinally between the front tip and the opposing rear tail (col. 3, ln 31-54; “opposed upwardly extending side walls”).
In reclaim 15, Key teaches the curvilinear fin comprises a recess disposed transversally between the front tip and the opposing rear tail (col. 3, ln 31-54; “opposed upwardly extending side walls”).
In reclaim 17, Key teaches at least one front wheel (20), the at least one front wheel coupled to a cart frame of the utility cart by a wheel shaft (30); a runner assembly (28); a mounting segment having means for coupling the runner assembly with the wheel shaft (16); a runner segment having a curvilinear body (26), the curvilinear body comprising a curvilinear fin adapted for displacing loose terrain and promoting forward locomotion (“sled portion”); and a hinge segment (29, 42, 44) mutually coupling the mounting segment and the runner segment, wherein the hinge segment comprises an adjustable segment for positioning and repositioning the runner segment relative to the mounting segment (fig,.1, 2).
In reclaim 19, Key teaches the curvilinear fin comprises a recess disposed longitudinally between the front tip and the opposing rear tail (col. 3, ln 31-54; “opposed upwardly extending side walls”).
Allowable Subject Matter
Claims 11, 13, 16, 18 and 20 are 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EREZ GURARI whose telephone number is (571)270-1156. The examiner can normally be reached Monday-Friday 8:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason Shanske can be reached at (571) 270-5985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EREZ GURARI/Primary Examiner, Art Unit 3614