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 .
DETAILED ACTION
Response to Amendment
The Amendment filed 6 April 2026 have been entered. Claims 1, 3-5, and 9-16 are pending, of which claim 13 is withdrawn from consideration (see the Election/Restrictions section below). Applicant's amendments have overcome each and every objection and rejection under 35 USC 112 previously set forth in the Non-Final Office Action mailed 28 August 2025, except for any objection(s) and/or rejection(s) under 35 USC 112 repeated below.
Moreover, as a result of Applicant’s amendments to the claims, no claim recitations are presently interpreted under 35 USC 112(f).
Election/Restrictions
Applicant’s election without traverse of Species B in the reply filed on 6 April 2026 is acknowledged. Claim 13 is withdrawn from further consideration by the examiner as being drawn to a non-elected invention.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Claim 1 recites, “a mounting insert”. The term “insert”, when used as a noun, is something that is inserted per merriam-webster.com. In view of claim 12, the Applicant intends the mounting insert to include a structure that receives outer surfaces of the sides of the sheath. As such, the Applicant does not limit “a mounting insert” to a structure that is inserted between the two sides of the sheath (i.e., claim 1 encompasses not only the embodiment of Fig. 6, where the mounting provision is inserted between the sides of the sheath, but also the embodiment of Fig. 7, where the mounting provision is not inserted between the sides of the sheath). In paragraph 29 of the present specification, the Applicant states that the sheath “30” may be constructed by injection molding with a threaded insert. Thus, the “mounting insert” as described in claim 1 appears to correspond to a threaded insert. However, while threads are illustrated, no threaded insert is illustrated; or, if a threaded insert is illustrated, it is not provided with a reference character. Therefore, the “mounting insert” as required by claim 1 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification should be amended to provide an antecedent basis for “a mounting insert” and “an internally threaded bore”, as recited in claim 1.
Claim Objections
The claims are objected to because of the following informalities:
Claim 5 at line 3 recites, “the corresponding shape”. This recitation should avoid adding the new term ‘corresponding’ into the name of the shape as previously introduced (or, alternatively, line 2 should be amended to recite – a corresponding shape of an aperture in the tool –).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 11 is/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.
Claim 11 recites, “wherein the knife includes the hard surface”. The knife is not part of the structure required by claim 11. Instead, claim 11 is directed to a sheath, where the sheath is “configured to receive and store a knife” per claim 9. Claim 9 describes a structure of the sheath – i.e., the sheath must be configured to receive some knife, but claim 9 does not require that the knife is part of the claimed sheath. Claim 11 recites, “wherein the knife includes the hard surface”. With respect to claim 11, the claim is indefinite in accordance with MPEP 2173.05(b)(II) because the claim references an object that is variable (i.e., the unclaimed knife). Whether or not the knife, being an unclaimed structure, includes a hard surface cannot be determined by a sheath alone. A person in possession of a sheath having every feature required by claim 11 cannot determine whether an unclaimed knife usable with the claimed sheath includes a hard surface. As such, claim 11 is indefinite because the claim requires knowledge of some particular knife with which the claimed sheath is used, and a sheath may be usable with a variety of knives, including a knife that does not include a hard surface.
Claim(s) 11 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 does not further limit claim 9 and thus fails to comply with 35 USC 112(d). Claim 11 only describes a feature of the unclaimed knife, and whether or not the knife defines the hard surface does not alter the structure of the sheath already recited in claim 9. Thus, claim 11 makes no further requirements of the claimed sheath because claim 11 only describes a feature of the unclaimed knife. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 3-5, 9-11, 14, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 206105922 U to Pang in view of US Pub. No. 2009/0007434 A1 to Kwok and KR 20060107166 A to Kim, as evidenced by US Pat. No. 4,882,841 to Margolis and KR-20130000936-U to Seo Sang-gyu.
Regarding claim 1, Pang discloses a sheath (shown in Figs. 1-3 without any knife), including:
a first sheath side and a second sheath side (see the annotated Fig. below, where the first and second sheath sides are on opposing sides of the slot 23 in which a knife is receivable);
a mounting provision coupled to the first sheath side and the second sheath side (see the annotated Fig. below; note that the broadest reasonable interpretation of ‘coupled to’ includes an indirection connection via intermediary parts), the mounting provision including a bore 33; and
a removable rod 8 (compare Figs. 2 and 3 to see the removability of the rod 8; see also the rod 8 in a removed condition in Fig. 6) configured engage the bore 33 (compare Figs. 3 and 4) and configured to start a fire in an undisclosed manner (see paragraph 24, describing the rod 8 as a fire stick).
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Regarding claim 3, Pang discloses that the removable rod includes at least a first section (a lower section relative to Fig. 6) and a second section (an upper section relative to Fig. 6), wherein the first section is for coupling with the mounting provision (compare Figs. 4 and 6) and the second section is non-threaded (see Fig. 6).
Regarding claim 4, Pang discloses that the second section is configured for a tool to attach to the second section and rotate the removable rod 8 (see Fig. 8; for example, since the second section is exposed at least in the detached condition of the removable rod, the second section is configured for pliers, which are a type of tool, to attach to the second section and rotate the rod 8; not also that claim 5 explicitly permits a circular shape to be a shape that satisfies the requirements of claim 4, and Pang discloses a circular shape at a top portion of the second section).
Regarding claim 5, Pang discloses that the second section is shaped in a shape corresponding to a shape of an aperture in the tool (no tool is claimed, and therefore Pang need not disclose a tool having an aperture having a circular shape – the second section of the rod 8 of Pang is shaped to correspond to a tool having a circular aperture; note also that claim 5 later permits the shape of the second section to be circular for engagement with a circle shaped aperture in a tool), the shape of the second section and the corresponding shape of the aperture in the tool selected from a hex shape, a circle shape, a square shape, a pentagon shape, or a triangular shape (see the shape of the second section being a circle shape in Fig. 6; note that the tool is not claimed, and thus Pang need not disclose a tool having a circular shaped aperture).
Regarding claim 9, Pang discloses that the sheath is configured to receive and store a knife (such as knife 66 shown in Fig. 4).
Regarding claim 11, Pang discloses that the knife includes the hard surface (first, no knife is required by claim 11; second, the sheath of Pang is usable with a knife that includes a hard surface, such as when knife 66 is provided with a hard surface).
Regarding claim 16, Pang discloses that the removable rod 8 is configured to start a fire while the removable rod 8 remains engaged with the bore 33 (see Fig. 4; this feature is satisfied because the rod 8 is at least partially exposed even when engaged with the bore 33, such that the rod 8 is usable to start a fire; see also this feature being satisfied upon modification of Pang below).
Pang is silent regarding exactly what structure, if any, prevents the rod from becoming dislodged from the mounting provision. Also, Pang fails to disclose exactly how the rod starts a fire. As a result, Pang fails to disclose: that the mounting provision is a mounting insert (since Pang fails to disclose the mounting provision inserting into any other structure, such that the mounting provision cannot properly be considered as an ‘insert’); that the bore is internally threaded; and that the rod is configured to generate sparks to ignite fire when scraped on a hard surface, as required by claim 1. Pang also fails to disclose that the first section is threaded for coupling with the mounting insert as required by claim 3. Pang also fails to disclose that the removable rod is made with at least one of ferrocerium, magnesium, praseodymium, and neodymium as required by claim 10. Pang fails to disclose that the internally threaded bore extends between opposite outer faces of the mounting insert to form a through-threaded section as required by claim 14. Pang further fails to disclose that the rod is configured to be scraped to generate sparks and that the rod is threadably engaged with the internally threaded bore as required by claim 16.
In general, Kwok teaches a structure for mounting an accessory 30 to a knife 1 using a mounting insert 31 (see Fig. 10). Turning to claimed features, Kwok teaches that the mounting insert 31 includes an internally threaded bore (see the bore of the insert 31 having threads 31A in Fig. 1). [Claim 1] Pang teaches that the accessory 30 attached to the insert mounting 31 includes a first section (see the threaded section generally indicated at 32B in Fig. 10) that is threaded for coupling with the mounting insert 31 (see Fig. 10 and paragraph 38) [claim 3], that the internally threaded bore extends between opposite outer faces of the mounting insert 31 to form a through-threaded section (see Fig. 10; the outer faces of the insert 31 of Kwok are opposite faces in an axial direction of the bore of the insert 31 – these faces are ‘outer’ faces of the insert 31 itself; the through-threaded section is defined by threads 31A in Fig. 10) [claim 14], and that the accessory 30 is threaded engaged with the internally threaded bore (see Fig. 10 and paragraph 38) [claim 16]. While the accessory of Kwok is not a fire-starting rod, it is regardless known in the art to attach a fire-starting rod to a mounting provision using a threaded connection (see Margolis discloses a threaded connection for fire-starting rod 48; see Figs. 4 and 8 and col. 3, lines 16-17). Moreover, while the mounting provision of Kwok is not part of a sheath, it is regardless known in the art to provide a threaded connection between a mounting provision of a sheath and an accessory that is removably attachable to the sheath (Seo Sang-gyu discloses a threaded connection for an accessory 3 to a mounting provision 2 of a sheath 1; the threaded connection is between elements 6 and 7). A threaded engagement between the rod and the mounting provision is able to retain the rod in a desired storage position (see, e.g., Margolis at col. 4, lines 3-8), thus reducing the likelihood of the rod inadvertently falling out of the mounting provision.
Therefore, since Pang is silent regarding any structure that retains the rod within the mounting provision, it would have been obvious to one of ordinary skill in the art to the mounting provision of Pang with a mounting insert having an internally threaded bore and to provide the first section of the removable rod of Pang (which is the section already disclosed by Pang as engaging the mounting provision) with threads for threadable engagement between the first section of the removable rod and the mounting insert in view of the teachings of Kwok. This modification is advantageous because it provides a secure connection between the rod and sheath, reducing the likelihood that the rod will fall out of the sheath and become lost, such that the rod is securely retained within the mounting provision. Moreover, as further evidence of the obviousness of this modification, it is already known in the art to provide a removable fire-starting rod with a threaded connection (see Margolis), and it is already known in the art to provide a mounting provision of a sheath with a threaded connection for engagement with a removable accessory (see Seo Sang-gyu). As such, this modification is further obvious under KSR Rationale A – combining prior art elements according to known methods to yield predictable results. The prior art discloses each claimed element as discussed above. One of ordinary skill in the art could have provided the mounting provision of Pang with a mounting insert having an internally threaded bore and could have provided the first section of the rod of Pang with threads for engagement with the mounting insert by known methods (Margolis is evidence of a known method for providing a first section of a removable fire-starting rod with threads; Seo Sang-gyu is evidence of a known method for providing a mounting provision of a sheath with an internal threaded bore), and in combination each element merely would have performed the same function as it did separately (no function of Pang is changed – prior to modification Pang allowed for engagement between the rod and the mounting provision of the sheath, and the modification merely provides a specific and known type of engagement – in particular, a threaded connection – between the rod and the mounting provision). One of ordinary skill in the art would have recognized that the results of the combination were predictable, especially since Seo Sang-gyu teaches mounting an accessory to a mounting provision of a sheath with a threaded connection and since Margolis teaches mounting a removable fire-starting rod with a threaded connection.
Next, Kim teaches a fire rod 23 usable with a knife 12 (see Fig. 1). Turning to claim features, Kim teaches a fire starting rod 23 that is configured to generate sparks to ignite fire when scraped on a hard surface (see page 4 of the English language translation of Kim disclosing that rod 23 is a magnesium ignition rod; note that a rod of magnesium is one configuration of the rod disclosed in the present application to cause the rod to be configured to generate sparks to ignite first when scraped on a hard surface per paragraph 29 of the present application; alternatively, the flint portion 23b of the rod 23 of Kim satisfies this requirement) [claim 1 and also relevant to claim 16]; and that the removable rod 23 is made with magnesium (see page 4 of the English language translation of Kim) [claim 10]. Kim teaches that the configuration of its fire starting rod is advantageous because it is able to start a fire even if the rod becomes wet (see the first paragraph at page 3 of the English translation of Kim).
Therefore, it would have been obvious to one of ordinary skill in the art to configure the generically disclosed fire starting rod of Pang to have the configuration disclosed by Kim (i.e., to include magnesium and a flint portion) because this configuration enables the rod to start a fire even if the rod becomes wet. This modification is advantageous even though Pang teaches a waterproof ring 16 because the fire starting rod can still become wet when not in the mounting provision, such as if a user drops the rod in wet ground or if rain is falling while the user has removed the rod. Furthermore, this modification potentially results in a simplified tool because the waterproof ring of Pang may no longer be necessary following this modification.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pang as modified by Kwok and Kim as applied to claim 1 above, and further in view of US Pat. No. 2,217,100 to Burns.
Pang, as modified, discloses that the mounting insert is coupled to the first and second sheath sides (see the annotated Fig. of Pang provided above, along with the modification of Pang in which the mounting provision of Pang is provided with a mounting insert). However, Pang, as modified, fails to explicitly disclose how the mounting provision is attached to the sheath. As a result, Pang, as modified, fails to disclose that the mounting insert includes a set of U-channel legs that overlap outer surfaces of the first sheath side and the second sheath side, and wherein a plurality of fasteners extend through the U-channel legs and through the first sheath side and the second sheath side to secure the mounting insert to the sheath as required by claim 12.
Burns teaches a connection structure where an attachment 5 that is attached to a base structure (the base structure being the knife of Fig. 1) includes a set of U-channel legs 6 that overlap outer surfaces of the base structure (see Figs. 1-3), and wherein a fastener 10 extends through the U-channel legs 6 and through the base structure to secure the attachment 5 to the base structure (see Figs. 1-3).
Since Pang, as modified, is silent with respect to how the mounting provision is attached to the sheath, it would have been obvious to one of ordinary skill in the art to provide the mounting provision of Pang, as modified, with a set of U-channel legs that overlap the outer surfaces of the sheath (i.e., the first sheath side and the second sheath side), and where a fastener extends through the U-channel legs and through the sheath (including the sheath sides) to secure the mounting provision to the insert in view of the teachings of Burns. This modification is obvious under KSR Rationale A – combining prior art elements according to known methods to yield predictable results. The prior art discloses each claimed element as discussed above. One of ordinary skill in the art could have provided the mounting provision of Pang with a connection to the sheath that includes the mounting provision having U-channel legs that overlap the outer surfaces of the sheath and extending a fastener through the legs and the sheath by applying the connection structure of Burns to the application of Pang. In combination each element merely would have performed the same function as it did separately (the mounting provision of Pang, as modified, remains coupled to the sheath; the connection structure of Burns continues to connect an attachment to a base structure). One of ordinary skill in the art would have recognized that the results of the combination were predictable, since it is apparent to one of ordinary skill in the art, as mechanical engineer, the connection structure of Burns is applicable to a variety of applications.
Finally, regarding claim 12 requiring a plurality of fasteners, it would have been obvious to one of ordinary skill in the art to provide Pang, as modified above, with a plurality of fasteners instead of merely one in order to increase the strength of the connection between the mounting provision and the sheath. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide more than one fastener, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Providing multiple fasteners is advantageous over providing a single fastener to increase the strength of a connection.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pang as modified by Kwok and Kim as applied to claim 14 above, and further in view of US Pat. No. 1,507,737 to James, US Pat. No. 1,595,542 to Bundy, and US Pat. No. 1,030,756 to Yakligian.
Pang, as modified, fails to disclose that the through-threaded section is configured to permit installation of the removable rod from either a first side or a second side of the mounting insert as required by claim 15.
However, it is well known in the field of hand-held tools to provide a mounting provision with the ability to permit installation of an accessory from either of a first side or a second side of the mounting provision. As evidence for this proposition, the examiner cites three references where a mounting provision allows for installation of a tool from either of a first side or a second side of the mounting provision. In James, a mounting provision 7 permits installation of an accessory handle 1 at either of a first side or a second side (left and right sides relative to Fig. 5). In Bundy, a mounting provision 1 permits installation of an accessory (the accessory shown in Fig. 4) at either of a first side or a second side (a left side or a right side relative to Fig. 3; see page 1, lines 54-60). In Yakligian, a mounting provision A & B permits installation of an accessory C at either of a first side or a second side (i.e., a top side or a bottom side relative to Fig. 2).
Therefore, since providing a mounting provision with the option to mount an accessory at either side of the mounting provision is old and well-known in the art (see the evidence of three references above), it would have been obvious to one or ordinary skill in the art to configure the mounting insert of Pang, as modified, to permit installation of the removable rod from either a first side or a second side of the mounting insert. This modification is advantageous to offer a user options with respect to which side of the mounting insert the removable rod is attached, and thus increasing the likelihood that the mounting of the removable rod to the sheath will conform to user needs. The needs of different users vary, and this modification makes the sheath more appealing to users having different needs by allowing different users to select the mounting position of the removable rod.
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 EVAN H MACFARLANE whose telephone number is (303)297-4242. The examiner can normally be reached Monday-Friday, 7:30AM to 4:00PM MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EVAN H MACFARLANE/Examiner, Art Unit 3724
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