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 Objections
Claims 6, 13, and 15 are objected to because of the following informalities:
Claims 6, 13, 15 - “an H-shaped member comprising a left fork, a right fork, and a centroid, the centroid located at the distal end of the handle member, wherein the left fork and the right fork each comprise two spaced apart tines
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. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
Claims 10 and 11 - “wherein the H-shaped member comprises a flat bottom portion with an angled portion connecting up to the top portion of the H- shaped assembly” and “wherein the angled portion comprises a 30 degree angle” are not shown. Applicant should identify the portion considered the “angled portion” in the Figure(s) and should also indicate the angle that is being identified and defined in the claim (i.e. the angle between the reference points that form the angle). 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.
Claim Rejections - 35 USC § 112(b)
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 6, 8, 9, 12, 13, 15, and those claims depending therefrom, 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 claims 6, 13, and 15, the claimed “an H-shaped member having a centroid, located at the distal end of the handle member, comprising two spaced apart tines forming a left fork and a right fork” is indefinite. The issue raised is that a fork is considered to comprise a plurality of tines, and the claim requires a “left fork” and a “right fork,” meaning that there should be at least four tines. The claim, however, only requires “two spaced apart tines” for “forming a left fork and a right fork.” As best understood, each fork comprises two tines. Therefore, for the purpose of examination, the examiner will consider this to be “an H-shaped member having a centroid, located at the distal end of the handle member, comprising
Regarding claim 8, the claimed “curved to conform to the curvature of the radius of an installed brake shoe on a wheel of a standard gauge railcar” is indefinite. This appears to be functionally limiting the “curvature of the radius” to a specific type of curvature that conforms to the radius of an installed brake shoe on a wheel of a standard gauge railcar.
Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). In this case, this is considered functional structure which is meant to convey a specific structure (in this case, spacing distance) through functional language (the function being for use with a brake shoe retainer pin). It has been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). It has been held that a functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004).
In this case, the prior art discloses a curvature, but does not mention that it “conforms to the curvature of the radius of an installed brake shoe on a wheel of a standard gauge railcar.” When looking at Applicant’s specification to determine this specific type of curvature, the definition is considered indefinite. Applicant does not show the “brake shoe on a wheel of a standard gauge railcar” nor describe it’s detailed. Therefore, the functional language does not provide any structural definition that the prior art can be compared to in order to determine whether or not it possess a curve that “conforms to the curvature of the radius of an installed brake shoe on a wheel of a standard gauge railcar” as claimed. In other words, the claim appears to require a specific type of curvature, but neither the specification or the claim define the specific type of curvature that is claimed. Therefore, for the purpose of examination, the examiner will consider this to be “curved
Regarding claim 9, the claimed “the crossbar” lacks antecedent basis. For the purpose of examination, the examiner will consider this to be “a crossbar.”
Regarding claim 12, the claimed “spaced apart by the diameter of a brake shoe retainer pin” is indefinite. This appears to be conveying a distance that the tines are spaced apart.
Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). In this case, this is considered functional structure which is meant to convey a specific structure (in this case, spacing distance) through functional language (the function being for use with a brake shoe retainer pin). It has been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). It has been held that a functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004).
The Applicant fails to disclose in the specification what the diameter of the brake shoe retainer pin is. Additionally, the Applicant also does not limit the range of sizes of brake shoe retainer pins, meaning that this could be a wide, and almost limitless, range of sizes. Therefore, it cannot be determined what size this requires for a spacing between the tines. For the purpose of examination, the examiner will consider this to be “spaced apart
Regarding claim 12, the claimed “the tines” is indefinite as to what tines this refers to. Applicant claims “an H-shaped member…comprising two space art tines forming a left fork and right fork” in independent claim 1, upon which this claim depends. As interpreted above, the right fork and the left fork each contain at least two spaced apart tines. Therefore, when referring to “the tines,” this could refer to the tines of the left fork, the tines of the right fork, all of the tines, or one tine of the left fork and one tine of the right fork. Therefore, when considering “the tines,” it is unclear what tines are being referred to. For the purpose of examination, the examiner will consider this to be “the tines of the left fork and the tines of the right fork.”
Regarding claim 15, Applicant claims “a tri-tool assembly” twice. For the purpose of examination, the examiner will consider the second introduction to be “the tri-tool assembly.”
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) 6-10, 12, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith (US-2016/0052121).
Regarding claim 6 (New), Smith (US-2016/0052121) discloses a multi-purpose tool for replacing brake shoes, comprising
a handle member (curvilinear handle 12) having left and right sides (Fig. 1), and proximate and distal ends (Fig. 1);
an H-shaped member (nail claw 24 and prying claw 26) having a centroid (in between the claws 24, 26), located at the distal end of the handle member (handle 12) (Fig. 1), comprising two spaced apart tines forming a left fork and right fork (see annotated Figure 1 below), and
a tri-tool assembly (20, 22), located at the proximate end of the handle member (handle 12) (Fig. 1), comprising a prybar end (pick 22), a centrally-located hammer head (any surface can be used as a “hammer” or “hammer head” as claimed) (the middle portion is considered a “hammer head”, see annotated Fig. 2 below), and a punch (hammer 20),
wherein the distal end of the handle member (handle 12) is attached at the centroid of the H-shaped member (nail claw 24 and prying claw 26).
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Regarding claim 7 (New), Smith discloses the multi-purpose tool according to claim 6, wherein the handle member (handle 12) is curved (Fig. 1).
Regarding claim 8 (New), Smith discloses the multi-purpose tool according to claim 7, wherein the handle member (handle 12) is curved (Fig. 1). As to the “curve” [conforming] to the curvature of the radius of an installed brake shoe on a wheel of a standard gauge railcar, this appears to be functionally limiting the “curvature of the radius” to a specific type of curvature that conforms to the radius of an installed brake shoe on a wheel of a standard gauge railcar. Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). In this case, this is considered functional structure which is meant to convey a specific structure (in this case, spacing distance) through functional language (the function being for use with a brake shoe retainer pin). It has been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). It has been held that a functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004). In this case, the prior art discloses a curvature, but does not mention that it “conforms to the curvature of the radius of an installed brake shoe on a wheel of a standard gauge railcar.” When looking at Applicant’s specification to determine this specific type of curvature, the definition is considered indefinite. Applicant does not show the “brake shoe on a wheel of a standard gauge railcar” nor describe it’s detailed. Therefore, the functional language does not provide any structural definition that the prior art can be compared to determine whether or not it possess a curve that “conforms to the curvature of the radius of an installed brake shoe on a wheel of a standard gauge railcar” as claimed. Therefore, as stated in the 35 USC 112(b) rejection above, any curve will be considered to meet the claim language because the claim is considered to merely require only the structure of a curve.
Regarding claim 9 (New), Smith discloses the multi-purpose tool according to claim 6, wherein the handle member (handle 12) curves above a horizontal line (see annotated Figure 1 below) bisecting the crossbar of the H-shaped member (24, 26) (Fig. 1).
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Regarding claim 10 (New), Smith discloses the multi-purpose tool according to claim 6, wherein the H-shaped (24, 26) member comprises a flat bottom portion with an angled portion connecting up to the top portion of the H- shaped assembly (see annotated Fig. 1 below).
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Regarding claim 12 (New), Smith discloses the multi-purpose tool according to claim 6, wherein the tines are spaced apart (Fig. 1). As to being spaced apart “by the diameter of a brake shoe retainer pin,” this appears to be conveying a distance that the tines are spaced apart. Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). In this case, this is considered functional structure which is meant to convey a specific structure (in this case, spacing distance) through functional language (the function being for use with a brake shoe retainer pin). It has been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). It has been held that a functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004). The Applicant fails to disclose in the specification what the diameter of the brake shoe retainer pin is. Additionally, the Applicant also does not limit the range of sizes of brake shoe retainer pins, meaning that this could be a wide, and almost limitless, range of sizes. Therefore, it cannot be determined what size this requires for a spacing between the tines. As such, and as stated in the 35 USC 112(b) rejection above, any spacing will be considered to meet the claim language because the claim is considered to merely require only that the tines contain a spacing.
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Regarding claim 15 (New), Smith discloses a multi-purpose tool, comprising
an H-shaped member (nail claw 24 and prying claw 26);
a handle member (curvilinear handle 12);
a tri-tool assembly (20, 22);
wherein the H-shaped member (nail claw 24 and prying claw 26) connected at its centroid to a first end of the handle member (handle 12) comprises two spaced apart tines forming a left fork and right fork (see annotated Fig. 1 below), and
a tri-tool assembly (20, 22) connected at a second end of the handle member (handle 12) comprises a prybar end (pick 22), a centrally-located hammer head (any surface can be used as a “hammer” or “hammer head” as claimed) (the middle portion is considered a “hammer head”, see annotated Fig. 2 below), and a punch (hammer 20).
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As for “replacing brake shoes on a railroad car,” this is in the preamble and merely considered intended use explaining what the claimed structure will be used for. As such, this is not considered to structurally limit the claim beyond what is claimed in the body of the claim.
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) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US-2016/0052121).
Regarding claim 11 (New), Smith discloses the multi-purpose tool according to claim 10, but fails to disclose wherein the angled portion comprises a 30 degree angle.
However, Smith shows the angle portion comprises an angle between 0 degrees and 45 degrees (Fig. 1) (0 degrees being parallel and 45 degrees being perpendicular, where the angle portion lies between being parallel and being perpendicular), as made obvious from the Figures. There is nothing that states having an angle of 30 degrees would amount to some unexpected result or criticality in achieving a function that the prior art already does not achieve. It has been held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case, the prior art of Smith makes obvious a range that is smaller than 45 degrees (i.e. perpendicular) and larger than 0 degrees (i.e. parallel) as shown by Figure 1. It has also been held that “[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916). In other words, the claimed invention must produce a new and unexpected result which is different in order to differentiate it from the prior art. Since it is deemed that no new and unexpected result will occur because of an angle of 30 degrees, then there is a prima facie case of obviousness in view of the prior art of Smith.
Allowable Subject Matter
Claim 13, and those claims depending therefrom including claim 14, would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 13 (New), the prior art fails to anticipate or render obvious, in combination with all other claim limitations, “an H-shaped member…comprising two spaced apart tines forming a left fork and a right fork,” a “tri-tool assembly…comprising a prybar end, a centrally-located hammer head, and a punch” and “knocking a slack adjuster pin out of a slack adjuster rod with the hammer head, grabbing a metal head of a brake shoe retainer pin with the one fork of the tool” and “knocking a slack adjuster hole pin back in with the hammer head, and pushing the retainer clip back in place with the prybar end” as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-6347562 [Gerber; col. 3, lines 46-50], US-6460210, US-6298512, US-5765807, US-4910820, US-4290583, US-3219316, US-2525226, US-2491295, US-20140182107, US-20110119836, US-20070114501, US-1309734, and US-1030660 are pertinent to claim 6.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL DILLON CRANDALL whose telephone number is (571)270-5947. The examiner can normally be reached Mon - Fri 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at 571-270-5947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOEL D CRANDALL/ Examiner, Art Unit 3723