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 .
Election/Restrictions
Applicant’s election without traverse of Claims 1-20 in the reply filed on 9 February 2026 is acknowledged.
Claims 21 and 27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (method), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9 February 2026.
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.
Claim 3 is 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 3 recites the limitation “selected from a plurality of alternative designs 64A-64G.” The limitation is indefinite, because the combination of numbers and letters “64A-64G” does not adequately define the limitation. It is not clear whether the limitation refers to reference numbers in the drawings, and if so, what features of the referenced drawings are required or essential. For example, it is not clear whether or which embodiments are resilient, pliable, expandable, deformable, clippable, or snappable as described in the written description or [0039-0041]. The written description does not provide distinguishing characteristics among various embodiments 64a-64g. “Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted).” MPEP 2173.05(s). Also, “Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. Generally, the presence or absence of such reference characters does not affect the scope of a claim.” MPEP 608.01(m). Examiner considers the limitation to include any of hooks, bars, inserts, clips, clamps, hinges or any other feature which reasonably resembles features 64a-64g in Figs. 8A-8G.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-2,4,6-13,15, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zavodnick et al. (US 2016/0356297).
Regarding Claim 1, Zavodnick et al. (US’297) teach a masking tool for masking an opening in a structure (i.e. a structure capable of masking an opening for painting or coating around the opening), wherein the opening borders a recess in the structure, the masking tool comprising: a body portion (e.g. bolt body 112) [0054,0056]; a masking portion supported by the body portion, the masking portion comprising an engagement surface (e.g. bolt head 114; lip 650; anchor nut 120,120B; faucet fixture 624), sized to fit a periphery of the opening (Figs. 4-6,8A-8C,10E,11A;[0055]); and a retention member (e.g. combination of 124A,124B, 136) extending from the body portion, the retention member being positioned to engage a surface of the recess to retain at least a portion of the body portion within the recess and to maintain the engagement surface of the masking portion against the periphery of the opening (Figs. 1,4,5,8A-8C; [0055,0061-0062]). The limitations “masking tool for masking an opening in a structure” and “wherein the opening borders a recess in the structure” are intended use recitations, not given patentable weight for the claimed apparatus, which is capable of the functions of the recited intended use.
Regarding Claim 2, US’297 teaches that the retention member is constructed to deform from a non-retaining initial configuration to a compliant retaining configuration while engaging the surface of the recess and resiliently returning towards the initial non- retaining configuration after the body portion is in an attached position (Figs. 4-5,8A-8B).
Regarding Claim 4, US’297 teaches that the engagement surface of the masking portion (e.g. means, including anchor nut 120B) is made from (i.e. “comprises”) a pliable material (rubberized) [0071].
Regarding Claim 6, in US’297 the faucet fixture 624 attached to engagement surface 650 is on the body portion on an opposite side of the body portion from the retention member and can function as a handle to deploy and remove the masking tool (Figs. 6, 10B-F; [0036,0076,0078,0092]).
Regarding Claim 7, in US’297, the body portion is removable (capable of being removed) from within the recess by applying a force to the handle in a direction away from the structure and enabling reuse of the masking tool.
Regarding Claim 8, US’297 teaches that the masking portion (e.g. anchor nut 120) comprises a surface defining an opening for at least partially receiving the body portion (bolt body 112) therein.
Regarding Claim 9, US’297 teaches that the masking tool further comprises opposing stop walls (e.g. threads) on the body portion to retain the masking portion (Fig. 1; [0054-0055]).
Regarding Claim 10, in US’297, indicia (e.g. “signs, indications, or distinguishing marks”) of a location on the structure of an opening and recess to be masked include, for example, any or all of the components of the combination of structures attached together, including a bolt, threads, anchor nut, and retention wings, which would indicate positioning the structure through a opening and recess and the apparatus is capable of the function of the recite intended use, not given patentable weight for the claimed apparatus.
Regarding Claim 11, the limitations “during a painting operation with the masking tool mounted, the masking portion inhibits paint application into an area where the masking tool is mounted and permits paint application in areas where the masking tool is not mounted” recite an intended use of which the claimed apparatus is capable; the intended use is not given patentable weight for the apparatus.
Regarding Claim 12, US’297 teaches that the body portion (bolt body 112) comprises a segment from which the retention member extends to position and secure the body portion within the recess in the structure (Figs. 5,8B).
Regarding Claim 13, US’297 teaches a masking tool for masking an opening in a structure (i.e. a structure capable of masking an opening for painting or coating around the opening), wherein the opening borders a recess in the structure, the masking tool comprising: a body portion to position and secure (i.e. capable of positioning and securing) the body portion within the recess in the structure; a masking portion supported by the body portion, the masking portion comprising an engagement surface sized to fit (i.e. “capable of fitting” or “whose size is capable of fitting”) a periphery of the opening; a retention member extending from the body portion, the retention member being positioned to engage a surface of the recess to retain at least a portion of the body portion within the recess and to maintain the engagement surface of the masking portion against the periphery of the opening; and the retention member constructed to resiliently deform from a non-retaining initial configuration to a compliant retaining configuration while engaging the surface of the recess and resiliently returning towards the initial configuration after the body portion is in an attached position (see rejections of Claims 1 and 2 above for citations and mapping of claim terms to structures in US’297).
Regarding Claim 15, US’297 teaches that the engagement surface of the masking portion (e.g. means, including anchor nut 120B) is made from (i.e. “comprises”) a pliable material (rubberized) [0071].
Regarding Claim 17, in US’297, the faucet fixture 624 is on the body portion on an opposite side of the body portion from the retention member and can function as a handle, capable of being used to deploy and remove the masking tool (Figs. 6, 10B-F; [0036,0076,0078,0092]).
Regarding Claim 18, in US’297, the body portion is removable (capable of being removed) from within the recess by applying a force to the handle in a direction away from the structure and enabling reuse of the masking tool.
Regarding Claim 19, US’297 teaches that the masking portion (e.g. anchor nut 120) comprises a surface defining an opening for at least partially receiving the body portion (bolt body 112) therein.
Regarding Claim 20, the limitations “during a painting operation with the masking tool mounted, the masking portion inhibits paint application into an area where the masking tool is mounted and permits paint application in areas where the masking tool is not mounted” recite an intended use of which the claimed apparatus is capable; the intended use is not given patentable weight for the apparatus.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thomson (US 6,745,805).
Regarding Claim 1, Thomson (US’805) teach an article (binder clip) capable of being used as a masking tool for masking an opening in a structure, wherein the opening borders a recess in the structure, the masking tool comprising: a body portion (combination of first and second arms 30, 40) (Fig. 1; col. 3, lines 47-56); a masking portion supported by the body portion (clip portion 20), the masking portion comprising an engagement surface sized to fit a periphery of the opening (wide end of clip portion 20; see, for example, bottom of Fig. 4 below reference number 22) (col. 3, lines 51-53); and a retention member (37 and/ or 38,48) extending from the body portion (Figs. 1-4; col. 3, lines 56-61; col. 4, lines 11-13), the retention member being capable of being positioned to engage a surface of the recess to retain at least a portion of the body portion within the recess and to maintain the engagement surface of the masking portion against the periphery of the opening.
Regarding Claim 2, US’805 teaches the retention member is constructed to deform (open for clipping) from a non-retaining initial configuration to a compliant retaining configuration while engaging the surface of the recess and resiliently returning towards the initial non- retaining configuration after the body portion is in an attached position (Fig. 27).
Regarding Claim 3, US’805 teaches wherein the retention member is formed in a design selected from a plurality of alternative design 64a or 64e(clipping protrusions) (Figs. 8A, 8E).
Regarding Claim 4, US’805 teaches that the engagement surface of the masking portion is made from a pliable material (compare, for example, Figs. 27 and 13, which show that the wide portion of clip 20 must flex for retention member to deform).
Regarding Claim 5, US’805 teaches that the engagement surface of the masking portion is resiliently deformable against the periphery of the opening from a non-masking shape to a masking shape while the body portion is inserted into the recess in the structure, since the wide portion of clip 20 must flex for retention member to deform (compare, for example, Figs. 27 and 13).
Regarding Claim 6, US’805 teaches a handle (circular arm ends 32,42 with first and second inserts 50, 60) on the body portion on an opposite side of the body portion from the retention member, the handle for engagement to deploy and remove the masking tool (Figs. 1, 17, 30; col. 3, lines 61-65).
Regarding Claim 7, US’805 teaches that the body portion is removable from within the recess by applying a force to the handle in a direction away from the structure and enabling reuse of the masking tool (col. 5, lines 13-21).
Regarding Claim 8, the masking portion comprises a surface defining an opening for at least partially receiving the body portion therein (projections 37 fit in retention members 38, which include a surface of the masking portion defining an opening for projections 37).
Regarding Claim 9, US’805 teaches opposing stop walls (e.g. arms 30,40 with bowed portions 82,92) on the body portion to retain the masking portion (Figs. 10,13) (col. 3, line 65 to col. 4, line 4).
Regarding Claim 10, US’805 teaches indicia (leather, including any of cowhide, sharkskin, lambskin and different colors, to which significance can be imparted) on at least one of the body portion and the masking portion of a location on the structure of an opening and recess to be masked (col. 5, lines 31-41).
Regarding Claim 11, during a painting operation with the masking tool mounted, the masking portion is capable of inhibiting paint application into an area where the masking tool is mounted and of permitting paint application in areas where the masking tool is not mounted. The claim recites an intended use of the claimed apparatus, and the intended use is not given patentable weight for the claimed apparatus, capable of performing the recited function.
Regarding Claim 12, US’805 teaches that the body portion comprises a segment 37 from which the retention member (e.g. at 38) extends to be capable of positioning and securing the body portion within the recess in the structure.
Regarding Claim 13, US’805 teaches a masking tool (binder clip) for masking an opening in a structure, wherein the opening borders a recess in the structure (i.e. a structure capable of masking an opening for painting or coating around the opening), the masking tool comprising: a body portion to position and secure the body portion within the recess in the structure (see Claim 1 above for citations); a masking portion supported by the body portion, the masking portion comprising an engagement surface sized to fit a periphery of the opening (id.); a retention member extending from the body portion, the retention member being positioned to engage a surface of the recess to retain at least a portion of the body portion within the recess and to maintain the engagement surface of the masking portion against the periphery of the opening (id.); and the retention member constructed to resiliently deform from a non-retaining initial configuration to a compliant retaining configuration while engaging the surface of the recess and resiliently returning towards the initial configuration after the body portion is in an attached position (See rejection of Claim 2 above for citations).
Regarding Claim 14, US’805 teaches wherein the retention member is formed in a design selected from a plurality of alternative design 64a or 64e(clipping protrusions) (Figs. 8A, 8E).
Regarding Claim 15, US’805 teaches that the engagement surface of the masking portion is made from a pliable material (compare, for example, Figs. 27 and 13, which show that the wide portion of clip 20 must flex for retention member to deform).
Regarding Claim 16, US’805 teaches that the engagement surface of the masking portion is resiliently deformable against the periphery of the opening from a non-masking shape to a masking shape while the body portion is inserted into the recess in the structure, since the wide portion of clip 20 must flex for retention member to deform (compare, for example, Figs. 27 and 13).
Regarding Claim 17, US’805 teaches a handle (circular arm ends 32,42 with first and second inserts 50, 60) on the body portion on an opposite side of the body portion from the retention member, the handle for engagement to deploy and remove the masking tool (Figs. 1, 17, 30; col. 3, lines 61-65).
Regarding Claim 18, US’805 teaches that the body portion is removable from within the recess by applying a force to the handle in a direction away from the structure and enabling reuse of the masking tool (col. 5, lines 13-21).
Regarding Claim 19, the masking portion comprises a surface defining an opening for at least partially receiving the body portion therein (projections 37 fit in retention members 38, which include a surface of the masking portion defining an opening for projections 37).
Regarding Claim 20, during a painting operation with the masking tool mounted, the masking portion is capable of inhibiting paint application into an area where the masking tool is mounted and of permitting paint application in areas where the masking tool is not mounted. The claim recites an intended use of the claimed apparatus, and the intended use is not given patentable weight for the claimed apparatus, capable of performing the recited function.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ardern, II (US 2005/0060923) (binder clip with indicia, including words, on portion which is capable of performing a function of a mask)
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/ Primary Examiner, Art Unit 1712