DETAILED ACTION
The Examiner acknowledges Claims 1-4 have been amended and Claims 5-11 have been added.
Response to Arguments
Applicant’s arguments and amendments with respect to the Claim Objection have been fully considered and are persuasive. The Objection of the Claims has been withdrawn.
Applicant’s arguments and amendments with respect to the 112 rejection have been fully considered and are persuasive. The 112 rejection has been withdrawn.
Applicant's arguments and amendments with respect to the Prior Art rejections have been fully considered but they are not persuasive:
The Applicant argues that Smith’s tabs extend in opposite directions. The Examiner disagrees. The Examiner has added additional notation to Figure 7 to show that both tabs extend in the same direction. While the bottom channel section (48) has additional projections, these create the stiffening fold (52) and toe portion (56) but these are not considered in the Examiner’s interpretation of the tab.
The remaining arguments amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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 5 and 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. The “stiffening fold” described in Claim 5 appears to be about element 22j seen in Figure 4A. This is not a stiffening fold but an “adaptation fold”. In Claim 6, the “another stiffening fold” is the only stiffening fold of the double shield reinforcement as it is represented by element 22e in Figure 4A.
Claim 8 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. The Specification does not define the elongated holes as “arcuate in shape”.
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 1-10 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.
The Examiner finds “along the same direction” on Line 7 of Claim 1 to be indefinite because it is unclear if the tabs need to be in the same direction as themselves or compared to the main portion or the holes.
The Examiner finds claim 10 to be to be reproduction of Lines 12-19 of Claim 1 thus being unclear.
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.
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 8,459,604 to Smith.
Regarding claim 1, Smith teaches in Figures 4 and 7 [Figure 7 annotated below], a double-shield reinforcement comprising a plate (20) that includes: a main portion (42) [planar central section (Column 4, Lines 24-25)] defining four holes (70) [slot-shaped openings (Column 5, Line 3)], a pair of tabs (44) extending from the main portion (42) along the same direction [both tabs in the same direction], wherein the pair of tabs (44) are folded at 90 degrees in relation to the main portion (42), and a stiffening fold (52), wherein the double-shield reinforcement (20) is connectable to the frame (24) [rails (Column 3, Lines 65-66)] by aligning the holes (70) with pre-existing holes [for bolts 108/112] in the frame (24), and inserting the pair of tabs (44) into tears (Z) of the frame (24), inserting screws [bolts (Column 6, Line 22)] into the holes (70), and fixing nuts (Column 6, Lines 21-22) to the screws [bolts], thereby promoting connection of the frame (24). The Examiner finds “for reinforcing connection of diagonals to a shield” to be a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Smith does not teach the four holes are two circular holes and two elongated holes. However, he does show in Figure 1, the Prior Art has two [four actually] circular holes and two elongated holes. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make two of the holes circular holes because it would have been a simple substitution of one known element for another to obtain predictable results.
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Regarding claim 2, Smith teaches the double shield reinforcement is formed by a steel plate (Column 6, Lines 63-65) but is silent about the thickness of the plate. However, it would have been an obvious matter of design choice to specify a certain thickness for the plate since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). In the instant case, it would have been obvious to have the plate thick enough for strength but not too thick to waste material.
Regarding claim 3, Smith teaches in Figure 4, the double-shield reinforcement (20) is arranged in pairs of shields affixed to the same relative position of the frame (24).
Regarding claim 4, Smith teaches in Figure 4, the double-shield reinforcement (20) is arranged in pairs of shields affixed to the same relative position of the frame (24).
Regarding claim 7, Smith teaches in Figure 7, the stiffening fold (52) extends from the main portion (42) in a direction opposite to the pair of tabs (44).
Regarding claim 8, Smith teaches in Figure 4, the elongated holes (70) but does not teach they are arcuate in shape. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the elongate holes arcuate in shape since a change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 9, Smith teaches in Figure 4, an assembly comprising: the double shield reinforcement (20), diagonals [some of the fastener holes are diagonal to each other] and the frame (24).
Regarding claim 10, Smith teaches in Figure 4, the holes (70) are aligned with pre-existing holes [for bolts 108/112] in the frame (24), and inserting the pair of tabs (44) into tears of the frame (24), inserting screws [bolts (Column 6, Line 22)] into the holes (70), and fixing nuts (Column 6, Lines 21-22) to the screws [bolts], thereby promoting connection of the frame (24).
Regarding claim 11, Smith teaches in Figures 4 and 7 [Figure 7 annotated above], a double-shield reinforcement [splice plates (Column 3, Line 64)] comprising a plate (20) that includes: a main portion (42) [planar central section (Column 4, Lines 24-25)] defining four holes (70) [slot-shaped openings (Column 5, Line 3)], a stiffening fold (52) extending from the main portion (42) in a first direction [inboard], and a pair of tabs (44) extending from the main portion (42), wherein each tab (44) extends from the main portion (42) along a second direction [outboard] opposite to the first direction [inboard], wherein the pair of tabs (44) are folded at 90 degrees in relation to the main portion (42), wherein the double-shield reinforcement (20) is connectable to the frame (24) [rails (Column 3, Lines 65-66)] by aligning the holes (70) with pre-existing holes [for bolts 108/112] in the frame (24), and inserting the pair of tabs (44) into tears (Z) of the frame (24), inserting screws [bolts (Column 6, Line 22)] into the holes (70), and fixing nuts (Column 6, Lines 21-22) to the screws [bolts], thereby promoting connection of the frame (24). The Examiner finds “for reinforcing connection of diagonals to a shield” to be a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Smith does not teach the four holes are two circular holes and two elongated holes. However, he does show in Figure 1, the Prior Art has two [four actually] circular holes and two elongated holes. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make two of the holes circular holes because it would have been a simple substitution of one known element for another to obtain predictable results.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 8,459,604 to Smith in view of US Patent Application Publication # 2022/0243481 to Freeman.
Regarding claim 5, Smith teaches a plate with a stiffening fold but does not teach it is defined by the main portion. However, Freeman teaches in Figure 11, a plate (14) with stiffening folds (44) (Paragraph 0124) defined in a main portion of the plate (14). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Smith with Freeman and have a reasonable expectation of success because Freeman teaches the stiffening folds add rigidity thus improving strength (Paragraph 0124).
Regarding claim 6, Smith in view of Freeman teach a double shield reinforcement. Furthermore, Smith teaches in Figure 7, the plate (20) further comprises another stiffening fold (52) that extends from the main portion (42) in a direction opposite to the pair of tabs (44).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J TRIGGS whose telephone number is (571)270-3657. The examiner can normally be reached Mon-Thurs 6am-2pm EST.
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/ANDREW J TRIGGS/Primary Examiner, Art Unit 3635