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 of Group A, Figs. 1-7, Claims 1-20 in the reply filed on 1/16/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Information Disclosure Statement
The information disclosure statement filed 1/28/26 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. The references DM244436, DM 244507, DM244590, DM244621, DM244699 and DM245977 do not include any details that would indicate how they are relevant. These documents have not been considered.
The information disclosure statement filed 1/28/26 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. No copy of GB6108428 or JP 2009010320, KR 3020250025432, or PLMP10165 was provided.
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 1-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. As best understood for the elected species, the only threaded hole into which the threaded bolt 40 engages is nut 50. There are no other threaded apertures described in the disclosure. Elements 11 and 14 are fixedly secured to tube 15 by screws 60. Element 18 is also fixedly secured to tube 15 by another screw 60. Therefore, the length of the assembly including elements 11, 14, 15, and 18 is fixed. Turning the bolt 40 will not change the length of that assembly. If threaded adjustment nut 50 is fixed to the assembly, turning the length manipulating bolt 40 will only tighten the bolt to the assembly further. If the nut 50 is not attached to the assembly, turning the bolt 40 will only spin the nut 50 – there is no means to prevent rotation of the nut. One way for the rotation of the manipulating bolt 40 to affect extension L is to have a threaded opening in element 20 such that the rotation of the bolt 40 can move the bolt (and with it the assembly 11/14/15/18/50) in and out of the element 20 (in the manner of Chen in US Publication 2007/0220746). There is no disclosure of such a threaded opening in element 20. Another way for the rotation of the bolt 40 to affect extension L would be for the assembly 11/14/15/18/50 to slide along the bolt 40 if the inner end of the bolt were fixed within 20 (in the manner of DE 9410961 U1). There is no disclosure of such a fixed arrangement. The broadest reasonable interpretation of the system would include a threaded opening into and out of which manipulating bolt 40 can be screwed. The specification does not disclose enough information for one of ordinary skill in the art to use the device to adjust a telescoping length of the first adjustment assembly with respect to the second adjustment assembly. The state of the art at the time of filing shows that a fixed length assembly with a free rotating nut would not provide a length adjustment means and the specification does not provide direction as to how to solve the problem. Taking these factors into consideration, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of Claim 1. Thus, the claims are not considered enabled by the disclosure.
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.
Claims 1-20 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 1 recites “the shade canopy” which renders the claim indefinite. There is insufficient antecedent basis for this limitation in the claim. The claim is directed to a “shade canopy tensioning assembly.” The claim is directed only to the tensioning assembly per se, not to the overall device including a shade canopy and the tensioning assembly therefor.
Claim 7 recites “said sleeve member” which renders the claim indefinite. There is insufficient antecedent basis for this limitation in the claim, such limitation being introduced in Claim 5.
Claim 8 claim recites “said first sleeve member insert” and “said sleeve member” which render the claim indefinite. There is insufficient antecedent basis for these limitations in the claim, such limitations being introduced in Claims 7 and 5, respectively.
Claim 9 recites “the first rotation lock” and “said sleeve member” which renders the claims indefinite. There is insufficient antecedent basis for these limitations in the claim, such limitations being introduced in Claim 5.
Claim 12 recites “a retaining ring” which renders the claim indefinite. It is unclear if this element is the same as the “retention ring” described in the specification as element 32 of the device or another, separate element.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Porter in US Publication 2005/0138869. Porter teaches a shade canopy tensioning assembly comprising: a first adjustment assembly (20b/20c); a second adjustment assembly (38/40); said first adjustment assembly being selectively moveable relative to said second adjustment assembly; and said first adjustment assembly being affixed (via 22) to the shade canopy (16).
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 2-7, 14, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Porter as applied to Claim 1 above in view of Tung in US Publication 2003/0070700.
Regarding Claim 2, Porter teaches a sheath (28), wherein said sheath comprises at least one groove (between 38 and the inner surface of 28). Porter is silent on the use of a structural support or a hinge. Tung teaches a shade canopy assembly including a sheath (40) with at least one structural support (32) for a canopy rib, and at least one hinge (at 11) at a distal end opposite to a first adjustment assembly (412). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Porter by using a shade canopy with a structural support and a hinge as taught by Tung in order to allow the device to be used on a collapsible umbrella.
Regarding Claim 3, Porter, as modified, teaches at least one threaded adjustment nut (44) and at least one length manipulating bolt (30/30a), wherein said length manipulating bolt traverses at least partially through said first adjustment assembly, through said at least one threaded adjustment nut, and at least partially into said second adjustment assembly.
Regarding Claim 4, Porter, as modified, teaches that at least one length manipulating bolt is configured and dimensioned to selectively move said first adjustment assembly relative to said second adjustment assembly by rotation of said at least one length manipulating bolt within said at least one threaded adjustment nut (see paragraph 0029).
Regarding Claim 6, Porter, as modified, teaches that said adjustment member comprises at least one canopy attachment point (22) and at least one aperture (32), wherein said at least one canopy attachment point is configured and dimensioned to allow for a canopy to become removably attached to said first adjustment assembly and wherein said at least one aperture is configured and dimensioned to receive said at least one length manipulating bolt about a horizontal plane of said adjustment member.
Regarding Claim 7, Porter, as modified, teaches that said adjustment member comprises a first sleeve member insert (36) configured and dimensioned to be inserted and secured into said sleeve member 20b).
Regarding Claim 5, Porter, as modified teaches that said first adjustment assembly further comprises an adjustment member (20c), a sleeve member (20b), and a first rotation lock (36), each in removeable connection to one another.
Regarding Claim 14, Porter teaches that said at least one threaded nut is coupled to said first adjustment assembly in non-rotating engagement, configured and dimensioned to prevent said at least one threaded nut and said first adjustment assembly from rotating about each other upon a rotational force being applied to said at least one length manipulating bolt, and configured and dimensioned to permit translation of said at least one threaded nut and said first adjustment assembly within said sheath (see paragraph 0039).
Regarding Claim 15, Porter, as modified, is silent on the material used for the threaded adjustment nut. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the threaded adjustment nut by using a lock nut in order to prevent unwanted disassembly of the mechanism since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416
Regarding Claim 16, Porter, as modified, teaches that said second adjustment assembly comprising at least one aperture (within 38), wherein said aperture is configured and dimensioned to receive said at least one length manipulating bolt about a horizontal plane of said second adjustment assembly.
Regarding Claim 20, Porter, as modified, teaches that said at least one length manipulating bolt traverses the entire length of said sheath but is silent on the material thereof. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Porter, as modified, by using a stainless steel manipulating bolt in order to prevent corrosion, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 8-13 and 17-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zanot, Ranieri et al., Roberto, Arbeiter et al., and Pena teach tensioning devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH C. HAWK whose telephone number is (571)272-1480. The examiner can normally be reached M-F 9am to 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Dunn can be reached at 5712726670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NOAH C. HAWK
Primary Examiner
Art Unit 3636
/Noah Chandler Hawk/Primary Examiner, Art Unit 3636