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 .
Examiner Comment
The examiner notes that independent claim 1 is of a broad nature, that in the examiner’s view, encompasses many articles/devices/objects in common use, in that, common articles such as pencils, pens, furniture, computers, phones, vehicles, buildings, are made up of different materials with different densities.
The examiner also notes that, in claims 2-3, the term “consists of” is exclusionary of any additional elements.
The examiner further notes that 4-6 and 8-10 define optional limitations (and only optional limitations), that are not required to be met or found in the prior art, to in order reject the claim, through the use of the term “may”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/500,111 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 of the copending application.
Instant Application
Reference Application
1. A device, tool, instrument, or accessory constituting multiple densities of materials.
1. A device, tool, instrument, or forms of constructs used to elicit reflex responses using an elastic head with a heavier or dense material elsewhere in the device near the distal portion of the device.
2. The device of claim 1, wherein the distal aspect of the device consists of higher density material within or made up of the shaft.
3. The device of claim 1, wherein the distal aspect of the device consists of higher density material within or made up of the shaft.
3. The device of claim 1, wherein the distal aspect of the device consists of an elastic head made of polymer, organic, or inorganic substance.
2. The device of claim 1, wherein the elastic head is made of polymer, organic,or inorganic substance.
4. The device of claim 1, wherein the shaft of the device may be telescopic, expandible, or of constant length.
4. The device of claim 1, wherein the shaft of the device may be telescopic, expandible, or of constant length.
5. The device of claim 1, wherein the proximal aspect of the device may contain, house, feature, or otherwise display another device, tool, or other accessory not otherwise specified.
5. The device of claim 1, wherein the proximal aspect of the device may contain, house, feature, or otherwise display another device, tool, or other accessory not otherwise specified.
6. The device of claim 1, wherein the shaft may be made up of polymer, metal, organic, or inorganic substance.
6. The device of claim 1, wherein the shaft may be made up of polymer, metal, organic, or inorganic substance.
7. The device of claim 1, wherein the higher density material is made up of a polymer, metal, organic, or inorganic substance or substances.
7. The device of claim 1, wherein the higher density material is made up of a polymer, metal, organic, or inorganic substance or substances.
8. The device of claim 1, wherein the device may be hand-held, used by another machinery, robot, animal or other while a proximal end of the device is affixed manually, mechanically, or automatically.
8. The device of claim 1, wherein the device may be hand-held, while a proximal end of the device is affixed manually, mechanically, or automatically.
9. The device of claim 1, wherein the shaft of the device may be of proportional length to the application in use.
9. The device of claim 1, wherein the shaft of the device may be of proportional length to the application in use.
10. The device of claim 1, wherein the mass of the device may be adjusted per the application in use.
10.The device of claim 1, wherein the mass of the device may be adjusted per the application in use.
Regarding the difference between instant claim 1 and reference claim 1, reference claim 1 recites a higher density material, meaning that there is a material that is not higher density elsewhere in the device, therefore material with differing densities.
Regarding the difference between instant claim 3 and reference claim 2, reference claim 1 recites that there is, at the distal aspect of the device, an elastic head.
Regarding the difference between instant claim 8, and reference claim 8, the additional limitations of “used by another machinery, robot, animal or other” in instant claim 8 are recited as limitations in the alternative.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 proximal aspect of the device may contain, house, feature, or otherwise display another device, tool, or other accessory not otherwise specified” (claim 5), “another machinery, robot, animal or other” (claim 8) 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.
Claim Objections
Consider making the preambles of all the claims consistent, either amending the preamble of dependent claims 2-10 recite --The device, tool, instrument, or accessory of claim 1--- or amending independent claim 1 to recite-- A device
In claim 2, consider -- wherein [[the]] a distal aspect of the device consists of higher density material within or made up of [[the]] a shaft--
In claim 3, consider --wherein [[the]] a distal aspect of the device consists of an elastic head made of polymer, organic, or inorganic substance.
In claim 4, consider -- wherein the device further comprises a shaft, wherein the shaft of the device may be telescopic, expandable, or of constant length.
In claim 5, consider -- wherein [[the]] a proximal aspect of the device may contain, house, feature, or otherwise display another device, tool, or other accessory not otherwise specified.
In claim 6, consider --wherein the device further comprises a shaft, wherein the shaft may be made up of polymer, metal, organic, or inorganic substance.
In claim 7, consider -- wherein [[the]] a higher density material of the device is made up of a polymer, metal, organic, or inorganic substance or substances--
In claim 9, consider -- wherein the device further comprises a shaft, wherein the shaft of the device may be of proportional length to [[the]] an application in use--
In claim 10, consider --wherein [[the]] a mass of the device may be adjusted per [[the]] an application in use--.
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 2, 7, and 9 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.
With respect to claims 2 and 7, the claims recite “higher density material”. The term “higher density” indicates that it is relative to some other material, and it is not clear what the “higher density” here is relative to, as claim 1 recites multiple densities of materials, and it is also not clear what density would fall within the meaning of “higher density” (i.e. would a material that has a density of 2 kg/m2 be within the meaning of higher density, or would the “higher density” threshold be higher or lower than that number). The instant disclosure does not provide for a guideline for what would be “higher density”. The examiner’s best understanding, and interpretation for purpose of examination, is that there would be a material that is higher in density than another material at another (any) location of the claimed device.
With respect to claim 9, the claim recites “wherein the shaft of the device may be of proportional length to the application in use” which is a subjective limitation. A person using the device may perceive, that the device has an appropriate/suitable (or proportional) length shaft, or may perceive that the device does not have an appropriate (or proportional) length shaft, and that such perception may vary from person to person, and includes aspects of opinion of said person. The specification does not provide appropriate guidelines for what would be considered an appropriate (or proportional) length. The examiner will interpret prior art devices to have a shaft of “proportional length to the application in use”.
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) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-‘009 (JP S57134009 U).
With respect to claim 1, JP-‘009 discloses: A device, tool, instrument, or accessory constituting multiple densities of materials (solid portion of shaft at 1, fig. 2 is described as “1 denotes a round, solid handle made of a flexible synthetic resin such as nylon”, and there is a hollow portion of shaft 4, fig. 2, “hollow maple grip member 4” which is of less density, being hollow in the hollow portion, [0002]).
With respect to claim 2, JP-‘009 discloses the limitations of claim 1 above, and further discloses wherein the distal aspect of the device consists of higher density material within or made up of the shaft (distal aspect for purposes of claim 2 defined as solid portion of shaft at 1, fig. 2, and as in the rejection of claim 1 above, is a higher density solid material than the hollow portion of hollow grip member 4, fig. 2).
With respect to claim 3, JP-‘009 discloses the limitations of claim 1 above, and further discloses wherein the distal aspect of the device consists of an elastic head made of polymer, organic, or inorganic substance (distal aspect for purposes of claim 3 defined as rubber reflective ring 3, fig. 2; “rubber reflective ring 3 with a round cross section is fitted into a U-groove 2' formed on the periphery of the impactor 2”, [0002] rubber is a natural or artificial polymer that is also organic, and is elastic).
With respect to claim 4, JP-‘009 discloses the limitations of claim 1 above, and further discloses wherein the shaft of the device may be telescopic, expandible, or of constant length (shaft, made solid portion 1, fig. 2, and grip member 4, fig. 2, can be said to be of constant length, as shown in fig. 2, but can also be said to be expandable in that it can be adjusted in length, provided that the user can disassemble it through a screw portion 1b; “a screw portion 1b formed at the base end of the handle portion 1 is screwed into a screw portion 4a of a hollow maple grip member 4 to form a perforator/clamp 5”, [0002])
With respect to claim 5, JP-‘009 discloses the limitations of claim 1 above, and further discloses wherein the proximal aspect of the device may contain, house, feature, or otherwise display another device, tool, or other accessory not otherwise specified (6, fig. 2; “Reference numeral 6 denotes a sharp tip formed at the end of the grip member 4 for checking the Babinski sign, the talus sign, etc.”; [0002])
With respect to claim 6, JP-‘009 discloses the limitations of claim 1 above, and further discloses wherein the shaft may be made up of polymer, metal, organic, or inorganic substance (shaft, made solid portion 1, fig. 2, “1 denotes a round, solid handle made of a flexible synthetic resin such as nylon [a polymer - also organic]”, and grip member 4, fig. 2, “hollow maple grip member 4” is made of maple, being an organic substance, [0002]).
With respect to claim 7, JP-‘009 discloses the limitations of claim 1 above, and further discloses wherein the higher density material is made up of a polymer, metal, organic, or inorganic substance or substances (as solid portion of shaft at 1, fig. 2, “1 denotes a round, solid handle made of a flexible synthetic resin such as nylon [a polymer - also organic], [0002]).
With respect to claim 8, JP-‘009 discloses the limitations of claim 1 above, and further discloses wherein the device may be hand-held, used by another machinery, robot, animal or other while a proximal end of the device is affixed manually, mechanically, or automatically (the description provides that the device is hand held “When using the percussion instrument 5, the grip portion 444 is grasped in the hand, and the reflective ring 3 at the tip is swung down by moving the wrist without applying force to the fingers, for example, onto the knee joint (not shown)” [0002]).
With respect to claim 9, JP-‘009 discloses the limitations of claim 1 above, and further discloses wherein the shaft of the device may be of proportional length to the application in use (the prior art device is presumably suitable for use, with a proportional length shaft, [shaft addressed in rejection of claim 1 above] given that it is graspable in the hand; “When using the percussion instrument 5, the grip portion 444 is grasped in the hand, and the reflective ring 3 at the tip is swung down by moving the wrist without applying force to the fingers, for example, onto the knee joint (not shown)” [0002]).
With respect to claim 10, JP-‘009 discloses the limitations of claim 1 above, and further discloses wherein the mass of the device may be adjusted per the application in use (the device can be disassembled through screws 1a, 1b, figs. 2-3; “screw portion 1a formed at the tip of the handle 1 is screwed into a screw hole 2a drilled in the center of a metal impactor 2 that maintains weight-like balance […] “a screw portion 1b formed at the base end of the handle portion 1 is screwed into a screw portion 4a of a hollow maple grip member 4 to form a perforator/clamp 5”, [0002]; furthermore, given how it is disassembled in fig. 2; material can be stuffed into “hollow maple grip member 4” to adjust mass; in terms of functionality, one can also stick weights to the device to change it’s mass).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chol (KR 20090086888 A) is a hammer with a solid portion of the handle near where it is inserted into the hammer head.
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Tavares (US 7628713 B2) is a golf club head made of materials of different densities; Ishii (US 20130324324 A1) is a golf ball made of materials of different densities - both appear to anticipate claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven Huang whose telephone number is (571)272-6750. The examiner can normally be reached Monday to Thursday 6:30 am to 2:30 pm, Friday 6:30 am to 11:00 am (Eastern Time).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Steven Huang/Examiner, Art Unit 3723
/DAVID S POSIGIAN/Supervisory Patent Examiner, Art Unit 3723