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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show any reference numbers or part identifiers referring to claimed aspects of the invention, including the head and shaft as described in the specification and set forth in the claims. The shading in the drawings does not identify structural mechanisms (e.g., telescoping lock). Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). 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.
Specification
The disclosure is objected to because of the following informalities:
“wine cast” should instead read “wine cask”
“leads to injury” should read “lead to injury”
Appropriate correction is required.
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 4, 5 and 15 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.
Regarding Claim 4, the specification lacks sufficient details as to how the device may be telescopic. The written description does not explain the telescopic mechanism and the figures show open and closed telescopic positions, but does not explain how such manipulation between open and closed is achieved.
Regarding Claim 5, the specification lacks sufficient detail as to how the device may “house” another device, tool or other accessory. Such housing is not described in the specification or shown in the drawings.
Regarding Claim 15, the specification lacks sufficient detail as to how weight distribution of the reflex hammer is achieved.
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 1-16 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 Claim 1, the claim states that the invention is a “device, tool, instrument, or forms of constructs”, however, line 3 or Claim 1 limits the claim to only a “device”. This renders the claim indefinite, because if the claim is limited to a “tool, instrument, or forms of constructs”, the limitation “the device” in line 3 would lack proper antecedent basis. It is noted that claim is also lacking a preamble, which is standard in US practice. It is further noted that the limitation “forms of constructs” is ambiguous and should be removed from the claim. For purposes of examination the indefinite limitation has been deemed to claim that the only a “device” (and ignoring the terms tool, instrument, or forms of constructs, because these terms are generally non-limiting). This issue is repeated in any dependent claim that also recites “the device”.
Regarding Claim 1, the limitation “the distal portion” of the device lacks proper antecedent basis, because the limitation has not been previously recited in the claim. For purposes of examination the indefinite limitation has been deemed to claim “a distal portion”.
Regarding Claim 1, the limitation “heavier … material” renders the claim indefinite. Heavier than what? For purposes of examination the indefinite limitation has been deemed to claim that the material is heavier than the material of the elastic head.
Regarding Claim 1, the limitation “near the distal portion of the device” renders the claim indefinite, because the claim does not set forth a relative standard for the Examiner to determine where the distal portion is in related to the elastic head, because the only structure claimed is an elastic head.
Regarding Claim 3, the limitation “the distal aspect” of the device lacks proper antecedent basis, because the limitation has not been previously recited in the claim. For purposes of examination the indefinite limitation has been deemed to claim “a distal aspect”.
Regarding Claim 4, the limitation “the shaft” of the device lacks proper antecedent basis, because the limitation has not been previously recited in the claim. For purposes of examination the indefinite limitation has been deemed to claim “a shaft”.
Regarding Claim 4, the specification lacks sufficient details as to how the device may be telescopic. The written description does not explain the telescopic mechanism and the figures show open and closed telescopic positions, but does not explain how such manipulation between open and closed is achieved. This renders the claim indefinite. For purposes of examination the indefinite limitation has been deemed to claim that the device may be made smaller, in any manner, by way of the handle.
Regarding Claim 5, the limitation “the proximal aspect” of the device lacks proper antecedent basis, because the limitation has not been previously recited in the claim. For purposes of examination the indefinite limitation has been deemed to claim “a proximal aspect”.
Regarding Claim 5, the limitation “or other accessory not otherwise specified” renders the claim indefinite because this could be anything, and is a nonsense category.
Regarding Claim 5, the specification lacks sufficient detail as to how the device may “house” another device, tool or other accessory. Such housing is not described in the specification or shown in the drawings. This renders the claim indefinite. For purposes of examination the indefinite limitation has been deemed to claim that the device may have additional different elements and is not limited to what the additional different elements are.
Regarding Claim 6, the limitation “the shaft” of the device lacks proper antecedent basis, because the limitation has not been previously recited in the claim. For purposes of examination the indefinite limitation has been deemed to claim “a shaft”.
Regarding Claim 7, the limitation “the higher density material” renders the claim indefinite because Claim 1 sets forth a “dense material” but never sets forth that the material is a “higher density”.
Regarding Claim 8, the limitation “a proximal end of the device is affixed…” renders the claim indefinite because it is unclear what the proximal end is being affixed to. For purposes of examination the indefinite limitation has been deemed to claim that the proximal end is somehow attached to the elastic head.
Regarding Claim 9, the limitation “the shaft” and “the application in use” lacks proper antecedent basis, because the limitation has not been previously recited in the claim. For purposes of examination the indefinite limitation has been deemed to claim “a shaft” and “an application in use”.
Regarding Claim 9, the limitation “the application in use” renders the claim indefinite, as it is unclear what is being claimed. For purposes of examination the indefinite limitation has been deemed to claim the proportions of the device are capable of being adjusted based on what application the device is being used in.
Regarding Claim 10, the limitation “the mass” renders the claim indefinite because it is unclear what the proximal end is being affixed to. For purposes of examination the indefinite limitation has been deemed to claim that the proximal end is somehow attached to the elastic head.
Regarding Claim 10, the limitation “the application in use” renders the claim indefinite, as it is unclear what is being claimed. For purposes of examination the indefinite limitation has been deemed to claim the mass of the device is capable of being adjusted based on what application the device is being used in.
The term “mostly” in claim 11 is a relative term which renders the claim indefinite. The term “mostly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination the indefinite limitation has been deemed to claim that the elastic head in some manner is larger, bigger, or has more mass than another aspect of the device.
Regarding Claim 13, the limitation “the distal aspect” of the device lacks proper antecedent basis, because the limitation has not been previously recited in the claim. For purposes of examination the indefinite limitation has been deemed to claim “a distal aspect”.
Regarding Claim 13, the limitation “higher density material” renders the claim indefinite. Higher density material than what? For purposes of examination the indefinite limitation has been deemed to claim that the material is heavier than the material of the elastic head.
Regarding Claim 13, the limitation “the shaft” lacks proper antecedent basis, because the limitation has not been previously recited in the claim. For purposes of examination the indefinite limitation has been deemed to claim “a shaft”.
Regarding Claim 14, the limitations of intended shore hardness are nonsensical. The limitations of “preferably”, “inclusive”, “include” and “all other” make it impossible for the Examiner to determine what shore hardness the head is intended to be. For purposes of examination the indefinite limitation has been deemed to claim that the shore hardness should be at least between 30A and 80A.
Regarding Claim 15, the limitation “the distal end” and “the proximal end” render the claim indefinite. A distal and proximal end how not been previously claimed. For purposes of examination the indefinite limitation has been deemed to claim “a distal end” and “a proximal end”.
Regarding Claim 15, the specification lacks sufficient detail as to how weight distribution of the reflex hammer is achieved. This renders the claim indefinite. For purposes of examination the indefinite limitation has been deemed to claim that the size, material properties, or density of the material of the hammer can influence the weight.
Regarding Claim 16, the limitation “the shaft” or “the handle” of the device lacks proper antecedent basis, because the limitation has not been previously recited in the claim. For purposes of examination the indefinite limitation has been deemed to claim “a shaft” or “a handle”.
Regarding Claims 4-6 and 8-10, the limitation “may or “may be” (i.e., may be telescopic may be telescopic, expandible, or of constant length; may contain, house, feature, or otherwise display another device, tool, or other accessory not otherwise specified; may be made up of polymer, metal, organic, or inorganic substance; may be hand-held; may be of proportional length to the application in use; may be adjusted per the application in use.) render the claim indefinite, because such limitation of “may or “may be” creates the presumption of such limitation being optional, therefore the claims do not particularly point out what the invention is. For purposes of examination the indefinite limitation has been deemed to claim that such elements are not optional.
Regarding Claim 3 and 13, the limitation “consists of” renders the claims indefinite, because such limitation is a closed term and conflicts with the alternatives in the claims. For purposes of examination the indefinite limitation has been deemed to claim instead “comprises”.
112(b) notes to applicant: The claims rely on subjective and relative terms without objective boundaries (“near”, “mostly”, “proportional”), optional language (“may be”, “may contain”), and improper use of “consists of” while reciting alternatives. The specification does not provide standards to measure scope, e.g., no distance or percentage defining “near”, no mass fraction for “mostly”, no structure for mass adjustment.
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) 1-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6106482 A to Cook.
Regarding Claim 1, Cook discloses a device, tool, instrument, or forms of constructs used to elicit reflex responses using an elastic head (head 14) (col. 2, lines 21-22 “The shaft 12 and the head 14 are made from a polymeric material, such as polyvinyl chloride (PVC)”) with a heavier or dense material elsewhere in the device near the distal portion of the device (col. 2, line 66 to col. 3, line 2 “The stiffner 30 is located within PVC body 18 along the shaft 12 and into the head 14 to maintain the form of and provide rigidity to the reflex hammer 10.”).
Regarding Claim 2, Cook discloses the device of claim 1, wherein the elastic head is made of polymer (col. 2, lines 21-22 “The shaft 12 and the head 14 are made from a polymeric material, such as polyvinyl chloride (PVC)”).
Regarding Claim 3, Cook discloses the device of claim 1, wherein the distal aspect of the device consists of higher density material within or made up of the shaft (col. 2, line 66 to col. 3, line 2 “The stiffner 30 is located within PVC body 18 along the shaft 12 and into the head 14 to maintain the form of and provide rigidity to the reflex hammer 10.”).
Regarding Claim 4, Cook discloses the device of claim 1, wherein the shaft of the device may be of constant length (see constant length in FIG. 1).
Regarding Claim 5, Cook discloses the device of claim 1, wherein the proximal aspect of the device may feature another device (clip 16).
Regarding Claim 6, Cook discloses the device of claim 1, wherein the shaft may be made up of polymer ((col. 2, lines 21-22 “The shaft 12 and the head 14 are made from a polymeric material, such as polyvinyl chloride (PVC)”).
Regarding Claim 7, Cook discloses the device of claim 1, wherein the higher density material is made up of a inorganic substance (col. 4, lines 17-19 “In a preferred embodiment, the stiffner 30 and the clip 16 are made of nylon 6, a polyamide product produced by duPont.”).
Regarding Claim 8, Cook discloses the device of claim 1, wherein the device may be hand-held (handle 13 is capable of being held my a hand), while a proximal end of the device is affixed manually, mechanically, or automatically (col. 2, lines 22-24 “In a preferred embodiment, the shaft 12 and the head 14 are integrally formed as a molded PVC body 18.”).
Regarding Claim 9, Cook discloses the device of claim 1, wherein the shaft of the device may be of proportional length to the application in use (the device of Cook, and respective shaft 12 is capable of being used in a manner in which the length of proportion to the application, for instance, being used a reflex hammer).
Regarding Claim 10, Cook discloses the device of claim 1, wherein the mass of the device may be adjusted per the application in use (optional, Cook discloses material/hardness choices, which inherently vary mass, but explicit adjustable mass isn’t required by “may”).
Regarding Claim 11, Cook discloses a reflex hammer constructed of mostly an elastic head (head 14) (col. 2, lines 21-22 “The shaft 12 and the head 14 are made from a polymeric material, such as polyvinyl chloride (PVC)”).
Regarding Claim 12, Cook discloses the reflex hammer of claim 11, wherein the elastic head is made of polymer, organic, or inorganic substance (head 14) (col. 2, lines 21-22 “The shaft 12 and the head 14 are made from a polymeric material, such as polyvinyl chloride (PVC)”).
Regarding Claim 13, Cook discloses the reflex hammer of claim 11, wherein the distal aspect of the device consists of higher density material within or made up of the shaft (col. 2, line 66 to col. 3, line 2 “The stiffner 30 is located within PVC body 18 along the shaft 12 and into the head 14 to maintain the form of and provide rigidity to the reflex hammer 10.”).
Regarding Claim 14, Cook discloses the reflex hammer of claim 11, wherein the head of the reflex hammer is made up of an elastic material with shore hardness between 30A and 80A, yet preferably between 40A and 70A, inclusive, and include 50A,60A, and all other shore hardness value between 30A and 80A (col. 2, lines 33-34 “The PVC body 18 preferably has a hardness rating of about 60 durometer.”).
Regarding Claim 15, Cook discloses the reflex hammer of claim 11, wherein weight distribution of the reflex hammer is greater at the distal end compared to the proximal end where the reflex hammer is held (the head 14 of the device has more weight than the very proximal tip of the hammer, where the device is capable of being held).
Regarding Claim 16, Cook discloses the reflex hammer of claim 11, wherein the handle or shaft is made up of a rigid or flexible material (col. 2, lines 21-22 “The shaft 12 and the head 14 are made from a polymeric material, such as polyvinyl chloride (PVC)”).
Note to pro se Applicant
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN PATRICK DOUGHERTY whose telephone number is (571)270-5044. The examiner can normally be reached 8am-5pm (Pacific Time).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jacqueline Cheng can be reached at (571)272-5596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN P DOUGHERTY/ Primary Examiner, Art Unit 3791