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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: one or more fastening structures in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
In this case, the limitation “one or more fastening structures” in line 8 of Claim 1 and line 8 of Claim 15 is interpreted as a plurality of strap openings (140) as disclosed in paragraph [0023] of the current application.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-3 and 12-14 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 “said posterior surface comprising one or more fastening structures configured to receive one or more fastening device to said universal mounting apparatus.” It is difficult to understand how “one or more fastening structures are configured to receive … to said universal mounting apparatus”. For examination purpose, it is interpreted as “said posterior surface comprising one or more fastening structures configured to attach one or more fastening device to said universal mounting apparatus.”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cox (U.S. Patent Publication No. 2020/0383507) in view of Christoff (U.S. Patent No. 5,419,154).
Regarding Claim 1, Cox teaches a universal mounting apparatus (Fig. 1, 1) for use in a healthcare environment ([0003]: healthcare field), said apparatus comprising
a. An anterior surface (Fig. 2, 2) and a posterior surface (Fig. 2, 4);
b. Said anterior surface (Fig. 2, 2) comprising one or more elongated slots (Fig. 3, 15), wherein each of said slots are particularly molded to accept a rail (Fig. 3, 11), said rail being permanently attached to a storage attachment (Fig. 3, 6), enabling said storage attachment (Fig. 3, 6) to be reversibly attached to said anterior surface (Fig. 2, 2) of said universal mounting apparatus ([0016]);
c. Said posterior surface (Fig. 2, 4) comprising a means (Fig. 1, 3 & 4) for enabling said universal mounting apparatus (Fig. 1, 1) to be fastened to a surface ([0003]: cylindrical rod) in a health-care environment ([0017]: the curved section and the arc section 3 collectively allow the mounting hook 1 to be hung …).
Cox does not explicitly teach said posterior surface comprising one or more fastening structures configured to attach one or more fastening devices to said universal mounting apparatus to enable said universal mounting apparatus to be fastened to a surface in a health-care environment.
Christoff teaches a universal mounting apparatus (Fig. 3, 41), said apparatus comprising
a. An anterior surface (Fig. 3, 45) and a posterior surface (Fig. 3, 48);
b. Said anterior surface (Fig. 3, 45) comprising one or more elongated slots (Fig. 3, 44), wherein each of said slots are particularly molded to accept a rail (Fig. 1, 21), said rail (Fig. 1, 21) being permanently attached to a storage attachment (Fig. 1, 20), enabling said storage attachment to be reversibly attached to said anterior surface (Fig. 3, 45) of said universal mounting apparatus (Fig. 3, 40) (Col. 3, lines 59-61);
c. Said posterior surface (Fig. 3, 48) comprising one or more fastening structures (Fig. 3, 46a-46d) configured to attach one or more fastening devices (Fig. 3, 42) to said universal mounting apparatus (Fig. 3, 41) to enable said universal mounting apparatus (Fig. 3, 40) to be fastened to a surface (Fig. 4, 50).
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 universal mounting apparatus such that it would have two elongated slots (44) of Christoff on the anterior surface and a body portion (41) having slots (46) and notches (43) of Christoff on the posterior surface and modify the rails of Cox by the rails of Christoff so that the universal mounting apparatus of Cox/Christoff can be mounted onto both horizontal and vertical supports as suggested in Christoff Col. 4, lines 12-20.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cox (U.S. Patent Publication No. 2020/0383507) in view of Christoff (U.S. Patent No. 5,419,154), as applied to Claim 1, and further in view of Kim (KR20110000111).
Regarding Claim 2, Cox/Christoff teach the universal mounting apparatus of claim 1,
wherein the fastening device is comprised of one or more straps (Christoff Fig. 2, 42) (Although the exemplary embodiment of strap is shown as a hook and loop, Christoff teaches that a buckle, snap or other appropriate means many be used in Col. 3, line 61-Col. 4, line 5).
Cox/Christoff do not explicitly teach
b. Said straps comprising a plurality of raised grooves along the length of the strap, a locking piece, and a release tab;
c. wherein to secure the strap, the locking piece catches on one of the grooves and to release the strap, the release tab is pressed to lift the locking piece away from the grooves.
Kim teaches a strap (Fig. 1, 1) comprising a plurality of raised grooves (Fig. 3, teeth on strap (1)) along the length of the strap, a locking piece (Fig. 3, 5), and a release tab (Fig. 3, 3);
c. wherein to secure the strap (Fig. 1, 1) the locking piece (Fig. 3, 5) catches on one of the grooves (Fig. 1, teeth on strap (1)) and to release the strap (Fig. 1, 1), the release tab (Fig. 3, 3) is pressed to lift the locking piece (Fig. 3, 5) away from the grooves (Fig. 1, teeth on strap (1)) (Fig. 4 shows the release tab (3) pressed to lift the locking piece (5) away from the teeth on the strap (1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the strap (42) of Christoff with a reusable cable tie of Kim as the cable tie is extremely cost effective, reusable and easy to clean as it is made of plastic.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cox (U.S. Patent Publication No. 2020/0383507) in view of Christoff (U.S. Patent No. 5,419,154), as applied to Claim 1, and further in view of Kaluza (U.S. Patent No. 6,026,519).
Regarding Claim 3, Cox/Christoff teach the universal mounting apparatus of claim 1 wherein the storage attachment (Cox Fig. 3, 6) is a urinal holder (Cox [0016]: urinal bottle holder), said urinal holder comprising four sides (see Cox Fig. 7) and a top opening (Cox Fig. 7, 8)
Wherein one of the sides (see Cox Fig. 7) comprises one or more rails (Christoff Fig. 1, 21), the one or more rails being permanently attached to the storage attachment (Cox Fig. 3, 6) as recited in claim 1, and each rail being particularly molded to reversibly slide into the one or more slots (Christoff Fig. 3, 44) on the universal mounting apparatus to secure the urinal holder (Cox [0016]: urinal bottle holder) to the universal mounting apparatus (Christoff Col. 3, lines 59-61).
Cox/Christoff do not explicitly teach said urinal holder comprising a base wherein the sides, base and opening form an interior space of appropriate volume to hold a standard portable urinal.
Kaluza teaches said urinal holder (Fig. 9, 100) comprising four sides (Fig. 9, 108-114 & 116-122), a base (Fig. 9, 106), and a top opening (Fig. 9, 104) wherein the sides, base and opening form an interior space of appropriate volume to hold a standard portable urinal (Fig. 1, 20).
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 design of the urinal holder of Cox to provide an interior space having a base which would be big enough to hold the entire urinal such that the urinal cannot be accidently knock off or bumped into and can be stacked when not in use as suggested in Kaluza Col. 6, lines 18-21.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cox (U.S. Patent Publication No. 2020/0383507) in view of Kaluza (U.S. Patent No. 6,026,519), Christoff (U.S. Patent No. 5,419,154) and Kim (KR20110000111).
Regarding Claim 15, Cox teaches a universal mounting apparatus (Fig. 1, 1) for use in a healthcare environment ([0003]: healthcare field), said apparatus comprising
An anterior surface (Fig. 2, 2) and a posterior surface (Fig. 2, 4);
Said anterior surface (Fig. 2, 2) comprising one or more elongated slots (Fig. 3, 15), each slot being molded to accept a rail (Fig. 3, 11), each rail (Fig. 3, 11) being permanently attached to a urinal holder (Fig. 3, 5), the urinal holder (Fig. 3, 5) comprising four sides (see Fig. 7) and a top opening (Cox Fig. 7, 8).
Cox does not explicitly teach the urinal holder comprising four sides, a base, and a top opening that together define an interior space sized to accommodate a standard portable urinal;
Said posterior surface comprising one or more fastening structures configured to receive one or more straps;
Wherein each strap comprises a plurality of raised grooves along the length of the strap, a locking piece, and a release tab;
Wherein said locking piece is configured to catch on one of said grooves to secure the strap, and said release tab is configured to lift the locking piece away from the grooves to release said strap.
Kaluza teaches said urinal holder (Fig. 9, 100) comprising four sides (Fig. 9, 108-114 & 116-122), a base (Fig. 9, 106), and a top opening (Fig. 9, 104) that together define an interior space sized to accommodate a standard portable urinal (Fig. 1, 20).
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 design of the urinal holder of Cox to provide an interior space having a base which would be big enough to hold the entire urinal as taught by Kaluza such that the urinal cannot be accidently knock off or bumped into and can be stacked when not in use as suggested in Kaluza Col. 6, lines 18-21.
Christoff teaches said posterior surface (Fig. 3, 48) comprising one or more fastening structures (Fig. 3, 46a-46d) configured to receive one or more straps (Fig. 3, 42) (Although the exemplary embodiment of strap is shown as a hook and loop, Christoff teaches that a buckle, snap or other appropriate means many be used in Col. 3, line 61-Col. 4, line 5);
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 universal mounting apparatus such that it would have two elongated slots (44) of Christoff on the anterior surface of Cox and a body portion (41) having slots (46) and notches (43) of Christoff on the posterior surface of Cox and modify the rails of Cox by the rails of Christoff so that the universal mounting apparatus of Cox/Christoff can be mounted onto both horizontal and vertical supports as suggested in Christoff Col. 4, lines 12-20.
Kim teaches a strap (Fig. 1, 1) comprising a plurality of raised grooves (Fig. 3, teeth on strap (1)) along the length of the strap, a locking piece (Fig. 3, 5), and a release tab (Fig. 3, 3);
wherein said locking piece (Fig. 3, 5) is configured to catch on one of the grooves (Fig. 1, teeth on strap (1)) to secure the strap, and said release strap (Fig. 1, 1) is configured to lift the locking piece (Fig. 3, 5) away from the grooves (Fig. 1, teeth on strap (1)) (Fig. 4 shows the release tab (3) pressed to lift the locking piece (5) away from the teeth on the strap (1)) to release said strap.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the strap (42) of Christoff with a reusable cable tie of Kim as the cable tie is extremely cost effective, reusable and easy to clean as it is made of plastic.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cox (U.S. Patent Publication No. 2020/0383507) in view of Kaluza (U.S. Patent No. 6,026,519), Christoff (U.S. Patent No. 5,419,154) and Kim (KR20110000111), as applied to Claim 15 and further in view of Farber et al. (U.S. Patent Publication No. 2008/0216222)
Regarding Claim 16, Cox/Kaluza/Christoff/Kim teach the apparatus of claim 15 wherein the universal mounting apparatus and the urinal holder are manufactured with plastic (Cox [0017]: plastic, Kaluza Col. 7, line 44: plastic, Christoff Col. 3, line 54: thermoplastic).
Examiner takes an official notice that it is old and well-known in the art before the effective filing date of the claimed invention to make cable ties with plastic. Therefore, 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 strap of Kim with plastic as it is easily moldable and cost effective.
Farber teaches a urinal (Fig. 10) fabricated with plastic having an antimicrobial coating ([0018]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to treat the universal mounting apparatus, the straps and the urinal holder of Cox/Kaluza/Christoff/Kim with an antimicrobial coating as taught by Farber in order to promote cleanliness and deter the transmission of undesirable contagions as suggested in Farber [0018].
Response to Arguments
Applicant's arguments filed on 8/26/2026 have been fully considered but they are not persuasive.
In response to applicant's argument on pages 2-4 that Christoff (U.S. Patent No. 5,419,154) is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Christoff offers an enhanced solution for the problem of mounting the universal mounting apparatus of Cox to a surface in a health-care environment by enabling the universal mounting apparatus to mount to a surface of a hospital bed, chair or any other medical related equipment in both vertical and horizontal positions as suggested in Christoff Col. 4, lines 12-20.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one of ordinary skill in the art before the effective filing date would have known that the Christoff’s means to mount the universal mounting apparatus in both horizontal and vertical direction would be better than Cox’s apparatus that is able to mount only in a horizontal direction.
In response to applicant's argument on pages 4-5 that Kim (KR20110000111) is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Kim offers an improved mounting means for the universal mounting apparatus of Cox by replacing the hook and loop type of Christoff with a cable tie of Kim which is more cost effective and requires less maintenance as its material is easy to clean and it is designed to be disposable.
In response to applicant's argument on pages 5-6 that Kaluza (U.S. Patent No. 6,026,519) is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Kaluza solves the problem of securely holding a portable urinal in the storage attachment of Cox by replacing it with a Kaluza’s urinal holder having four walls and a base surrounding that would fully surround and protect the portable urinal.
Allowable Subject Matter
Claims 12-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN S YOO whose telephone number is (571)270-7141. The examiner can normally be reached 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SUNIL SINGH can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUN S YOO/Primary Examiner, Art Unit 3726 5/30/2026
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