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 because:
Not all the replacements sheets are labeled “Replacement Sheet” at the top.
Some of the replacement figures contain written text, which should not be in the drawings. Additionally, the text does not appear to be complete and is sometimes illegible. Furthermore, the elements the text are referring to do not even appear to be near to where the text/lead lines are directed. For instance, in FIG. 3, the “hook hole” appears to just be directed at a piece of fabric, not a hole. Lastly, it is unclear if the text contains new reference numbers – if so, they are not recited in the specification.
There appear to be random lines on the sides of the some of the figures (FIGS. 2, 3 and 5).
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 radially-extending hook hole (claim 4), the screws arranged on the umbrella bead and the inner umbrella surface (claim 5) and the position where the short umbrella rib and the long umbrella rib are connected being sewn to the inner umbrella surface (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
Claim 7 is objected to because of the following informalities: Line 1, “claims” should be changed to --claim--. 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.
Claim 6 is 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. Claim 6 recites “the connecting member further comprises screws arranged on the umbrella bead and the inner umbrella surface, wherein the screws are configured to detachably couple the umbrella bead and the inner umbrella surface” in lines 2-5. It is not understood how screws are arranged on both the umbrella bead and the inner umbrella surface and how they then couple to each other to form the connecting member. How many screws are there on each component? How do they couple to each other in a detachable manner? The specification does not provide any explanation of this embodiment of the connection member beyond “In another embodiment of the present invention, alternatively, an end portion of the long umbrella rib is provided with an umbrella bead, and the connecting member comprises screws arranged on the umbrella bead and the inner umbrella surface. The screwing and unscrewing of the screws are also capable of realizing the separation and fixing between the inner umbrella surface and the long umbrella rib” (page 8, lines 1-5). The drawings do not show the screws at all. As such, one of ordinary skill would not know how to make or use this claim limitation based on the description provided in the original disclosure.
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.
Claim 1 recites “a long umbrella rib” in lines 8-9. It is unclear if this is the same as the previously recited “long umbrella rib” recited in line 2 of the claim. If so, “a” should be changed to --the-- or --said--. For examination purposes, they are assumed to be the same. Clarification is required.
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.
Claim(s) 1, 2 and 4-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Korean patent (KR 2004406065 Y1) in view of Dai (US 9,629,426 B1).
Claim 1: KR ‘065 discloses a double-layer cloth structure of a sun umbrella, comprising: a long umbrella rib (12a), a short umbrella rib (13b), an upper umbrella disc (12), a lower umbrella disc (13), an outer umbrella surface (1), and an inner umbrella surface (51), wherein the outer umbrella surface is fixed to the outer side of the long umbrella rib (via 1a and 24), wherein an edge of the inner umbrella surface is provided with a connecting member (57), wherein the connecting member is detachably connected to an end portion of the long umbrella rib (via 20), and wherein a mounting hole (H) is formed in the center of the inner umbrella surface. While KR ‘065 teaches a detachable connection between the inner umbrella surface and the lower umbrella disc (elastic band 52 located around the H in the center of 51 is located around 13 and prevented from slipping down 13 by anti-slip protrusion 13a), KR ‘065 does not teach a fixing ring detachable connected to the lower disc that is used to fix the inner umbrella surface to the lower disc. Dai teaches a double-layer cloth structure of a sun umbrella, comprising: a long umbrella rib (21, 22), a short umbrella rib (23 and/or 24), an upper umbrella disc (12), a lower umbrella disc (13/14), an outer umbrella surface (20), and an inner umbrella surface (10), wherein the outer umbrella surface is fixed to the outer side of the long umbrella rib (via 3), wherein a fixing ring (8) is detachably connected to the lower umbrella disc (as seen in FIG. 5), wherein a mounting hole is formed in the center of the inner umbrella surface (as evidenced from the side view seen in FIG. 5), and wherein a middle portion of the inner umbrella surface where the mounting hole is located is fixed to the lower umbrella disc through the fixing ring (col. 3, lines 56-63). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify KR ‘065 to include a fixing ring, such as that taught by Dai, as an equivalent alternative to the connection means between the inner umbrella surface and the lower ring that would provide a m ore secure connection between the two that cannot be easily loosened.
Claim 2: KR ‘065 discloses the connecting member as further comprising a fixing hook (hook 57), wherein an end portion of the long umbrella rib is provided with an umbrella bead (20), and wherein the fixing hook is coupled with the umbrella bead (FIG. 5).
Claim 4: KR ‘065 discloses an end portion of the umbrella bead as being provided with a hook hole extending radially through (26; as seen in FIG. 2, the hole is positioned in a direction that is extending along a radial axis from the hub and/or post 10), and the fixing hook is coupled with the hook hole (FIG. 5).
Claim 5: KR ‘065 discloses an end portion of the long umbrella rib as being provided with an umbrella bead (20). While KR ‘065 does not explicitly teach the bead and connecting member as comprising plastic buckles, it would have been obvious to one of ordinary skill in the art to use plastic buckles as the detachable connection means between the bead and the inner umbrella surface since mating plastic buckles are old and well-known in the art and would provide an equivalent alternative that would not as easily become detached.
Claim 6: KR ‘065 discloses an end portion of the long umbrella rib as being provided with an umbrella bead (20). As best understood, while KR ‘065 does not explicitly teach the bead and connecting member as comprising plastic buckles, it would have been obvious to one of ordinary skill in the art to use screws as the detachable connection means between the bead and the inner umbrella surface since screws are old and well-known in the art and would provide an equivalent alternative that would not as easily become detached.
Claim 7: Dai discloses a threaded post (141) is arranged on the lower umbrella disc, the threaded post passes through the mounting hole, and the fixing ring is threadedly connected to the threaded post (col. 3, liens 56-63; FIG. 5).
Claim 8: KR ‘065 discloses the position where the short umbrella rib and the long umbrella rib are connected as being sewed to the inner umbrella surface (as best understood, the connection between the long umbrella rib and the short umbrella rib comprises a connector 12b, which comprises a hook 12d, as seen in FIG. 6, wherein a band 55 that is sewed to the inner umbrella surface is attached thereto).
Claim 9: KR ‘065 discloses an elastic clip (12c) arranged above the inner umbrella surface (as seen in FIG. 5), wherein the clip is clipped on the long umbrella rib. While KR ‘065 shows a clip in FIG. 5 that appears it would be elastic due to its shape (it is C-shaped and most likely snaps onto rib 12a), the clip is not explicitly disclosed as being elastic. However, it would be obvious to make the clip elastic since elastic clips are old and well-known in the art and would allow a detachable connection between the inner umbrella surface and the ribs, wherein if the inner umbrella surface is removed, the clip may also be removed for aesthetic reasons.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Korean patent (KR 2004406065 Y1) in view of Dai (US 9,629,426 B1) as applied to claim 2 above, and further in view of Sadowski et al. (US 4,979,535).
The combination of KR ‘065 and Dai is discussed above and KR ‘065 teaches the umbrella bead as being provided with a hole (26) in the axial direction (the axial direction of bead 20 is along its length), wherein the fixing hook is coupled with the hole (as seen in FIG. 5), but does not teach a groove. Sadowski et al. teaches a connection between an umbrella surface (22) and an umbrella bead (34) located at the end of an umbrella rib (16), wherein the umbrella bead is provided with a groove (42) extending in the axial direction (as seen in the figures), and a fixing hook (24) is coupled with the groove (FIG. 2). 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 combination to include a groove in the umbrella bead, as taught by Sadowski et al., as an equivalent alternative to the hole that would provide the same function and results.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Korean patent (KR 2004406065 Y1) in view of Dai (US 9,629,426 B1) as applied to claim 1 above, and further in view of Connelly (US 2006/0207640 A1).
The combination of KR ‘065 and Dai is discussed above but lacks a hook-and-loop fastener arranged between the inner and outer umbrella surfaces. Connelly teaches a double-layer cloth structure of a sun umbrella, comprising: a long umbrella rib (10), an upper umbrella disc (5), an outer umbrella surface (7), and an inner umbrella surface (4), a hook-and-loop fastener (18, 19; FIG. 2) is arranged between the inner umbrella surface and the outer umbrella surface (FIG. 2C). 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 combination to include a hook-and-loop fastener, as taught by Connelly, so that the gap between the upper and lower umbrella surfaces could be closed, which would prevent dirt, debris and rain from getting in between them.
Response to Arguments
Applicant's arguments filed 12/8/2025 have been fully considered but they are not persuasive.
II. Response to Drawing Objection
Regarding the drawing objections, Applicant states that the elements the Examiner pointed out as being missing from the drawings (subject matter of claims 4, 5, and 8) are “fully described in the specification and implemented in the existing drawings” (pages 2-3, Remarks). Applicant then lists where in the specification these features are discussed; however, Applicant fails to explicitly disclose where these features can be found in the existing drawings. Applicant also submitted “replacement drawing sheets with added reference numerals and clarifying annotations to existing Figures 15 [sic] to more clearly indicate these already disclosed structures”. However, as discussed above, the drawings have been objected to for containing written text, which is somewhat illegible, and does not even seem to be directed at the correct elements. Therefore, it is still not clear where exactly, or even if, the original drawings actually depict the structural features of claims 4, 5 and 8. As such, the original drawing objection remains.
III. Response to Claim Objections (Claims 7-10)
It is noted that while Applicant has amended claims 8-10, claim 7 still recites “claims” in line 1.
Response to 35 USC §112(a) Rejection (Claim 6)
Applicant argues that one skilled in the art would “understand screw arranged on the umbrella beads and inner umbrella surface (e.g. thumb screws engaging threaded inserts or captive nuts in fabric reinforcements) as a conventional detachable coupling for umbrella fabric-to-rib connections (page 3, Remarks). However, it is noted that the claim recites “screws arranged on the umbrella bead and the inner umbrella surface” (lines 3-4), thus implying that there is at least one screw on the umbrella bead and at least one screw on the umbrella surface. As such, it is still not clear how those screw would be detachable coupled to each other, especially when the claim does not recite any threaded inserts, captive nuts or the like. Additionally, it is noted that the original specification filed 12/1/2023 does not disclose “thread inserts” or “captive nuts in fabric reinforcements”. As such, claim 6 still lacks the written description requirement.
Response to 35 USC §112(b) Rejections
While the 112(b) rejections for claims 3 and 4 have been overcome by Applicant’s amendments, it is noted that claim 1 is now rejected under a new 112(b) rejection due to the amendment made to claim 1.
Response to 35 USC §112(b) Rejection [sic]
Applicant argues that the threaded post 141 of Dai appears to be separable from the lower components and directs attention specifically to FIGS. 1, 5 and col. 3 (page 4, Remarks). However, it is unclear why Applicant thinks threaded post 141 can be separated from element 14 as it is clearly shown in all of FIGS. 1-5 as never being separated from 14 and in FIG. 5 element 141 is clearly located directly below or even on the lower end of element 14 itself. Additionally, col. 3, lines 56-63 of Dai’s specification states “ the external surface of said third umbrella receptacle (14) has threads (141), and the third umbrella receptacle (14) is further provided with a threaded cap (8) that matches the threads (141). Based on this, the threaded cap (8) can fasten the edge of the inner fabric (10) of the inverse folding umbrella to further intensify the fixation of the inner fabric (10), so that the edge of the inner fabric (10) will not expose outside or have loose threads.” As such, Dai does in fact teach the lower portion of element 14 to include threads 141, just like 6+61 structure of the present invention. As such, the Examiner maintains that the combination of Kr ‘065 and Dai reads on claim 1 as it currently stands.
Regarding claim 3, Applicant also argues that “Sadowski’s groove 42 secures fabric tunnel 22 along rib 16, not a bead-end groove for detachable hook coupling as claimed” (page 5, Remarks). It is not clear what Applicant means by “secured fabric tunnel along rib 16” since the fabric 22 does not appear to be a tunnel and does not seem to be secured “along” rib 16 (i.e. fabric 22 is not directly secured to rib 16 along its length). However, Sadowski teaches a groove, as admitted by Applicant in the Remarks, located on an umbrella bead 34 (as seen in the figures), that detachably receives a hook 23, as discussed in the rejection above. As such, the Examiner maintains that the combination of KR ‘065, Dai and Sadowski et al. does teach the features of claim 3.
Regarding claim 10, Applicant argues that “Connelly’s peripheral Velcro 18-19 seals edge gaps, but does not teach central ring-to-fixed-disc/post fixation” (page 4, Remarks). However, as discussed above, Dai teaches the central portion of the inner umbrella surface being attached lower umbrella disc by a fixing ring and therefore Connelly does not need to disclose this feature.
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 DANIELLE JACKSON whose telephone number is (571)272-2268. The examiner can normally be reached M-F: 11AM-7PM EST.
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/DNJ/Examiner, Art Unit 3636
/DAVID R DUNN/Supervisory Patent Examiner, Art Unit 3636
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