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 .
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.
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 embodiment wherein the insertion section is spear-like of claim 7 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 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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor (US 7237455).
1. Taylor teaches an assembly (400), comprising:
a primary bottle stop remover (410) comprising a handle (416) comprising a gripping part (top of 416 is capable of being gripped, see Taylor fig. 4), at least two legs (412, 414) each comprising a first end and a second opposite end (Taylor fig. 4), the first end of each respective leg being fixed to the handle at correspondingly different positions that are spaced apart by a distance d1 between the different positions (see Taylor fig. 4), and
a secondary bottle stop remover (300) comprising a handle section (318) and an insertion section (312) configured for insertion into or through a bottle stop in a bottle neck for removal of the bottle stop from the bottle neck (Taylor fig. 3 and 4:6-38).
Taylor further teaches that the secondary bottle stop remover comprises straight through-going openings (320, 322) configured to receive the two legs (Taylor fig. 3 and 4:6-38) such that the legs pass on either side of the insertion section (see Taylor figs. 3-4).
Taylor does not teach that the handle comprises a straight through-going opening extending between a first opening and a second opening where the first opening is positioned at an outer surface between the at least two legs and the second opening is positioned at an opposite outer surface of the handle, or that the secondary bottle stop remover comprises an insertion section with an outer diameter smaller than an inner diameter of the straight through-going opening of the primary bottle stop remover and configured for insertion into or through a bottle stop in a bottle neck for removal of the bottle stop from the bottle neck, and the insertion section is configured for insertion into the straight through-going opening of the primary bottle stop remover.
However, it has been held that a reversal of the working parts of a device is an obvious modification involving only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
It would consequently have been obvious for one of ordinary skill in the art before the effective filing date to have modified Taylor by reversing primary and secondary bottle stop removers of Taylor, where such a reversal would result in the primary bottle stop remover being positioned below the secondary bottle stop remover and the handle of the primary bottle stop remover including a hole for the insertion of the secondary bottle stop remover such that the handle comprised a straight through-going opening extending between a first opening and a second opening where the first opening is positioned at an outer surface between the at least two legs and the second opening is positioned at an opposite outer surface of the handle (such a hole would be the reversal of the two holes 320, 322 for receiving the legs, see Taylor figs. 3-4), and the secondary bottle stop remover comprising an insertion section with an outer diameter smaller than an inner diameter of the straight through-going opening of the primary bottle stop remover and configured for insertion into or through a bottle stop in a bottle neck for removal of the bottle stop from the bottle neck, and the insertion section is configured for insertion into the straight through-going opening of the primary bottle stop remover.
2. Taylor as modified teaches the assembly according to claim 1, wherein a surface of the handle section of the secondary bottle stop remover faces a corresponding surface of the handle of the primary bottle stop remover and the surface of the handle section and the corresponding surface of handle fit or correspond to each other (Taylor teaches that protruding handle section 418 of the pronged section should fit into handle section cavity 324 of the corkscrew section, see Taylor figs. 3-4 and 4:6-38; reversing the parts to modify Taylor as described would have resulted in the protrusion and cavity reversing but would still have the surfaces of the handles correspond to each other).
3. Taylor as modified teaches the assembly according to claim 1, wherein the through-going opening comprises internal guiding means (the inner walls of the opening would be capable of guiding the insertion section in a relatively linear direction, with the effectiveness of the guiding being a function of the closeness of fit created by the manufacturing tolerances of the opening and insertion section).
4. Taylor as modified teaches the assembly according to claim 1, wherein the handle comprises an extension part that during use is positioned between the gripping part and the bottle stop in the bottle neck (lower portion of handle 410 includes a part that extends downward from the handle, see Taylor fig. 4).
5. Taylor as modified teaches the assembly according to claim 4, but does not explicitly teach that the extension part is shaped like a cylinder or like a truncated cone having a round or rounded perimeter with a length that is constant or that varies along a length of the extension part.
However, it has been held that the particular shape of a design element is a matter of obvious design choice absent some sort of persuasive evidence that the particular configuration of the claimed element was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
The disclosure assigns no particular significance for the shape of the extension part. It would have therefore been obvious for one of ordinary skill in the art before the effective filing date to modify the shape of the extension part of Taylor such that it was shaped like a cylinder or like a truncated cone having a round or rounded perimeter with a length that is constant or that varies along a length of the extension part, as doing so would have been a matter of obvious design choice.
6. Taylor as modified teaches the assembly according to claim 1, wherein the through-going opening is centralized relative to the at least two legs (Taylor teaches that the corkscrew should be centered relative to the two legs, see Taylor fig. 4; reversing the parts would result in a central opening for inserting the corkscrew rather than two openings centered on the corkscrew for the legs).
7. Taylor as modified teaches the assembly according to claim 1, wherein the insertion section is helical and configured for turning into or through the bottle stop (corkscrew 316 is helical, See Taylor fig. 3)
8. Taylor as modified teaches the assembly according to claim 1, wherein the assembly of the primary bottle stop remover and the secondary bottle stop remover is configured for removal of the bottle stop, the primary bottle stop remover is configured for removal of the bottle stop by itself, and the secondary bottle stop remover is configured for removal of the bottle stop by itself (each of the pronged portion, corkscrew, and combination of the two would be independently capable of removing a bottle stop).
9. Taylor as modified teaches the assembly according to claim 2, wherein the assembly of the primary bottle stop remover and the secondary bottle stop remover is configured for removal of the bottle stop or the secondary bottle stop remover is configured for removal of the bottle stop by itself (each of the pronged portion and corkscrew would be independently capable of removing a bottle stop).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JONATHAN R ZAWORSKI whose telephone number is (571)272-7804. The examiner can normally be reached Monday-Thursday 8:00-5:00, Fridays 9:00-1:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at (571)-272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.R.Z./Examiner, Art Unit 3723
/JOEL D CRANDALL/Examiner, Art Unit 3723
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