DETAILED ACTION
This communication is a FINAL office action on the merits. Claims 1-20, as filed are currently pending and have been considered below.
Claim Rejections - 35 USC § 112
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.
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 1-20 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 limitations: “means for holding the device,” “means for attaching the means for holding to the article” and “means for maintaining a center of gravity of the mount in close proximity to the article”, as present in claim 1, invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification fails to provide clear association between the structure and the function. The only association provided between the function and the structure is provided by the dependent claims. However, these structures are introduced in a piecemeal manner that makes it unclear which of these structures are included in the means for recitations. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. At least claims 2, 3, 4, 11, 18 establish elements that are associated with the means for holding of claim 1. However, each of these claims defines a distinct list of structures and features. Each dependent claim appears to establish essential elements for the means for holding. Their absence in the alternate dependent claims raises the concern that they missing elements represent omitted essential elements. These same issues are repeated in the other dependent claims in regards to the means for attaching and means for maintaining a center of gravity.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As noted above, claim 1 appears to invoke 112 sixth paragraph. The only association between the function and the structure appears in dependent claims 2-18. As such, claim 1 would appear to cover all the structures of claim 1 and may not further limit independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-6, 8-11, 14, 15, 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bennett (US 2018/0360168).
Regarding claim 1, Bennett discloses an apparatus comprising:
means (12, 14, 26) for holding the device;
means (24) for attaching the means for holding to the article; and
means (24 lies within the envelope of 12, 14 and 26) for maintaining a center of gravity of the apparatus in close proximity to the article.
Regarding claim 2, Bennett further discloses wherein the means for holding comprises a housing (12, 14, 26) that defines an envelope, wherein the means for attaching comprises a pin (24), and wherein an entirety of the pin is positioned within the envelope when the pin is in a closed position (Fig. 2B as shown).
Regarding claim 3, Bennett further discloses wherein the means for holding comprises a body (14) and a cover (12), and wherein the body and the cover collectively define a volume configured to receive the device (Fig. 2B as shown).
Regarding claim 4, Bennett further discloses wherein the cover is removably coupled to the body (Paragraph 44, line 4).
Regarding claim 5, Bennett further discloses wherein the cover is flexible and has a stretch-fit with the body (Paragraph 48, lines 3-5).
Regarding claim 6, Bennett further discloses wherein the cover comprises a lip (16), and wherein the body comprises a ledge (18) configured to mate with the lip to operatively retain the cover on the body.
Regarding claim 8, Bennett further discloses wherein the body has a body perimeter, wherein the cover has a cover perimeter (Fig. 1 as shown), wherein the body defines a recess (Fig. 2 as shown), and wherein the body perimeter and the cover perimeter are coextensive other than at the recess (Figs. 1 and 2B as shown).
Regarding claim 9, Bennett further discloses wherein the cover defines a window (Paragraph 48 describes wherein the cover is a clear material), through which the device is visible when the device is operatively received by the means for holding, and wherein the window is sized to restrict passage of the device through the window (the cover as shown covers the front opening of the housing preventing removal of the device).
Regarding claim 10, Bennett further discloses wherein the means for attaching comprises a pin (24) and a plurality of pin ribs (structures of 26) extending toward the pin when the pin is in a closed position (Fig. 2B as shown), and wherein each pin rib of the plurality of pin ribs extends within 1 millimeter (mm) of the pin when the pin is in the closed position (the structures of 26 are in contact with the end of the pin).
Regarding claim 11, Bennett further discloses wherein the means for holding comprises a body (26), wherein the means for attaching comprises a pin (24), and wherein the body defines a pin-installation cavity (Figs. 1-2B as shown) configured to receive the pin.
Regarding claim 17, Bennett further discloses wherein the means for holding is configured to receive the device in a snap-fit arrangement or a friction-fit arrangement (Paragraph 48 last 3 lines).
Regarding claim 19, Bennett further discloses the device held within the means for holding (Fig. 2A and 2B as shown).
Regarding claim 20, Bennett further discloses wherein the apparatus is attached to the article (Paragraph 46).
Regarding claims 1, 14 and 15, Bennett discloses an apparatus comprising:
means (81) for holding the device;
means (82, 83) for attaching the means for holding to the article; and
means (84) for maintaining a center of gravity of the apparatus in close proximity to the article;
wherein the means for attaching comprises a plurality of pins (82, 83); and
wherein the plurality of pins consists of two pins (82, 83).
Regarding claims 1 and 18, Bennett discloses an apparatus (Fig. 9 shows wherein the apparatus includes an alternate cover) comprising:
means (93) for holding the device;
means (24) for attaching the means for holding to the article;
means (26) for maintaining a center of gravity of the apparatus in close proximity to the article; and
the means for holding defines an opening (Fig. 9 shows wherein 93 is a U-shape wherein the interior of the U is an opening), wherein the opening is sized to restrict passage of the device (92) through the opening and is sized to permit a user’s finger to extend through the opening to engage the device and urge the device out of the means for holding (Fig. 9 as shown).
Claim(s) 1-3, 8, 10-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Salatandre (US 2021/0204657).
Regarding claim 1, Salatandre discloses an apparatus (Figs. 5-10 show an apparatus described as an improved button of the type shown in Figs. 1-4) comprising:
means (26) for holding the device;
means (12) for attaching the means for holding to the article; and
means (orientation of the pin as shown in Fig. 2) for maintaining a center of gravity of the apparatus in close proximity to the article.
Regarding claim 2, Salatandre further discloses wherein the means for holding comprises a housing (26) that defines an envelope (Figs. 8 shows wherein an envelope is defined as a cylinder that is defined by the edges of the housing, the envelope is a volume that extends upwards and downwards such that the entirety of the device is enclosed), wherein the means for attaching comprises a pin (12), and wherein an entirety of the pin is positioned within the envelope when the pin is in a closed position (Fig. 2-8 as shown).
Regarding claim 3, Salatandre further discloses wherein the means for holding comprises a body (26) and a cover (28), and wherein the body and the cover collectively define a volume configured to receive the device (Fig. 9 as shown).
Regarding claim 8, Salatandre further discloses wherein the body has a body perimeter, wherein the cover has a cover perimeter (Fig. 9 as shown), wherein the body defines a recess (Fig. 9 as shown), and wherein the body perimeter and the cover perimeter are coextensive other than at the recess (Figs. 5-9 as shown).
Regarding claim 10, Salatandre further discloses wherein the means for attaching comprises a pin (12) and a plurality of pin ribs (Fig. 2 as shown) extending toward the pin when the pin is in a closed position (Fig. 2 as shown), and wherein each pin rib of the plurality of pin ribs extends within 1 millimeter (mm) of the pin when the pin is in the closed position (the ribs as shown are in contact with the end of the pin).
Regarding claim 11, Salatandre further discloses wherein the means for holding comprises a body (26), wherein the means for attaching comprises a pin (12), and wherein the body defines a pin-installation cavity (interior of backer 10) configured to receive the pin.
Regarding claim 12, Salatandre further discloses wherein the pin comprises a torsion spring that biases the pin toward an open position, and wherein the torsion spring is positioned within the pin-installation cavity (the pin as shown forms a torsion spring at the bend base of the pin).
Regarding claim 13, Salatandre further discloses wherein the pin further comprises a piercing-end portion (Fig. 2 as shown) extending from the torsion spring and a grounded portion (Fig. 2 shows the pin extending into the surface of the backer) extending from the torsion spring, wherein the means for holding defines a grounding slot (portion into which the pin extends), wherein the grounded portion of the pin extends into the grounding slot, wherein the grounding slot retains the pin, and wherein the pin-installation cavity is open to the grounding slot (Fig. 2 as shown).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett as applied to claim 6 above.
Regarding claim 7, Bennett further discloses a ramped surface (Fig. 2A as shown) opposite the ledge, but fails to disclose wherein the body comprises a plurality of ledge ribs spaced around the body, wherein the plurality of ledge ribs define the ledge, and wherein each ledge rib of the plurality of ledge ribs.
It would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to change the circular shape of the device of Bennett with a square type shape forming a plurality of ledge ribs because Applicant has not disclosed that the square shape forming the plurality of ledge segments provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the circular shape of the prior art since there does not appear to be any criticality provided by the particular shape.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett as applied to claim 14 above.
Regarding claim 16, Bennett further discloses wherein the means for holding comprises a body (81), wherein the body has a body width and a body perimeter (Fig. 8 as shown). Bennett fails to disclose the plurality of pins is positioned within 15% of the body width from the body perimeter.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the pins within the range distance since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Response to Arguments
Applicant's arguments filed 29 July 2025 have been fully considered but they are not persuasive. Applicant has requested the limitations in independent claim 1 to be interpreted under 112(f). However, in order to consider these limitations under 112(f) new issues under 112(b) arise as noted above.
Regarding Applicant’s remarks to claim 1 and Bennett, Applicant has argued the differences between Bennet and the current invention. However, Applicant has not clearly defined the specific structures that are associated with the functions. The only basis for determining the association is provided by the claims. Applicant notes this very connection in the remarks wherein reference to claim 2 is provided for interpreting means for maintaining a center of gravity. However, while claim 2 includes language that is associated with the center of gravity, no direct or clear correlation is provided to connect the pin language with the means for maintaining a center of gravity.
Regarding Applicant’s remarks to claim 1 and Salatandre, Applicant has reiterated comments to claim 2 and the center of gravity. Applicant has also noted differences between Salatandre and current invention. However, Applicant has not discussed the invention as claimed. Examiner’s comments above also apply here.
Regarding Applicant’s remarks to claim 2, the referenced passage does not appear to be a clear and explicit statement to redefine and disavow the full scope of the term “envelope”. The paragraph on page 4 of the specification merely describes the housing having an envelope corresponding to a smallest rectangular prism encompassing the housing. This does not appear to be sufficient to redefine the term in the manner as Applicant intends.
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 MICHAEL S LEE whose telephone number is (571)270-5735. The examiner can normally be reached M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.S.L/Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677