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 .
Election/Restrictions
Applicant’s election without traverse of species I (walking device as shown in figures 1-4) in the reply filed on 1/20/2026 is acknowledged.
Claims 6-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on #/##/2025.
To the extent that the withdrawn claims get rejoined, applicant should amend them during prosecution. Accordingly, if the independent claim is no longer generic then applicant is encourage to cancel the withdrawn claims.
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 “a planar horizontal surface portion” (claim 5) of the curved surface region (14) which is formed on the lower surface of the carrying device 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 Rejections - 35 USC § 112
Claim 5 is 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 pre-AIA the applicant regards as the invention.
Claim 5 appears to be inaccurate and indefinite. As defined in claim 1, the carrying device (2) has a lower surface with a spatially curved surface. In claim 5, applicant defines the spatially curved surface (14) of the carrying device (2) is “interrupted by a planar horizontal surface portion” which appears to be inaccurate since the specification (see ¶0028) describes compensating device (11) resting on the carrying device (therefore it resting on the upper surface)), the surface having centrally a planar horizontal surface portion which interrupts the surface region (14) of the carrying device (2) which is not shown in the drawings. The “planar horizontal surface portion” is not clear but it appears it’s on the upper surface of the carrying device and not the lower surface as claimed.
Claim Rejections - 35 USC § 102
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 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 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) 1,3-5 and 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5685807 (Tong).
Regarding claims 1,3-5 and 16, Tong discloses a walking device (bouncing boot) for walking on solar modules (the bouncing boot can inherently be used for walking on solar modules), the walking device comprising:
a carrying device (retainer 18) having an upper surface and a lower surface (see figure 2 showing upper surface and lower surface (spherical bottom wall 19), the lower surface having a spatially curved surface area that is curved downward or shaped to point downward (see figure 2); a damping device (ball 12) for contacting the solar modules (the ball of the bouncing boot can inherently make contact with a solar modules), connected to the spatially curved surface area of the lower surface;
a foot receptacle (14,16) provided to the upper surface of the carrying device (18);
a compensating device (11,41,42,43,44,46,47,48) arranged between the carrying device (18) and the foot receptacle (14,16), the compensating device being configured to enable the foot receptacle to be moved and locked in place (see col 2, lines 23-48).
All of the functional claim language and statements of intended use do not make an otherwise unpatentable claim patentable. It is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. The law of anticipation does not require that an anticipatory reference teach what the applicant is claiming or has disclosed, but only that the claims "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed Cir. 1983). Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977). Since the reference device has all of the same structural elements, as noted above, it would clearly seem to be inherently capable of performing the functions as claimed.
Regarding claim 3, the spatially curved surface region as described is symmetrically curved as claimed.
Regarding claim 4, see bottom wall (19) of retainer having structure as claimed.
Regarding claim 5, as best understood, see flanges (26) which interrupt the spatially curved surface area of bottom wall 19 of the carrying device (18).
Regarding claim 16, the damping device (ball 12) has a convex shape from both sides views as claimed.
Regarding claim 17, Tong discloses a walking device (bouncing boot) for walking on solar modules (the bouncing boot can inherently be used for walking on solar modules), the walking device comprising:
a support device (retainer 18) that has a spatially curved surface area (bottom wall 19; see figure 2) connected to a downwardly extending cushioning device (ball 12) configured to make contact with the solar modules (the ball of the bouncing boot can inherently make contact with a solar modules),
with a foot receptacle (14,16) provided above the support device, and
with a compensating device (11,41,42,43,44,46,47,48) arranged between the support device (18) and the foot receptacle (14,16), the compensating device being configured to enable the foot receptacle, which enables the foot receptacle to moved and locked in place (see col 2, lines 23-48), wherein the surface area is curved downwardly or shaped to point downward (see figure 2, showing the bottom surface (19) curved downwardly).
Regarding claim 18, Tong discloses a walking device (bouncing boot) for walking on solar modules (the bouncing boot can inherently be used for walking on solar modules) with a support device (retainer 18) which has a spatially curved surface area (bottom wall 19) connected downwardly to a damping device (ball 12) configured to contact the solar modules (the ball of the bouncing boot can inherently make contact with a solar modules) with a foot receptacle (14,16) provided above the support device and with a compensating device (11,41,42,43,44,46,47,48) arranged between the support device (18) and the foot receptacle (14,16), which enables the foot receptacle to moved and locked in place (see col 2, lines 23-48), wherein the surface area is curved downwardly or shaped to point downward (see figure 2, showing the bottom surface (19) curved downwardly), and wherein the spatially curved surface area is either rotationally symmetrical, approximately spherical, or spheroidal in shape (surface 19 as shown in figure 2 is curved as claimed).
All of the functional claim language and statements of intended use do not make an otherwise unpatentable claim patentable. It is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. The law of anticipation does not require that an anticipatory reference teach what the applicant is claiming or has disclosed, but only that the claims "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed Cir. 1983). Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977). Since the reference device has all of the same structural elements, as noted above, it would clearly seem to be inherently capable of performing the functions as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556