DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-18 are pending.
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: “A sliding element” in claim 1. “A movable element” in claim 1. “An actuator device” in claim 1. “A retaining mechanism” in claim 1. “A blocking mechanism” in claim 3. “Fixing elements” in claim 7.
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. The specification identifies the sliding element as that of element 20, with structural features described in at least [0045]. The specification identifies the movable element as that of element 30, with structural features described in at least [0051]. The specification identifies the actuator device as that of element 53, with structural features described in at least [0053]. The specification identifies the retaining mechanism as that of element 41/42, with structural features described in at least [0068]. The specification identifies the blocking mechanism as that of element 71, with structural features described in at least [0049]. The specification identifies the fixing elements as that of element adhesive and/or screw tabs [0020].
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 1-18 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.
Re claim 1, claim 1 recites, “it” in line 21. Numerous elements are previously introduced and thus, it is unclear as to which this language refers. It appears this language is intended to refer to “the shim” and will be interpreted as such.
Re claim 4, claim 4 recites, “the plate” in line 4. There is insufficient antecedent basis for this limitation in the claims. It appears this language is intended to refer to “the projecting plate” and will be interpreted as such.
Re claim 5, claim 5 recites, “wherein the actuator device comprises: a front hole passing through the front wall” in line 4. The front hole and the front wall art parts of the casing, per the figures and specification. Thus, it is unclear how the actuator device can include these features, given that the actuator device is 53 and not 15. It appears this language is directed to pieces of the casing and will be interpreted as such.
Re claim 6, claim 6 recites that the rod comprises a net in line 2. It is unclear how a rod has a net, and this appears to potentially be a typographical error due to a mistranslation. [0053] recites that the “net” is interlocked with threads of the hole. As such, it appears this language is intended to refer to “threads” and will be interpreted as such.
In addition, claim 6 recites, “the length” in line 3, line 4 and in line 4. There is insufficient antecedent basis for this limitation in the claims. It appears this language is intended to refer to “a length” and will be interpreted as such.
Re claim 8, claim 8 recites, “it” in line 3. Numerous elements are previously introduced and thus, it is unclear as to which this language refers. It appears this language is intended to refer to “the sliding element” and will be interpreted as such.
Re claim 13, claim 13 recites, “the removable fixing” in line 2. There is insufficient antecedent basis for this limitation in the claims. It appears this language is intended to refer to “removable fixing” and will be interpreted as such.
Re claim 15-18, claim 15-18 recites, “a shim” in line 1 and/or 2. A shim was already introduced in claims from which these claims depend. It is unclear if this language refers to the same shim or a different shim than those claims. It appears this language is intended to refer to “the shim” and will be interpreted as such.
Claims 2-3, 7, 9-12, 14 are rejected as being dependent on a rejected claim.
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) 1-2, 5-6, 8-10, 17 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Block (US 4,354,770).
Re claim 1, Block discloses a shim (11) comprising:
a casing (13) comprising:
a front wall (33),
a rear wall (31), opposite the front wall (33) in a first direction (Fig. 2, horizontally left to right),
a bottom wall (29), and
an opening (23), opposite the bottom wall (29) in a second direction (Fig. 1, vertically) perpendicular to the first direction (Fig. 2, left to right);
a sliding element (17) located, at least partially (Fig. 4 ), in the casing (13), and configured to be moved (Col 2 lines 53-56) with respect to the casing (13) in the first direction (horizontally) and to be blocked (across the width of 13, via 25 and 27) by the casing (13) in a third direction (across the width) perpendicular to the first direction (horizontally) and to the second direction (vertically);
a movable element (15) configured to pass through the opening (23), comprising an external wall (49/51) opposite the bottom wall (29) in the second direction (vertically), and configured to be moved (Col 2 lines 56-58) in the second direction (vertically) by the sliding element (17) when the sliding element (17) is moved with respect to (Col 2 lines 53-58) the casing (13) in the first direction (horizontally), and to be blocked (via 25/27) by the casing (13) in the third direction (across the width); and
an actuator device (21) making it possible for a user to move (Col 2 lines 53-58) the sliding element (17) in the first direction (horizontally) with respect to the casing (13), so as to move (Col 2 lines 53-58) the movable element (15) in the second direction (vertically);
characterized in that it comprises a retaining mechanism (19) configured to retain (Col 2 lines 27-36) the movable element (17) and the sliding element (15) at least partially in the casing (13) and in a fixed position (Col 2 lines 27-36) with respect to the casing 13, in the absence of actuation of the actuator device (21), and to enable a movement (Col 2 lines 53-58) of the sliding element (17) in the first direction (horizontally) and a movement (Col 2 lines 53-58) of the movable element (15) in the second direction (vertically) during an actuation (Col 2 lines 53-58) of the actuator device (21).
Re claim 2, Block discloses the shim according to claim 1, wherein the sliding element (17) comprises a rear wall (55) which is oblique with respect to (Fig. 1) the first (horizontally) and second (vertically) directions, and wherein the movable element (15) comprises a front wall (47) which is oblique with (Fig. 1) respect to the first (horizontally) and second (vertically) directions and configured to slide over (Fig. 1) the rear wall (55) of the sliding element (17).
Re claim 5 in view of the rejected under 35 USC 112 above, Block discloses the shim according to claim 1, wherein the actuator device (21) comprises: a front hole (39) passing through the front wall (33), and a rod (21) passing into the front hole (39) and having a first end (left end of 21) intended to push and/or pull the sliding element (17) and a second end (right end of 21), located outside of the casing (13), and intended to be actuated by the user (Col 2 lines 53-58).
Re claim 6 in view of the rejected under 35 USC 112 above, Block discloses the shim according to claim 5, wherein the rod (51) comprises a net (threads thereof, being a screw) corresponding to the front hole (39), and wherein the length (of 13) of the casing (13) is greater than or equal to (Fig. 1) the sum of the length (Fig. 1) of the sliding element (17) and of the length (Fig. 1) of the net (threads of 21).
Re claim 8, Block discloses the shim according to claim 1, wherein the entire sliding element (17) is moved away from the front wall (33) and is moved closer to the rear wall (31) when it is moved by the actuator device (21).
Re claim 9, Block discloses the shim according to claim 1, wherein the movable element (15) is configured to be blocked by the rear wall (31) of the casing (13) in the third direction (across the width).
Re claim 10, Block discloses the shim according to claim 1, wherein the retaining mechanism (19) comprises: a first part (35, 37) located on a first wall (25) and a second wall (27) of the casing (13), and a second part (53) located on the movable element (15); the first and second walls (25, 27) of the casing (13) being perpendicular to the third direction (across the width).
Re claim 17, Block discloses a method for using (Fig. 4) a shim (11) according to claim 1 (see above), comprising the following steps:
placing (Fig. 4, showing placement) the shim (11) in a space (between 71 and 63) between a first (63) and a second (71) surface; and
actuating (Col 2 lines 53-58) the actuator device (21) until the bottom wall (29) is against (Fig. 4) the first surface (63) and the external wall (of 11) is against the second surface (71).
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) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Block (US 4,354,770) in view of Meyer (US 3,836,118).
Re claim 3, Block discloses the shim according to claim 1, but fails to disclose wherein the sliding element and the movable element are blocked against one another in the third direction by a blocking mechanism located on the sliding element and/or the movable element.
However, Meyer discloses wherein the sliding element (16) and the movable element (18) are blocked against one another in the third direction (across the width) by a blocking mechanism (26) located on the sliding element (16) and/or the movable element (18).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the shim of Block wherein the sliding element and the movable element are blocked against one another in the third direction by a blocking mechanism located on the sliding element and/or the movable element as disclosed by Meyer in order to guide the sliding element and movable element with respect to each other (Col 2 lines 48-50), or to maintain alignment thereof.
Re claim 4, Block as modified discloses the shim according to claim 3, Meyer discloses wherein the blocking mechanism (26) comprises a projecting plate (26) located on the sliding element (16) and perpendicular to the third direction (across the width), and a slot (32) located on the movable element (18) and arranged to receive the plate (26), at least partially (Fig. 2).
Claim(s) 7, 11-15, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Block (US 4,354,770) in view of Steinmeyer (WO2020/011846; Supplied by Applicant).
Re claim 7, Block discloses the shim according to claim 1, but fails to disclose wherein the casing comprises fixing elements making it possible to associate the rear wall to a first surface or to a second surface external to the shim.
However, Steinmeyer discloses wherein the casing comprises fixing elements (12) making it possible to associate the rear wall (rear of 6) to a first surface or to a second surface (any external surface) external to the shim (5).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the shim of Block wherein the casing comprises fixing elements making it possible to associate the rear wall to a first surface or to a second surface external to the shim as disclosed by Steinmeyer in order to maintain the casing in position during use.
Re claim 11, Block discloses the shim according to claim 10, but fails to disclose wherein the first part of the retaining mechanism comprises projections located on the first wall and the second wall of the casing, and the second part of the retaining mechanism comprises recesses located on a first wall and a second wall of the movable element, and provided to receive the projections; the first and second walls of the movable element being perpendicular to the third direction; the shim being configured such that the projections move away when the movable element is moved by the sliding element.
However, Steinmeyer discloses wherein the first part (36’) of the retaining mechanism (36’, 25’) comprises projections (36’) located on the first wall (left/right wall of 34’) and the second wall (left/right wall of 34’) of the casing (34’), and the second part (25’) of the retaining mechanism (36’, 25’) comprises recesses (on 25’) located on a first wall (left/right walls of 7’) and a second wall (left/right walls of 7’) of the movable element (7’), and provided to receive the projections (36’); the first and second walls (left/right walls of 7’) of the movable element (7) being perpendicular to the third direction (across the width); the shim (Fig. 8) being configured such that the projections (36’) move away (any direction is away as no point of reference is provided) when the movable element (7) is moved by the sliding element (6’).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the shim of Block wherein the first part of the retaining mechanism comprises projections located on the first wall and the second wall of the casing, and the second part of the retaining mechanism comprises recesses located on a first wall and a second wall of the movable element, and provided to receive the projections; the first and second walls of the movable element being perpendicular to the third direction; the shim being configured such that the projections move away when the movable element is moved by the sliding element as disclosed by Steinmeyer in order to maintain alignment during use.
Additionally, the language “when” is language that suggests or makes optional the subsequent limitation or limitations. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. See § MPEP 2103 (C).
Re claim 12, Block discloses the shim according to claim 1, but fails to disclose wherein the movable element comprises a main element configured to be moved by the sliding element, and a first removable element configured to be removably fixed to the main element and to increase the thickness of the movable element in the second direction.
However, Steinmeyer discloses wherein the movable element (6) comprises a main element (6) configured to be moved by the sliding element (7), and a first removable element (34) configured to be removably fixed (via sliding) to the main element (6) and to increase the thickness (Fig. 7c) of the movable element (6) in the second direction (vertically).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the shim of Block wherein the movable element comprises a main element configured to be moved by the sliding element, and a first removable element configured to be removably fixed to the main element and to increase the thickness of the movable element in the second direction as disclosed by Steinmeyer in order to increase the maximum adjustable distance ([0062]).
Re claim 13, Block discloses the shim according to claim 12, Steinmeyer discloses wherein the removable fixing (24/37) between the main element (6) and the first removable element (34) comprises a pin (37) and a mortise (24).
Re claim 14, Block discloses the shim according to claim 13, but fails to disclose comprising an additional removable element configured to be removably fixed to the first removable element and to increase the thickness of the movable element in the second direction.
However, it would have been obvious one having ordinary skill in the art before the effective filing date of the claimed invention to modify shim of Block further comprising an additional removable element configured to be removably fixed to the first removable element and to increase the thickness of the movable element in the second direction in order to increase the maximum adjustable distance even more, per [0062] of Steinmeyer. It has been held that the duplication of parts is considered within the level of ordinary skill in the art absent production of a new or unexpected result. In re Harza, 274 F.2d 669.
Re claim 15, Block discloses an assembly (Fig. 4) comprising:
a shim (Fig. 1) according to claim 12 (see above),
but fails to disclose at least one replacement removable element configured to be fixed to the main element instead of the first removable element, the replacement removable element and the first removable element having different thicknesses.
However, Steinmeyer discloses at least one replacement removable element (Fig. 9, both elements 34’) configured to be fixed to the main element (6) instead of the first removable element (one element 34’), the replacement removable element (both 34’) and the first removable element (one element 34’) having different thicknesses (Fig. 9).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the shim of Block at least one replacement removable element configured to be fixed to the main element instead of the first removable element, the replacement removable element and the first removable element having different thicknesses as disclosed by Steinmeyer in order to increase the maximum adjustable distance ([0062]).
Re claim 18, Block discloses a method (Fig. 4) for using a shim (11) according to claim 12 (see above), comprising the following steps:
placing (Fig. 4 showing placement) the casing (13), the sliding element (17) and the main element (Steinmeyer: 6) in a space (between 63 and 71) between a first (71) and a second (63) surface;
fixing (Steinmeyer: Fig. 8 showing fixation) the first removable element (34) to the main element (6); and
actuating (Col 2 lines 53-58) the actuator device (21) until the bottom wall (29) is against the first surface (63) and the external wall (of 11) is against the second surface (71).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuzara JR (“Kurzara”) (US 4,829,727) in view of Kurfees (US 6,233,901) and Block (US 4,354,770).
At the outset, it is noted that this claim is being treated as a short-hand independent claim.
Re claim 16, Kuzara discloses a structure (Fig. 1) comprising a shim (91) and a holding element (1a) comprising two clamps (12) fixed to a rigid rod (11) and configured to hold the two vertical uprights (2) of a door (Fig. 1) at a fixed distance from one another (Fig. 1),
but fails to disclose a kit, and the shim as the shim according to claim 1.
However, Kurfees discloses a kit.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the structure of Kuzara to be a kit as disclosed by Kurfees in order to allow for smaller packaging for shipping and transportation.
In addition, Block discloses the shim (11) as the shim according to claim 1 (see above).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the structure of Kuzara with the shim as the shim according to claim 1 as disclosed by Block in order to provide positive contact between surfaces (Col 1 lines 40-53).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at (571)270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635