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 .
Election/Restrictions
Applicant’s election of Group I in the reply filed on March 16, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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:
“rotation prevention member” recited in claim 19
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.
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.
The limitation “rotation prevention member” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“member”).
(B) The generic placeholder is modified by functional language (“configured to prevent a rotation of the rotating pipe when the handle body is separated from the power transmission part”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “rotation prevention member” will be interpreted so as to comprise ‘a lower support body mounted on a lower inner side of the gear housing; and an upper support body mounted on an upper portion of the lower support body such that the upper support body is elastically supported in an upward direction, the upper support body being provided with a rotation prevention protrusion which is inserted into the coupling hole of the second bevel gear,’ as taught by the Specification (paragraphs 16 and 74), or an equivalent thereof.
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 13 – 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.
The preamble to claim 13 recites “the clamp stick being configured to clamp a work object by using a hook assembly inserted into a holder part or being configured to rotate the clamped work object by rotating the holder part by using an electric handle connected to the holder part through an insulating rod part.” The preamble is indefinite for several reasons. First, regarding the recitation of the “clamped work object,” Examiner notes that antecedent basis for “clamped work object” is previously set forth in the limitation (“the clamp stick being configured to clamp a work object ...”). However, the antecedent basis for the ‘clamped work object’ is recited in the alternative to “the clamped work object.” The is because the preamble recites “the clamp stick being configured to clamp a work object ... or being configured to rotate the clamped work object ... Therefore, it is unclear as to whether Applicant intends the preamble to require the ‘clamp stick’ be configured to ‘clamp the work object’ as well as ‘rotate the clamped work object,’ or whether Applicant intends the preamble to require that the ‘clamp stick’ be configured to ‘clamp the work object’ or ‘rotate the work object.’ For the purposes of this Office Action, Examiner will interpret the preamble such that the ‘clamp stick’ is required to ‘clamp the work object’ as well as ‘rotate the clamped work object.’ Examiner further notes that the body of the claim does not expressly require or otherwise refer to the “electric handle.” Therefore, it is generally unclear as to whether Applicant intends the claim to positively require the ‘clamp stick’ to include “an electric handle connected to the holder part,” as recited by the preamble, or whether the ‘clamp stick’ is configured for use with “an electric handle connected to the holder part.”
Claim 1 further recites the limitation “the double pawl operation unit mounted on a rear side of the insulating rod part.” While the claim previously provides proper antecedent basis for “the double pawl operation unit,” the claim does not provide proper antecedent basis for “the double pawl operation unit mounted on a rear side of the insulating rod part.” For the purposes of this Office Action, Examiner will interpret the limitation as “the double pawl operation unit is mounted on a rear side of the insulating rod part.”
Claim 16 recites the limitation “both side surfaces of the upper rack gear.” Because the claim does not previously set forth the ‘upper rack gear’ having ‘side surfaces,’ there is insufficient antecedent basis for the limitation in the claim. For the purposes of this Office Action, Examiner will interpret the limitation as “upper and lower surfaces of the upper rack gear.”
Allowable Subject Matter
Claims 13 - 19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 13, Examiner closest art, Bottner (U.S. Patent Number 8,029,035), teaches an electrically insulating rotary grip-all clamp stick (abstract), the clamp stick comprising: an operation rod mounted such that the operation rod passes through a hollow of an insulating rod part (figures 1 and 4, element 23 being the ‘operation rod’ and element 18 being the ‘insulating rod part’; column 4, lines 24 – 32), the operation rod being mounted such that a front side of the operation rod is connected to a rear side of a hook assembly (figures 4 and 5, element 35a and 14 being the ‘hook assembly’ and element 23; column 6, lines 19 – 40); a double pawl operation unit is mounted on a rear side of the insulating rod part (figure 6, elements 46a, 44a, 42, 22, and 20 being the ‘double pawl operation unit’ and element 18; column 6, line 55 – column 7, line 52), and the double pawl operation unit being mounted such that the double pawl operation unit is connected to a rear side of the operation rod (figure 6, elements 46a and 23), and the double pawl operation unit being configured to adjust a depth at which the hook assembly is inserted into a holder part (figures 1 – 6, element 19 being the ‘holder part’ and elements 46a, 44a, 42, 22, 35a, and 14; column 6, line 55 – column 7, line 52), wherein the double pawl operation unit comprises: an extension rod part mounted on the rear side of the insulating rod part (figure 6, element 20 being the ‘extension rod part’ and element 23), the extension rod part having a hollow (figure 6, element 20); an operation knob, the operation knob being mounted on an outer circumference of the extension rod part such that the operation knob is capable of being moved in front and rear directions (figure 6, element 22 being the ‘operation knob’ and element 20); a lower rack gear having a length in the front and rear directions (figure 6, element 42 being the ‘lower rack gear’), the lower rack gear being mounted in the hollow of the extension rod part (figure 6, elements 42 and 20), and the lower rack gear being mounted such that the lower rack gear is connected to the rear side of the operation rod (figure 6, elements 42 and 23); a pinion part mounted on a rear side of the extension rod part (figure 6, elements 46a and 44a being the ‘pinion part’ and element 23), and having a pinion gear which corresponds to the lower rack gear and which is provided on an upper portion of the lower rack gear (figure 6 element 44a being the ‘pinion gear’ and element 42).
However, Bottner does not teach, either expressly or implicitly, the double pawl operation unit further comprising an upper rack gear having a length in the front and rear direction, the upper rack gear being fixedly mounted in a hollow of the operation knob, being fixedly mounted such that the upper rack gear is positioned on an upper portion of the pinion part, corresponding to the pinion gear, and being configured to be moved in a direction same as a movement direction of the lower rack gear by the pinion gear. Examiner notes that gear element 46a of Bottner cannot reasonably be considered to be an “upper rack gear” because ‘rack gear’ is a term known in the art to require a ‘linear gear.’ Because the gear element 46a of Bottner is clearly a ‘circular gear’ (figure 6, element 46a), gear element 46a cannot reasonably be considered to be the ’upper rack gear.’
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
Prosecution Insights