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 .
Claim Rejections - 35 USC § 112(b)
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 2 and 3 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.
Regarding claim 2, the claim is dependent on claim 1 (“The dust pan of claim 1”), which introduces “a tray; a plurality of ridges; a front edge; walls; and a handle.” Therefore, it’s indefinite why these limitations are being introduces again (“said tray comprising, a plurality of ridges, said ridges being conformed to shape to the grooves of a truck bed or other uneven surface; a front edge, which may be tapered or flat and have a rubber lip attached; and walls extending vertically from the perimeter of the tray on the sides and back of the tray, said walls being connected and forming a continuous vertical surface around the sides and back of the tray, said walls further comprising, a handle extending horizontally from the back wall of the dustpan, said handle being shaped to allow it to be easily grasped by the user.”). This creates ambiguity about whether these are meant to be in addition to the original claim limitations (ex. “a [first] plurality of ridges” and “a [second] plurality of ridges”) or whether these were meant to simply refer back to the originally introduced structures (ex. “the plurality of ridges”). For the purpose of examination, the examiner will consider all these limitations that are duplicates as “the” instead of “a,” meaning that they refer back to the already claimed structures from claim 1.
Regarding claim 2, the claimed “a front edge, which may be tapered or flat and have a rubber lip attached” is indefinite for the language “which may be.” This creates ambiguity about whether this is actually required structure from the claim, or merely a suggestion. In other words, this is currently considered “which may be [or may not be] tapered or flat and have a rubber lip attached.” In considering it this way, this essentially disregards the limitation “tapered or flat and have a rubber lip attached” because whether or not the prior art has this limitation is moot, as it’s not required. However, because of it’s inclusion, the examiner considers that Applicant meant to say that it was required. For the purpose of examination, the examiner will consider this to be “a front edge, which is tapered or flat and has a rubber lip attached”
Regarding claim 2, the claimed “said handle being shaped to allow it to be easily grasped by the user” is indefinite. This seems to be specifying the type of handle, likely in terms of size, shape, etc. In other words, “said handle being shaped to allow it to be easily grasped by the user” is considered to be more specific in terms of definition than simply ““said handle
Regarding claim 3, the claimed “said dust pan allowing the user to place it onto a grooved or uneven surface which matches the shape of the grooves, further allowing the user to sweep debris into the dust pan, collect the debris within the tray and walls of the dust pan, and prevent debris from spilling or being swept under the dust pan” is indefinite. It is the assumption of the examiner that the Applicant is meant to be using this language to further specify the structure. However, this reads as more narrative, giving context for how the device is to be used (placed on the ground, used to sweep debris, collect it, and prevent it from spilling), rather than providing structure.
Additionally, Applicant is seemingly trying to define the structure of the claim on unclaimed structures, such as a “grooved or uneven surface” as claimed. Since they are not claimed, then they become variables, in essence, that can change almost indefinitely as there is an almost infinite possibility for shapes of an uneven and/or grooved surface. This means that “said pan…which matches the shape of the grooves” requires a structure that’s undefined.
Per MPEP 2114:
(I) Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g).
(II) “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
(IV) Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 and/or 35 U.S.C. 103 may be appropriate. See In re Translogic Technology, Inc., 504 F.3d 1249, 1258, 84 USPQ2d 1929, 1935-1936 (Fed. Cir. 2007).
Per MPEP 2173.05(g)
A claim term is functional when it recites a feature "by what it does rather than by what it is" (e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971).
A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step.
Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008)
As best understood, Applicant is attempting to use functional limitations here to further define the structure of “the dust pan.” Applicant does this by seemingly claiming functions (“said dust pan [configured to allow] the user to place it onto a grooved or uneven surface which matches the shape of the grooves”) (“further [configured to allow] the user to sweep debris into the dust pan”) (“[configured to] collect the debris within the tray and walls of the dust pan, and [configured to] prevent debris from spilling or being swept under the dust pan.”). However, these do not convey a structure.
For example, “said dust pan [configured to allow] the user to place it onto a grooved or uneven surface which matches the shape of the grooves” seems to require a certain shape that “matches the shape of the grooves.” If one uses the dust pan on one corrugated surface where it matches the grooves, thus meeting the claimed language. But, such a claimed invention would not become a different claimed invention to moment it is used on a corrugated or grooved surface that doesn’t match it. Therefore, determining whether “said dust pan [configured to allow] the user to place it onto a grooved or uneven surface which matches the shape of the grooves” would be indefinite as just because it didn’t match the grooves of one surface wouldn’t necessarily mean it doesn’t meet the claimed limitation. Applicant is advised to explicitly claim the shape (ex. “grooved,” or “where the spacing of the grooves are 1 inches,” or “the depth of the grooves are 0.5 inches”) rather than define it as a function of an unclaimed structure (ex. “where the bottom looks like [any] grooved surface”).
As to “said dust pan [configured to prevent] debris from spilling or being swept under the dust pan,” this is indefinite as to what structure is required. While it’s understood that the plurality of ridges aid in this, the term “prevent” or “preventing” is a relative term. For example, the already claimed “tray” prevents debris from spilling or being swept under the dust pan.” But, it may not prevent debris from spilling as much as a “tray” and “plurality of ridges.” Or, additionally, the “tray” and “plurality of ridges” may not prevent debris from spilling as much as some other, additional structure. Therefore, one is left to either treat this so broad that it becomes meaningless as any surface can, to a degree, prevent debris from spilling, or to treat this more specifically to an undefined degree (Which structure is considered to prevent debris from spilling? The tray? The tray and ridges? The tray, ridges, and some other structure?). Since this limitation is included in the claim, there is an assumption that it further limits the structure and, as such, won’t be considered meaningless. Therefore, it will be considered indefinite. Applicant is advised either to just remove this limitation if it is, indeed, non-limiting or to amend to specify the structure that applicant considers the structure responsible for that function.
Lastly, verbs like “allowing,” “collect” and, possibly, “prevent” imply a method step rather than conveying a function. For example, “said dust pan allowing the user to place it onto a grooved or uneven surface” does not convey that the dust pan has a functional structure for doing that, but implies that the dust pan is used for the user to place it on a grooved or uneven surface. If Applicant is attempting functional claiming, Applicant should change these to “configured to”, such as “said dust pan [configured to allow] the user to place [the dust pan] onto a grooved or uneven surface,” “[the dust pan configured to] collect the debris within the tray,” and “[the dust pan configured to] prevent debris from spilling.”
However, the Examiner will also note that this is conveying that the overall device is capable of performing these functions. As shown above in the MPEP: For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008). This would fall under that category. Applicant is advised to point out the specific structure that achieves said function rather than merely saying the dust pan, in general, is capable of said function.
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 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jackson (US-2022/0388768).
Regarding claim 1, Jackson (US-2022/0388768) discloses a dust pan (device 600) (Fig. 6A) for truck beds comprising,
a tray (bottom portion 612);
a plurality of ridges (teeth 630A-630D form ridges on the bottom) (Figs. 6A, 6B);
a front edge (webs 640A-650H form a front edge) (Figs. 6A, 6B);
walls (side walls 616A, 616B); and
a handle (handle 650) (Fig. 6A).
As to being a “dust pan for truck beds,” this is considered to be a statement of intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). In short, whether the claimed dust pan is used for truck beds, or for some other intended purpose, does not differentiate it from prior art which possess the same claimed structure. Since the prior art has all the claimed structure, then it therefore anticipates the claim.
Regarding claim 3, Jackson discloses the dust pan of claim 1, said dust pan allowing the user to place it onto a grooved or uneven surface which matches the shape of the grooves (“In some implementations, one or more steps in the method 700 can be repeated one or more times to aid in cleaning all or substantially all of the grooves in the corrugated surface.”) [Jackson; paragraph 0036], further allowing the user to sweep debris into the dust pan, collect the debris within the tray and walls of the dust pan, and prevent debris from spilling or being swept under the dust pan (“In some implementations, one or more steps in the method 700 can be repeated one or more times to aid in cleaning all or substantially all of the grooves in the corrugated surface.”) [Jackson; paragraph 0036].
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rohrman (US-0,024,331).
Regarding claim 1, Rohrman (US-0,024,331) discloses a dust comprising, a tray (bottom of the pan A); a plurality of ridges (flutes D); a front edge (front edge of pan A); walls (sides of the pan ‘c’); and a handle (B) (see annotated Figure(s) below).
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As to being a “dust pan for truck beds,” this is considered to be a statement of intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). In short, whether the claimed dust pan is used for truck beds, or for some other intended purpose, does not differentiate it from prior art which possess the same claimed structure. Since the prior art has all the claimed structure, then it therefore anticipates the claim.
Regarding claim 3, Rohrman discloses the dust pan of claim 1, said dust pan allowing the user to place it onto a grooved or uneven surface which matches the shape of the grooves (the prior art’s pan can be placed on any surface and has grooves which would match the shape of corresponding grooves), further allowing the user to sweep debris into the dust pan, collect the debris within the tray and walls of the dust pan (Rohrman’s device is to a dust pan, see Title, which seeps up debris and collects it in the tray for disposal), and prevent debris from spilling or being swept under the dust pan (the tray holds the dust/debris so that it doesn’t spill, and the lip would prevent at least some debris from being swept under the dust pan).
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackson (US-2022/0388768) in view of McCallan (US-1,384,076) and Rohrman (US-0,024,331).
Regarding claim 2, Jackson discloses the dust pan of claim 1, wherein the tray (bottom portion 612) is a horizontal surface forming the bottom of the dust pan (600) (Figs. 6A, 6B), said tray comprising, a plurality of ridges (teeth 630A-630D form ridges on the bottom), said ridges (teeth 630A-630D) being conformed to shape to the grooves of a truck bed or other uneven surface (“Generally, the device 100 can be used for aiding in cleaning a corrugated surface (e.g., a truck bed).”) [Jackson; paragraph 0020]; a front edge (webs 640A-650H form a front edge), which may be tapered or flat (Figs. 6A, 6B); and walls (side walls 616A, 616B) extending vertically from the perimeter of the tray (bottom portion 612) on the sides and back of the tray (bottom portion 612) (back wall shown in Figure 6B), said walls being connected and forming a continuous vertical surface around the sides and back of the tray (612) (Figs. 6A, 6B), but fails to disclose said walls further comprising, a handle extending horizontally from the back wall of the dustpan, said handle being shaped to allow it to be easily grasped by the user, and the front edge having a rubber lip attached.
As to the rubber lip, McCallan (US-1,384,076) teaches “a dust pan, having a strip of resilient material, such as rubber detachably connected to [the dust pan’s] front edge to provide a close union of the pan with the floor or surface during sweeping operation” [McCallan; page 1, lines 17-22]. Since McCallan is pertinent to dust pans, like that of Jackson’s, it therefore would’ve been obvious to make the front edge of Jackson’s dust pan have a rubber lip, as taught by McCallan, in order to provide a close union between the dust pan and the floor to prevent creating a gap for debris to pass through underneath the dust pan “a dust pan, having a strip of resilient material, such as rubber detachably connected to [the dust pan’s] front edge to provide a close union of the pan with the floor or surface during sweeping operation” [McCallan; page 1, lines 17-22].
As to said walls having a handle extending horizontally from the back wall of the dustpan, Jackson’s extends from the top of the dust pan. However, it is known in the art of dust pans to attach the handle to the rear side of the pan/tray (i.e. the back wall), such as shown by Rohrman (US-0,024,331) (“B, is the handle of the pan made in the usual manner but attached to the rear side only of the pan”) [Rohrman; page 1, lines 79-82]. This is an obvious optimization depending on user preference, such as operating the dust pan from a standing position, where the handle must be more vertical, as shown by Jackson, or a handheld dust pan which is more convenient and compact, such as that shown by Rohrman. As such, it would have been obvious to one of ordinary skill in the art to modify the tray of Jackson such that the handle were mounted on the rear side, as shown by Rohrman, in order to create a hand dust pan that would appeal to consumers who needed a more compact and convenient dust pan, such as for around the house.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-534875, US-1202791, US-20080143128, US-20030150074, and US-20040231086 are pertinent to claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL DILLON CRANDALL whose telephone number is (571)270-5947. The examiner can normally be reached Mon - Fri 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at 571-270-5947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOEL D CRANDALL/Examiner, Art Unit 3723