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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-5, 8-9, 13, 19-21 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-9 and 14 of U.S. Patent No. 11,618,154 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the presented application comprises a broader scope than that of the disclosed patent. One having ordinary skill in the art is able to simplify the presented patent in order to achieve the invention of the application. Furthermore, the narrower scope of patent can still be found within the depend claims of the provided application.
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 rack of claim 5 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.
The drawings are also objected to under 37 CFR 1.83(a) because they fail to show the rack 146 as described in paragraph 32 the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). 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.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim provides the limitation of the jaws having a layer with a hardness of specifically “80 Shore A”. However, the specification lacks such a measurement for the hardness of the material, rather, paragraph 35 discloses a hardness of “55 Shore A”. Does the difference of hardness have an overall affect on the claimed invention? Does having a larger hardness value provide better gripping strength or improved strength to the overall invention? According to the specification, the objective of the invention is to provide a compact and foldable reaching and grasping tool. It is for this reason that the question arises of whether the hardness value of the layer disposed on the jaws is pertinent to the solution of the proposed problem of compatibility.
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 19-21 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 19 recites the limitation "the lock pawl" in first line of the claim. It is unclear whether the applicant is attempting to introduce a new element or if they are referring to a previous disclosed limitation. If it is the former, the limitation should read "a lock pawl". There is insufficient antecedent basis for this limitation in the claim. Claims 20-21 are also rejected as they depend on claim 19.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-2, 4-13, 17 and 22-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith et al. (US 20210245361 A1).Regarding claim 1, Smith et al. discloses a reaching and grabbing tool (Fig. 1-7; Pg. 2, ¶28, reaching and grabbing tool 20) comprising: a trigger assembly having at least one trigger (Fig. 1-7; Pg. 2, ¶¶28, trigger assembly 22 comprising triggers 38, 40) and a handle (Fig. 1-7; Pg. 1, ¶6, disclosing the tool having a handle); a jaw assembly having a first jaw and a second jaw moveably coupled to the first jaw (Fig. 1-7; Pg. 3, ¶33, the jaw assembly 24 comprising jaws 72, 74), the second jaw is operably connected to the at least one trigger to move the second jaw (Pg. 2, ¶27), each of the first jaw and second jaw having a layer co-molded over at least a portion of an outer surface (Pg. 3, ¶33, disclosing a layer if non-slip material); and a hinge assembly disposed between the trigger assembly and the jaw assembly (Fig. 1-7; Pg. 2, ¶¶28, hinge assembly 26).
Regarding claim 2, Smith et al. discloses wherein the layer is made from thermoplastic elastomer (Pg. 3, ¶33, the layer being made of a soft and non-slip material corresponds to thermoplastic elastomer).
Regarding claim 4, Smith et al. discloses wherein the hinge assembly is selectively lockable between an operating position and a folded position at which the jaw assembly is sidelong-adjacent the trigger assembly and out-of-plane from the handle (Pg. 2, ¶14).
Regarding claim 5, Smith et al. discloses wherein the trigger assembly further comprises: a housing comprising a rack; a first trigger operably connected to the second jaw and rotatably coupled to the housing; and a second trigger rotatably coupled to the first trigger and having a plurality of teeth positioned to selectively engage the rack (Fig. 2-3; ¶30, triggers 38, 40 disposed in housing 36 having a plurality of teeth 64 that engages with a rack 66).
Regarding claim 6, Smith et al. discloses wherein the second trigger being selectively movable between an engaged position and a disengaged position, rotating from the engaged position to the disengaged position (Fig. 2-3; ¶30).
Regarding claim 7, Smith et al. discloses wherein the first jaw is in a fixed position relative to the hinge assembly and the second jaw is configured to move from an open position to a second position in response to movement of the at least one trigger (Pg. 3, ¶32).
Regarding claim 8, Smith et al. discloses the second jaw further comprises a plurality of teeth; and the jaw assembly further comprises a moveable actuator including a plurality of teeth, the plurality of teeth of the moveable actuator includes a greater number of teeth than the plurality of teeth of the second jaw, wherein the plurality of teeth of the moveable actuator and the plurality of teeth of the second jaw cooperate the move the second jaw between the open position and the second position (Fig. 4; Pg. 3, ¶35, movable jaw 74 comprising a plurality of teeth 98 which engages the rack portion 86 of the movable actuator 84).
Regarding claim 9, Smith et al. discloses further comprising a cable operably coupled between the first trigger and the first jaw, the cable extending through the hinge assembly (Pg. 4, Claim 3).
Regarding claim 10, Smith et al. discloses wherein the second trigger includes a pair of teeth (Pg. 4, Claim 5, disclosing the second trigger comprising a plurality of teeth); and the cable passes through the pair of teeth of the second trigger (Fig. 2-4; Pg. 3, ¶35, the cable 52 passing through the trigger 38).
Regarding claim 11, Smith et al. discloses wherein the first trigger and the second trigger cooperate to hold the first jaw and the second jaw in a closed position (Pg. 3, ¶32, triggers 38, 40 cooperating to squeeze or hold the jaws in a locked position).
Regarding claim 12, Smith et al. discloses further comprising a first biasing member operably coupled between the second trigger and the first trigger (Fig. 2-4; Pg. 2, ¶30, spring 68 acting as a biasing member disposed between triggers 38, 40).
Regarding claim 13, Smith et al. discloses further comprising: a first pole coupled between the trigger assembly and the hinge assembly (Fig. 1-7; Pg. 2, ¶28, first pole 28); and a second pole coupled between the hinge assembly and the jaw assembly (Fig. 1-7; Pg. 2, ¶28, second pole 30), wherein the cable comprises: a first cable coupled to the first trigger and extending through the first pole, the hinge assembly and a proximal portion of the second pole; a second cable coupled to the second jaw and extending through a distal portion of the second pole (Fig. 2-4; Pg. 3, ¶36, cable 52A); and a second biasing member coupled between the first cable and the second cable and extending through the second pole, the second biasing member includes a compressed position and an extended position (Fig. 2-4; Pg. 3, ¶36, cable 52B).
Regarding claim 17, Smith et al. discloses wherein the first trigger is rotatably coupled to the housing via a first pivot (Fig. 2; Pg. 2, ¶29, pivot 44) and the second trigger is rotatably coupled to the first trigger via a second pivot which is separate from the first pivot (Fig. 2; Pg. 2, ¶30, pivot 62).
Regarding claim 22, Smith et al. discloses wherein a fourth biasing member is disposed between the jaw assembly and the cable (Fig. 4; Pg. 3, ¶33, compression spring 90 acting as a fourth biasing member).
Regarding claim 23, Smith et al. discloses wherein the fourth biasing member biases the second jaw in an open position, and compresses in response to movement of the first trigger, biasing the first and the second jaw in a closed position (Pg. 3, ¶34).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 20210245361 A1) as applied to claims 1-2, 4-13, 17 and 22-23 above, and further in view of Bridges et al. (US 20180021925 A1).
Regarding claim 3, Smith et al. discloses the claimed invention, except for the specific numerical hardness of 80 Shore A. However, Bridges et al. teaches wherein the jaw layer has a hardness of at least 80 Shore A (Pg. 3, ¶31). Smith et al. and Bridges et al. are both considered to be analogous to the claimed invention because they are in the same field of a gripping mechanisms. Therefore, it would have been considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a gripping layer with a hardness of 80 Shore A, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In other words, narrowing a general condition taught by the prior art to a specific numerical value has been held to be an obvious variation thereof. In re Aller, 105 USPQ 233 and In re Boesch, 205 USPQ 215. See MPEP 2144.05 (II) A.
Claims 14-16 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 20210245361 A1) as applied to claims 1-2, 4-13, 17 and 22-23 above, and further in view of Buzby et al. (US 20070035144 A1).
Regarding claim 14, Smith et al. discloses further comprising: a first pole coupled between the trigger assembly and the hinge assembly (Fig. 1-7; Pg. 2, ¶28, first pole 28); and a second pole coupled between the hinge assembly and the jaw assembly (Fig. 1-7; Pg. 2, ¶28, second pole 30); a cable coupled to the first jaw and extending through a distal portion of the second pole, wherein the cable is coupled to the first trigger and extending through the first pole, the hinge assembly and a proximal portion of the second pole (Fig. 2-4; Pg. 3, ¶36, cable 52A, 52B); and a second biasing member coupled between the cable and the cable and extending through the second pole, the second biasing member includes a compressed position and an extended position (Pg. 3, ¶36, extension spring 91 acting as a second biasing member and is further understood to be the spring connecting elements 52A and 52B in Fig. 4B).
Smith et al. discloses the claimed invention except that a cable is used instead of a flexible rod. Buzby et al. shows that a rod is an equivalent structure or known variation of the cable in the art (Pg. 4, ¶40). Therefore, because these two elements were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a cable for a flexible rod. Doing so improves the connection between biasing members and the actuator due to its increased rigidity.
Regarding claim 15, Smith et al. discloses wherein the hinge assembly is in the operating position relative to the second biasing member in the compressed position and the hinge assembly is in the folded position relative to the second biasing member in the extended position (Pg. 3, ¶38).
Regarding claim 16, Smith et al. discloses wherein the cable has a first length in the compressed position and a second length in the extended position (Fig. 1, 5; Pg. 3-5; ¶¶39-40).
Regarding claim 18, Smith et al. discloses wherein the hinge assembly further comprises: a first housing including a first tubular projection, the first tubular projection configured to couple to the first pole (Fig. 5-7; Pg. 3, ¶37, first housing 104 having a tubular projection 106); a second housing including a second tubular projection, the second tubular projection configured to couple to the second pole (Fig. 5-7; Pg. 3, ¶37, a second housing 108 having a tubular projection 110); a lock (Fig. 5-7; Pg. 3, ¶37, lock pawl 114); and a release button (Fig. 5-7; Pg. 3, ¶37, release button 102).
Regarding claim 19, Smith et al. discloses wherein the first housing includes a recess, the lock pawl movably disposed in the recess (Fig. 5-7; Pg. 3, ¶38, recess portions 124), a third biasing member disposed to bias the lock pawl into the recess (Fig. 5-7; Pg. 3, ¶38, pair of teeth 122 corresponding to a third biasing member), and the release button operably coupled to the lock pawl (Fig. 5-7; Pg. 3, ¶38).
Regarding claim 20, Smith et al. discloses wherein the lock pawl is arranged to move from an engaged position within the recess to a released position in response to movement of the release button (Fig. 5-7; Pg. 3, ¶¶37-38).
Regarding claim 21, Smith et al. discloses wherein the lock pawl is in the engaged position when the hinge assembly is in the operating position and when the hinge assembly is in the folded position (Pg. 3, ¶38).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references refer to reaching and grabbing tools which have folding functionality as well as similar actuating mechanisms to that of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERMIA E MELIKA whose telephone number is (571)270-5162. The examiner can normally be reached Monday through Thursday 9:00 AM to 6:00 PM EST and a flexed schedule on Fridays from 9:00 AM to 5:00 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, Victoria P. Augustine can be reached at (313) 446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ERMIA E. MELIKA
Examiner
Art Unit 3654
/ERMIA E. MELIKA/ Examiner, Art Unit 3654
/Victoria P Augustine/ Supervisory Patent Examiner, Art Unit 3654
Prosecution Insights