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 .
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 adjustable housing being “detachably connected” as recited in claims 4 and 5 must be shown or the feature(s) canceled from the claim(s). It is noted that the drawing currently only show the adjustable housing and arm member as a single integral element. 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
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.
Claims 4 and 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claims 4 and 5 both recite: “wherein the adjustable housing is detachably connected to the first end of the substantially linear arm member.” The specification filed on March 5, 2024, paragraph 0035 states that the adjustable housing is detachably connected to the first end of the arm member “by any means known in the art, a rotatable ball and socket, pin, screw, bolt combinations thereof or the like, for example.” One of ordinary skill in the art would understand that a connection between two elements with at least a pin, screw or bolt would create a connection that is fixed in place. How would that type of fixed connection allow for the adjustable angle required in the independent claims 1 and 3 – this the subject matter that not described in the specification in such a way as to enable one skilled in the art to which it pertains.
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 1-6 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.
Claims 1 and 3 recites: “the adjustable housing selectively adjustable in relation to the arm member such that the angle of the adjustable housing in relation to the arm member is adjustable from an angle of 30 degrees to an angle of 120 degrees” It is unclear how the housing can be adjustable by the particularly claimed degrees when the arm member, first end and second end are all integral as seen in Figures 1 and 2. For purpose of examination, it is understood that the housing is adjustable in relation to the second end of the arm member, not the arm member as a whole as currently claimed.
Claim 6 recites: “the first end of the arm member having an adjustable housing having a threaded borehole therethrough such that the angle of the threaded borehole is selectively adjustable from an angle of about 30 degrees to an angle of about 120 degrees” – it is unclear how the borehole can be adjustable within itself. It is further unclear what the angle is relative to. The specification, specifically paragraph 0043, does not provide any further explanation of where a possible angle location would be nor do the drawings identify the claimed angle. For purposes of examination, since it is understood that the threaded bolt is able to move up and down within the threaded borehole having such a feature will be considered to meet the claimed limitation of the “borehole (being) selective adjustable (in the claimed range)”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Awot (US Patent 2,799,190) in view of Emmert (US Patent 10,022,762).
As best understood, Awot discloses a paintless dent removal tool for removing a dent from a vehicle, the paintless dent removal tool comprising:
a threaded bolt (44) having a top end and a bottom end, the threaded bolt for knocking down dents out of the surface of a vehicle;
a substantially linear arm member (32) having a first end and a second end, the first end of the arm member having an adjustable housing (38) connected thereto, the adjustable housing having a threaded borehole therethrough, the adjustable housing selectively adjustable in relation to the arm member [Column 3, lines 3-10], the threaded borehole for detachably securing the threaded bolt in a position transverse to the arm member [as seen in at least Figure 3],
the second end of the arm member having a foot member (56, 60, 66, 67, 68) connected thereto, the foot member having a substantially flat lower surface [as seen in Figure 5] and a cap (56) extending over the substantially flat lower surface, the foot member configured to be placed on the surface of the vehicle for controlling dampening, vibration, and improving the accuracy of the paintless dent removal tool;
a tip member (20) detachably connected to the bottom end of the threaded bolt, the tip member having a first end and a second end [as seen in Figure 6]; and
a cap member (46) detachably connected to the top of the end of the threaded bolt, the cap member for protecting the top end of the threaded bolt when struck by the striking tool.
Awot discloses the invention substantially as claimed except for wherein the angle of the adjustable housing in relation to the arm member is adjustable from an angle of 30 degrees to an angle of 120 degrees. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed angle, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. It is noted that Applicant has not disclosed that having this particular angle provides an advantage, is used for a particular purpose, or solves a stated problem [original specification paragraph 0043] and since it appears to be an arbitrary design consideration which fails to patentable distinguish over Awot.
Awot discloses the invention substantially as claimed except for wherein the cap is a rubber cap. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the particularly claimed material composition of the structures since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of mechanically efficiency. In re Leshin, 125 USPQ 416.
Awot discloses the invention substantially as claimed except for the first end of the tip member having a greater diameter than the second end of the tip member such that the tip member narrows from the first end towards the second end, the first end having a threaded borehole therethrough for connecting the first end of the tip member to the threaded bolt, the second end of the tip member having a substantially rounded point for knocking down dents on the surface of the vehicle. Emmert is relied upon to teach a dent repair system including multiple interchangeable tip members such as a tip member (234) having a first end and a second end wherein the first end of the tip member has a greater diameter than the second end of the tip member such that the tip member narrows from the first end towards the second end, as seen in Figure 5 and the second end of the tip member having a substantially rounded point (240) for knocking down dents on the surface of the vehicle. In the embodiment shown in Figure 5, Emmert further disclose that the first end of the tip member has fastening means (242). However, it is noted that the fastening means have non-limiting examples such as, a pin, adhesive, magnets and threads that extend into a recess in a shaft [Column 5, lines 55-65]. It is considered to be well-known that a threaded borehole in the tip member could be an alternative fastening means. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute Awot’s tip member with Emmert’s tip member including wherein the first end of the tip member has a greater diameter than the second end of the tip member such that the tip member narrows from the first end towards the second end, the first end having a threaded borehole therethrough for connecting the first end of the tip member to the threaded bolt of Awot, the second end of the tip member having a substantially rounded point, as taught by Emmert, since substitution of one known element for another obtains predictable results, namely removing dents from vehicles. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)]. MPEP 2141.
With regards to claim 4, Awot discloses wherein the adjustable housing (38) is detachably connected to the first end of the substantially linear arm member (32), [element 38 is mounted to 32 via pivots 40, Column 5, lines 50-60].
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Awot in view of Emmert and Holsapple et al. (hereafter “Holsapple”)(US Patent 3,712,106).
Awot discloses the invention substantially as claimed except for wherein the foot member is detachably connected to the arm member by a ball, the ball configured to move, rotate and adjust so that the paintless dent removal tool may be stabilized on a variety of different angled surfaces to provide enhanced stability, guidance, positioning and accuracy for dent removal. Awot discloses that foot member (56, 60, 66, 67, 68) is detachably connected to the arm member, as seen in Figures 3 and 5. Holsapple is relied upon to teach a dent removal tool having a foot member (42/41) detachably connected to the arm member by a ball (39), the ball configured to move, rotate and adjust so that the paintless dent removal tool may be stabilized on a variety of different angled surfaces to provide enhanced stability, guidance, positioning and accuracy for dent removal, as seen in Figure 1. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide Awot’s foot member with a ball connection to the arm member in order to provide a greater variety of different angled surfaces which in turn provides enhanced stability, guidance, positioning and accuracy for dent removal.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Awot in view of Emmert and Weber (US Patent 2,498,320).
The combination of Awot and Emmert teaches a method of providing the tool as claimed and described above except for the particular method of striking the cap member with a striking tool, so that the bottom end of the tip member pushes down upon the outer surface of the vehicle to substantially knock down and remove the dent. Awot discloses positioning the bottom end of the threaded bolt above the dent, as seen in Figure 1 and an operator manipulating the tool by hand to remove a dent.
Weber is relied upon to teach positioning the bottom end of the threaded bolt above the dent, as seen in Figure 1; and striking the cap member (18) with the striking tool (impact hammer B) while the tip member pushes down upon the outer surface of the vehicle to substantially knock down and remove a dent. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute manual operation of Awot’s tool with a striking tool application of Awot’s tool because simple substitution of one known element for another yields predictable results requiring only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)].
With regards to claim 5, Awot discloses wherein the adjustable housing (38) is detachably connected to the first end of the substantially linear arm member (32), [element 38 is mounted to 32 via pivots 40, Column 5, lines 50-60].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Weber (US Patent 2,498,320) in view of Emmert (US Patent 10,022,762).
As best understood, Weber discloses a paintless dent removal tool for removing a dent from a vehicle, the paintless dent removal tool comprising:
a threaded bolt (17) having a top end and a bottom end, the threaded bolt for knocking down dents out of the surface of a vehicle;
a substantially linear arm member (A) having a first end and a second end, the first end (11) of the arm member having an adjustable housing having a threaded borehole (as seen in Figures 1 and 3) therethrough such that the angle of the threaded borehole is selectively adjustable [as noted above in the 112 section, since the threaded bolt 17 is “adjusted” (Column 3, lines 1-15) within the threaded borehole the limitation is considered to be met, as best understood];
a tip member [as seen in Figure 1 and Column 2, lines 50-55] detachably connected to the bottom end of the threaded bolt, the tip member having a first end and a second end,
and a cap member (18) detachably connected to the top of the end of the threaded bolt, the cap member for protecting the top end of the threaded bolt when struck by the striking tool.
The following are considered recitations of intended use:
“for removing a dent from a vehicle”
“the threaded bolt for knocking down dents out of the outer surface of a vehicle”
“the cap member for protecting the top end of the threaded bolt when struck by the striking tool”
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963).
Weber discloses the invention substantially as claimed except for wherein the angle is in a range about 30 degrees to an angle of about 120 degrees. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed angle, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. It is noted that Applicant has not disclosed that having this particular angle provides an advantage, is used for a particular purpose, or solves a stated problem [original specification paragraph 0043] and since it appears to be an arbitrary design consideration which fails to patentable distinguish over Weber.
Weber discloses the invention substantially as claimed except for wherein the first end of the tip member has a greater diameter than the second end of the tip member such that the tip member narrows from the first end towards the second end, the first end having a threaded borehole therethrough for connecting the first end of the tip member to the threaded bolt, the second end of the tip member having a substantially rounded point for knocking down dents on the surface of the vehicle. Weber discloses multiple tip members [as seen in Figure 1 and Column 2, lines 50-55]. Emmert is relied upon to teach a dent repair system including multiple interchangeable tip members such as a tip member (234) having a first end and a second end wherein the first end of the tip member has a greater diameter than the second end of the tip member such that the tip member narrows from the first end towards the second end, as seen in Figure 5 and the second end of the tip member having a substantially rounded point (240) for knocking down dents on the surface of the vehicle. In the embodiment shown in Figure 5, Emmert further disclose that the first end of the tip member has fastening means (242). However, it is noted that the fastening means have non-limiting examples such as, a pin, adhesive, magnets, and threads that extend into a recess in a shaft [Column 5, lines 55-65]. It is considered to be well-known that a threaded borehole in the tip member could be an alternative fastening means. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute Weber’s tip member with Emmert’s tip member including wherein the first end of the tip member has a greater diameter than the second end of the tip member such that the tip member narrows from the first end towards the second end, the first end having a threaded borehole therethrough for connecting the first end of the tip member to the threaded bolt of Weber, the second end of the tip member having a substantially rounded point, as taught by Emmert, since substitution of one known element for another obtains predictable results, namely removing dents from vehicles. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)]. MPEP 2141.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and further show the state of the art: US Patent 2,187,110 and US 2005/0076700.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA M EKIERT whose telephone number is (571)272-1901. The examiner can normally be reached Monday-Friday 8AM-4:30PM EST.
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/TERESA M EKIERT/Primary Examiner, Art Unit 3725