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 .
Response to Amendment
Amendments to the claims received on January 8 have been entered. Claims 1-3, 8, and 15 have been amended and claim 4 has been canceled. The 35 USC § 112(b) rejections, regarding claims 8 and 15 filed on October 17th, 2025 have been withdrawn.
Response to Arguments
Applicant's arguments filed January 8th, 2026 have been fully considered but they are not persuasive.
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[AltContent: textbox (Image 1: Spur element emphasized by perforated box of Salazar's Fig. 1)]Applicant argues, regarding claims 1 and 15, that the limitation regarding the spur, as well as the amended claims, are sufficient to overcome the prior art rejection. It is acknowledged the limitation of a spur was not properly disclosed within the Office Action filed October 17th, 2025. However, the Applicant admits that a pyramid-shaped element is clearly depicted within the primary prior art reference of Salazar (US 6,622,396 B2), and more specifically in figure 1 of the prior art. A depiction of the spur element is highlighted below in the image below.
Furthermore, in response to applicant's argument that by failing to include any information about the pyramid-shaped structure, Salazar is incapable of providing a motivation to include that pyramid-shaped structure in any proposed modification, 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 Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
A prior art structure anticipates if it is capable of performing the claimed function, even if the reference never describes using it in the way intended by the applicant. If the structure is identical or substantially identical, the burden shifts to the applicant to prove the prior art cannot perform the function. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Thus, because the prior art “pyramid-shaped” element possess the same structural characteristics as the claimed spur, it is inherently capable of performing the claimed stabilization function.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of Gename’s (US 4,251,038 A) rollers with the pyramid-shaped structure shown in Salazar to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, the pyramid-shaped structure of Salazar is adapted to act as a bottom cover so as to prevent the wound material from escaping the bottom of the reel (clearly depicted in figure 1 of Salazar). Gename provides rollers at the bottom of the reel, where Salazar includes the pyramid-shaped element, to allow for the dispensing of the wound material. The pyramid-shaped element does NOT limit the winding or unwinding of the material as it allows the material to escape from either end of the opening above the pyramid. Gename also provides the reeling of the material from any direction as the material is flexible. One skilled in the art may incorporate the rollers taught by Gename into the reel of Salazar by simply disposing the rollers within the pyramid-shaped element which would act as a cover. Doing such a feat does not inhibit the functionality of the reel, but rather improves it to provide a frictionless guide as well as provide protection for the incorporated rollers.
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.
Claim 14 is 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 14 recites the limitation "a pair of plates" in the second line of the claim. It is unclear whether the applicant is attempting to introduce a new limitation of they are referring to “a pair of plates” disclosed in claim 1. If it is the latter, the limitation should read “the pair of plates”. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Dependent claim 3 discloses the limitation of "the handle extends upwardly from the pair of plates and wherein the spur extends downwardly from the pair of plates". Independent claim 1 (to which claims 2-3, and 5-14 depend on) clearly discloses "the handle extending upwardly from the pair of plates" in lines 4-5 of the claim as well as "the spur extending downwardly from the pair of plates" in lines 10-11 of the claim. All the of the limitations of claim 3 are disclosed within claim 1 thus dependent claim 3 fails to further limit the scope. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
Claims 1-3, 5-6, 9-11, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Salazar (US 6,622,396 B2), in view of Gename (US 4,251,038 A), Critelli (US 6,698,679 B1), and in further view of Applegate (US 6,302,352 B1).
Regarding claim 1, Salazar discloses a tape real assembly comprising: a housing (Fig. 1, case/housing 12) including a pair of plates being spaced from each other (Fig. 1, depicting a pair of the plates where a seam is indicated on the casing 12), a handle being coupled to the pair of plates, the handle extending upwardly from the pair of plates (Fig. 1; Col. 3, Ln. 14-23, handle 14), and a spur being coupled to the pair of plates, the spur extending downwardly from the pair of plates wherein the spur is aligned with the handle along a longitudinal axis and wherein the spur is configured to contact a supporting surface to facilitate the user in maintaining a position of the housing when the user is gripping the handle (Fig. 1 depicting a pointed end positioned opposite handle 14 which corresponds to a spur). The housing further including a spool being rotatably coupled to the housing (Fig. 1, core element 16), and a tape being coiled around the spool wherein the spool is rotatable in a first direction to uncoil the tape for extension of the tape from the housing and wherein the spool is rotatable in a second direction to coil the tape around the spool (Col. 3, Ln. 20-23). The tape further including an outer end loop being distally positioned relative to the inner end loop (Figs. 1 and 6, free end 28 & Col. 3, Ln. 24-31), an indicium being printed on the tape (Col. 4, Ln. 45-53, markings 82, 84).
The housing further including a clip being coupled to the outer end loop of the tape, the clip being openable wherein the clip is configured to facilitate securement of the tape to an external structure when the tape is wrapped around the external structure (Col. 4, Ln. 12-14, clip 30). The clip including a clip pin being coupled to the outer end loop (Fig. 6, cylindrical sleeve 70 & Col. 4, Ln. 14-16, clip 30), and a clevis being coupled to the clip pin, the clevis being pivotably coupled to the clip pin wherein a lateral end of the clevis is pivotable away from the clip pin into an open position, the inner end loop of the tape being position-able around the clevis when the lateral end of the clevis is in the open position (Fig. 5, base 34 & Col. 4, Ln. 14-27).
The housing further including a crank being coupled to the housing, the crank being operably engaged with the spool wherein the crank is rotatable in the first direction to rotate the spool in the first direction for extension of the tape from the housing and wherein the crank is rotatable in the second direction to rotate the spool in the second direction for retraction of the tape onto the spool (Col. 3, Ln. 13-23, knob 24).
Salazar fails to disclose a pair of guide rollers. However, Gename teaches the housing further comprising a pair of guide rollers being coupled to and extending between the pair of plates, the pair of guide rollers being spaced from and being adjacent to each other wherein the pair of guide rollers define a guide slot, the tape extending through the guide slot between the pair of guide rollers wherein the pair of guide rollers is configured to facilitate the tape in being extended and retracted from the housing and wherein the pair of guide rollers is configured to inhibit the tape from being horizontally folded when the tape is being extended and retracted from the housing (Fig. 1, Ln. 36-68, guide assembly 18, rollers 22, 24). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated rollers to act as guides and having guide slots to the reel assembly to provide a smoother means for dispensing and reeling the material to cover a larger area.
The pyramid-shaped structure of Salazar, corresponding to the spur, is adapted to act as a bottom cover so as to prevent the wound material from escaping the bottom of the reel (clearly depicted in figure 1 of Salazar). Gename provides rollers at the bottom of the reel, where Salazar includes the pyramid-shaped element, to allow for the dispensing of the wound material. The pyramid-shaped element does NOT limit the winding or unwinding of the material as it allows the material to escape from either end of the opening above the pyramid. Gename also provides the reeling of the material from any direction as the material is flexible. One skilled in the art may incorporate the rollers taught by Gename into the reel of Salazar by simply disposing the rollers within the pyramid-shaped element which would act as a cover. Doing such a feat does not inhibit the functionality of the reel, but rather improves it to provide a frictionless guide as well as provide protection for the incorporated rollers.
Salazar fails to disclose the tape is removable from the housing when the tape is completely uncoiled, however, Gename teaches the tape being removably coupled to the housing wherein the tape is removable from the housing when the tape is completely uncoiled from the spool (Col. 4, Ln. 8-12). Both Salazar and Gename are considered to be analogous to the claimed invention because they are in the same field of flat material reeling. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tape reel to allow for complete removal of the material as it would provide to dispose of the housing to utilize the web in its entirety.
Salazar also fails to disclose an inner loop as well as the inner end loop being position-able around the clevis, however, Critelli teaches an inner end loop of the tape being removably coupled to the spool and being position-able around the clevis when the lateral end of the clevis is in the open position whereby the inner end loop of the tape is couplable to the clip (Col. 3, 47-67). It should be understood that Salazar discloses the tape being of flexible material (Col. 5, Ln.19-23) and the tape further being of a smaller width than the opening of the base 34, and thus would be obvious to be able to loop the wound material within the opening of the clevis. Both Salazar and Critelli are considered to be analogous to the claimed invention because they are in the same field flat material reeling. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated an inner loop being couplable with the clevis and clip in order to provide a means of utilized the entirety of the length of the material while creating a closed loop configuration.
Salazar further fails to disclose the indicium being a cautionary indicium, however, Applegate teaches the indicium being a cautionary indicium selected from a group of cautionary indicia wherein the cautionary indicium is configured to convey a message to inhibit a user from crossing the tape when the tape is extended around an area (Col. 2-3, Ln 65-67 &1-4). Both Salazar and Applegate are considered to be analogous to the claimed invention because they are in the same field flat material reeling. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated warning tape to the reel to provide a means for store and dispensing cautionary tape for reuse.
Regarding claim 2, Salazar discloses wherein the pair of plate are parallel to each other (Fig. 1, depicting a pair of the plates where a seam is indicated on the casing 12).
Regarding claim 3, Salazar discloses wherein the handle extends extending upwardly from the pair of plates and wherein the spur extends downwardly from the pair of plates (Fig. 1; Col. 3, Ln. 14-23, handle 14).
Regarding claim 5, Salazar discloses a pair of the plates where a seam is indicated on the casing 12 (Fig. 1), but fails to describe the apertures of a first and second plate. However, Gename teaches the pair of plates further comprising: a first plate aperture extending through a first plate of the pair of plates; and a second plate aperture extending through a second plate of the pair of plates, the second plate aperture being aligned with the first plate aperture, the second plate aperture being centrally positioned on the second plate (Fig. 2-4, depicting apertures going through both the left and right side 26, 28). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have provided a first and second aperture through the first and second plates in order to provide a means of connecting internal components.
Regarding claim 6, Salazar discloses a pair of the plates where a seam is indicated on the casing 12 (Fig. 1), but fails to describe the mounts of a first and second plate. However, Gename teaches the pair of plates further comprising: a first plate mount being coupled to the first plate, the first plate mount having a cavity being aligned with the first plate aperture; and a second plate mount being coupled to the second plate, the second plate mount having a through hole being aligned with the second plate aperture (Fig. 3, depicting extruded plates corresponding to first and second plates). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated first and second plate mounts to provide a space of sorts for proper cranking means.
Regarding claim 9, Salazar discloses the crank further comprising: a leg being coupled to the first plate mount, the first plate mount being rotatably coupled to the first plate wherein rotation of the leg rotates the first plate mount on the first plate around the first plate aperture and wherein rotation of the first plate mount rotates the spool to selectively extend and retract the tape relative to the housing (Fig. 1, operating arm 22 & Col. 3, Ln. 13-23); and a foot being coupled to the leg distally to the first plate mount, the foot extending outwardly from the leg wherein the foot is configured to facilitate the user in rotating the leg (Fig. 1, knob 24 & Col. 3, Ln. 13-23).
Regarding claim 10, Salazar discloses wherein the crank is pivotably coupled to the housing wherein the crank is pivotable between an unlocked position and a locked position, the crank being rotatable when the crank is in the unlocked position, the crank being inhibited from being rotated when the crank is in the locked position (Col. 4, Ln. 54-65).
Regarding claim 11, Salazar discloses further comprising a locking mechanism being coupled to the crank, the locking mechanism being engaged when the crank is in the locked position wherein the locking mechanism is configured to inhibit the crank from being rotated whereby the locking mechanism inhibits the spool from being rotated to inhibit the tape from being extended or retracted from the housing (Col. 4, Ln. 54-65 & Fig. 1 depicting a locking mechanism which allows the operating arm to move between operable and non-operable positions).
Regarding claim 13, Salazar discloses the tape further comprising an elongated body extending between the inner end loop and the outer end loop, the indicium being positioned on the elongated body (Col. 4, Ln. 38-40), the elongated body being non-adhesive (Col. 5, Ln.19-23).
Regarding claim 14, Salazar discloses the housing further comprising a pair of plates being spaced from each other, each plate of the pair of plates including: a first flange; and a second flange extending outwardly from opposing lateral sides of the first flange wherein the first flange and the second flange form an x-shape (best depicted in Fig. 1).
Claims 7-8, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Salazar (US 6,622,396 B2), in view of Gename (US 4,251,038 A), Critelli (US 6,698,679 B1), Applegate (US 6,302,352 B1), and in further view of Quenot (US 3,806,059 A).
Regarding claim 7, Salazar fails to disclose the cavity being threaded. However, Quenot the cavity further comprising a threaded inner surface (Col. 3, Ln. 28-37, tapped sleeve 33b). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a threaded inner surface of a cavity to provide additional strength when assembling the plurality of components of the tape reel.
Regarding claim 8, Salazar discloses the spool (Fig. 1, core element 16 & Col. 3, Ln. 13-23) but fails to disclose the spool comprising a head having a larger diameter than a through hole. However, Gename teaches a spool further comprising: a head being position-able against an outer surface of the second plate mount when the spool is coupled to the pair of plates, the head having a diameter exceeding a diameter of the through hole extending through the second plate mount (Fig. 2 depicting the crank handle 21 acting as a head with a diameter larger than the aperture); a rod being coupled to and extending outwardly from the head, the rod having a diameter being less than the diameter of the through hole wherein the rod is position-able within the first plate aperture and the second plate aperture; a spool slot extending through the rod, the spool slot being parallel to the guide slot when the spool is coupled to the housing; (Fig. 2 depicting the crank handle 21 having a rod with a diameter smaller than the aperture of the pair of plates); a terminal end of the rod being distal to the head, and the spool slot extending through the terminal end (Fig. 2 depicting the rod on the crank handle 21 having a terminal end). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a head having two ends connected to the spool to provide a mean for securing the spool onto the reel casing. Both Salazar and Gename fail to disclose or teach a rod threading extending from a terminal end along the spool.
However, Quenot teaches a rod threading extending from the terminal end along the rod, the rod threading being complementary to the threaded inner surface of the cavity within the first plate mount wherein the spool is threadably couplable to the first plate mount (Col. 3, Ln. 28-37, screw). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a rod threading to the terminal end to provide a strong fastening means of the crank to the spool.
Regarding claim 12, Salazar discloses the locking mechanism but fails to disclose a pivot pin or a leaf spring. However, Quenot teaches the locking mechanism further comprising: a pivot pin coupling the crank to the housing wherein the crank pivots around the pivot pin between the locked position and the unlocked position (Col. 3, Ln. 38-42, pin 41); and a leaf spring being coupled to the housing, the leaf spring being positioned adjacent to the pivot pin, the leaf spring being biased outwardly from the housing wherein the leaf spring abuts the crank to inhibit the crank from being pivoted between the locked position and the unlocked position and wherein the leaf spring is configured to retract inwardly toward the housing when the user pivots the crank between the locked position and the unlocked position (Col. 2, Ln. 57-63, leaf spring 25). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a pin and a leaf spring to the locking mechanism to provide a means for the crank to be folded between two positions as well as remain in position.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Salazar (US 6,622,396 B2), in view of Gename (US 4,251,038 A), Critelli (US 6,698,679 B1), Applegate (US 6,302,352 B1), Quenot (US 3,806,059 A), and in further view of Hoppe (US 2016/0290776 A1).
Regarding claim 15, the claimed features substantially comprise the same language as disclosed in claims 1-14, with the exception of a few additional limitation. Thus, the rejection and the rationales to have modified/combined are above and reincorporated.
Regarding the additional limitations of claim 15, Salazar discloses the tape being a high visibility color wherein the high visibility color is configured to increase visibility of the tape to the user (Col. 4, Ln. 45-53); and
a retainer being coupled to the clip pin wherein the retainer secures the outer end loop to the clip pin (Fig. 5, pivot pin 46 corresponding to a retainer & Col. 3, Ln. 32-51); the lateral end of the clevis being positioned adjacent to the retainer wherein the retainer inhibits the outer end loop of the tape from being removed from the clip when the lateral end of the clevis is in the open position, the inner end loop of the tape being position-able around the clevis when the lateral end of the clevis is in the open position whereby the inner end loop of the tape is couplable to the clip (Fig. 5 & Col. 4, Ln. 14-27), but fails to disclose specific dimensions of the tape. However, Hoppe teaches, the tape having varying widths the tape having a length between 100.0 feet and 300.0 feet (Pg. 3, ¶27). 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 incorporated a tape with varying widths and extending to around 100 feet to the tape dispensing device, 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. In this instance it would be advantageous to provide a device which allows for varyingly sized tapes to accommodate for different situational needs.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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-Thursday 8:00 AM - 6:00 PM.
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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
/ROBERT W HODGE/ Supervisory Patent Examiner, Art Unit 3654