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 attachment being generally planar in combination with first and second legs as claimed and the attachment having a T-shape in combination with first and second legs as claimed 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.
Claim Objections
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification discloses the attachment being planar and T-shaped only as an alternative embodiment to the embodiment having first and second legs, and so does not disclose either feature in combination with first and second legs as required by the amended claims.
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 8-9 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 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.
With Respect to Claims 8-9
As the specification does not disclose the attachment having a first and second leg and also being planar or also being T-shaped, this subject matter 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 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 8 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.
With Respect to Claim 8
It is unclear how broadly to interpret the phrase “generally planar”, e.g. whether the inventive structure’s curved clip having two legs which is somewhat narrow as the legs are near each other can be considered “generally planar” or if a curved clip having two legs can be considered “generally planar” as a curved plane.
The remainder of this office action is based on the invention as best understood by Examiner.
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 12 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. All of the limitations of claim 12 are already present in claim 10 from which it depends and so it does not further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) 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, 8-13, and 17 are rejected under 35 U.S.C. 103 as obvious over Cerrato in view of U.S. Patent #4,760,648 to Doak (Doak) in view of The Gritty Details: Understanding the Numbers on a Sharpening Stone by Christine Urriza https://sharppebble.com/blogs/blogs/the-gritty-details-understanding-the-numbers-on-a-sharpening-stone?srsltid=AfmBOop3Oq-F4NjKfyKdYIER7F1vwqcGCGWzIdUyDNfUAOJRENy30jWk (Urriza) and either U.S. Patent #3,861,087 to Martin (Martin) or U.S. Patent Publication #2007/0006682 to Beck (Beck), either alone or also in view of U.S. Patent #10,371,496 to Orsini (Orsini) and/or U.S. Patent #3,980,114 to Maniscalki (Maniscalki) and/or U.S. Patent #4,296,554 to Hammerstrom (Hammerstrom).
With Respect to Claim 1
Cerrato discloses a tape measure, comprising: a housing (outer housing of tape measure 3), a tape partially received within an interior of the housing (although details of the tape measure 3 are not disclosed, it is Examiner’s position that a person of ordinary skill in the art wound understand this to be inherent in it being a tape measure, noting also that an exterior housing is shown and the tape must per se be at least partially received within the housing for it to function as a tape measure), an attachment (12, alone or in combination with 8 and related structure) fixedly attached with one side of the housing (via 8 and related structure or directly attached via 13), and the attachment having an outer surface (outer surface of 12) that faces away from the housing and includes a knife sharpening material; but does not disclose wherein the attachment is a spring clip that includes two legs that are biased towards one another and can be elastically separated from one another, wherein the two legs of the spring clip include a first leg that is fixedly attached with the housing by a screw that is threadedly engaged with the housing and a second leg with an outer surface that includes the knife sharpening material, wherein the second leg includes an opening for allowing a screwdriver to pass through the second leg to secure the first leg with the housing, wherein only the second leg includes the knife sharpening material, wherein the second leg has a tapered distal end, and wherein the second leg is oversized relative to the first leg, and does not disclose a particular knife sharpening material and so does not disclose wherein the knife sharpening material includes at least one of monocrystalline or polycrystalline diamond stones and has a grit in the range of 1,000 to 3,000.
Doak discloses forming an accessory/attachment for a belt clip that is a spring clip that includes two legs that are biased towards one another and can be elastically separated from one another (noting two legs shown and disclosure that it is a “spring belt clip” indicates that the legs elastically separate and are pulled back together to clip a blet or similar object between the legs), wherein the two legs of the spring clip include a first leg that is fixedly attached with the housing by a screw (34) that is threadedly engaged with the housing and a second leg with an outer surface located in the same/a similar location to the knife sharpening material of Cerrato, wherein the second leg includes an opening for allowing a screwdriver to pass through the second leg to secure the first leg with the housing (see, e.g. FIG. 2), wherein the second leg has a tapered distal end (see FIG. 2 noting that the curved distal end of the second leg tapers towards the center), and wherein the second leg is oversized relative to the first leg (as shown, the second leg is longer than the first leg and so is oversized relative to it) and which includes an additional functional attachment integrated into the belt clip (see e.g. FIG. 2), and also that such a belt clip with integrated additional functional attachment can be substituted for a belt clip alone (see, e.g. FIG. 2 and disclosure).
Orsini discloses the use of a replaceable accessory on a tape measure that can include multiple functions including a belt clip and/or sharpening (noting disclosure of the features engageable with the housing including “one or more of” various functions such as pencil sharpener or combinations thereof).
Maniscalki discloses a belt clip having an integrated sharpener (pencil sharpener).
Urriza discloses that a grit in the range of 1,000 to 3,000 is a common medium grit and a versatile choice for grit and includes common grit numbers for routine sharpening.
Martin discloses that polycrystalline diamond stones are an art known knife sharpening material (see, e.g. abstract) or Beck discloses that monocrystalline diamond stones are an art known knife sharpening material ([0044]).
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Doak, to form the accessory/attachment of Cerrato as an integrated belt clip with the abrasive/sharpening material located only on the outer side of the second leg (i.e. in the same position as it is on the accessory of Cerrato), in order to incorporate the functionality of both a belt clip and a knife sharpener into the accessory, similar to the Doak belt clip incorporating a marking implement holding function, and/or as doing so constitutes at most merely making integral which does not patentably distinguish over the prior art (MPEP 2144.0). Alternately, the disclosure of Orsini to include multiple functions including a sharpening function on a belt clip style attachment and/or the disclosure of Maniscalki to provide a sharpening function as part of a belt clip provides additional motivation for and/or evidence of the obviousness of forming the sharpener and belt clip disclosed by Cerrato and Doak as a single integrated structure.
It would also have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Urriza, to use a grit in the range of 1,000 to 3,000, in order to provide the sharpening effects and benefits of that grit range, and/or as a mere selection of an art appropriate grit to use.
It would further have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Martin or Beck, to use polycrystalline or monocrystalline diamond stones (respectively) for the sharpening surface of Cerrato/the combination, for the art known benefits of this material, as a mere selection of an art appropriate material to use, and/or as 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 obvious design choice. In re Leshin, 125 USPQ 416.
Alternately, to the degree that the details of the tape measure 3 are not disclosed and it could be argued that some other tape measure construction might be possible, Doak discloses a similar tape measure comprising a housing (12) and a tape (14) partially received within an interior of the housing are known in the art and so it would have been obvious to use such as a mere selection of an art appropriate tape measure to use and/or for the art known benefits of a given tape measure construction of this type.
Alternately, although Examiner maintains that the Doak second leg is oversized relative to the first leg to the extent claimed, it would have been obvious to one of ordinary skill in the art before the filing date of this application to make the first leg smaller and/or the second leg larger in order to take up less space against the surface of the tape measure and/or provide a larger area of contact for the belt, and/or as doing so constitutes at most a mere change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04(IV)(A)). Alternately, Hammerstrom discloses forming a similar tape measure belt clip with a second leg having an opening for a screwdriver to pass to fasten a first leg of the clip to the tape measure housing via screws in which the second leg is oversized relative to the first leg (see, e.g. FIGS. 1-2), which provides additional motivation for and/or evidence of the obviousness of this modification.
With Respect to Claim 8
The tape measure as set forth in claim 1, wherein the attachment is generally planar (it is “generally planar” at least to the same or a similar degree to the inventive structure, or to the degree that it could be argued that the drawings may not be to scale, modifying the clip to make it narrower and make the structure more planar so as to more clearly fall within the ambit of “generally planar” would have been obvious to one of ordinary skill in the art before the filing date of this application in order to provide a lower profile, to save on materials cost, and/or as it would constitute at most a mere change in shape which does not patentably distinguish over the prior art (MPEP 2144.04)).
With Respect to Claim 9
The tape measure as set forth in claim 8, but does not disclose wherein the attachment has a T-shape.
However, it would have been obvious to one of ordinary skill in the art before the filing date of this application to form the attachment to have a T-shape such as by narrowing the lower portion of the first leg to reduce its footprint on the tape measure and save on materials cost or widening the top portion where the legs meet in order to provide a wider base for greater stability on the belt for the benefits of that shape, in order to improve aesthetic appeal, form a T-shaped logo or the like, and/or as doing so constitutes at most a mere change in shape which does not patentably distinguish over the prior art (MPEP 2144.04).
With Respect to Claim 10
A method of joining an attachment to a tape measure, the method including the steps of: removing a first spring clip from a housing of the tape measure (Doak discloses removing a spring belt clip to attach an alternate belt clip/accessory); and fixedly attaching an attachment to the tape measure (per Doak’s and/or Orsini’s disclosure to fixedly attach an alternative attachment, for clarity the attachment being a spring belt clip including an attached knife sharpening material per the combination), the attachment having an outer surface with a knife sharpening material (per Cerrato); and wherein the attachment is a spring clip that includes two legs that are biased towards one another and can be elastically separated from one another, wherein the two legs of the spring clip include a first leg that is fixedly attached with the housing by a screw (34 per Cerrato) that is threadedly engaged with the housing and a second leg with an outer surface that includes the knife sharpening material (per the combination), wherein only the second leg includes the knife sharpening material (as the knife sharpening material of Cerrato is only located on the side opposite the tape measure, locating the knife sharpening material only at that location is clearly obvious), wherein the second leg includes an opening for allowing a screwdriver to pass through the second leg to secure the first leg with the housing (per Cerrato), wherein the step of fixedly attaching the attachment includes inserting a screwdriver through the opening of the second leg to threadedly engage the screw to fixedly attach the first leg with the housing (per Cerrato), wherein the second leg has a tapered distal end (noting curved distal end of the second leg which tapers towards the center), and wherein the second leg is oversized relative to the first leg (Cerrato discloses this to the extent claimed or such is obvious or per Hammerstrom, see the rejection of claim 1 above for details), and wherein the knife sharpening material includes at least one of monocrystalline or polycrystalline diamond stones (per Martin or Beck) and has a grit in the range of 1,000 to 3,000 (per Urriza).
With Respect to Claim 11
The method as set forth in claim 10, wherein the step of fixedly attaching the attachment to the tape measure includes the step of threadedly engaging the screw that extends through a portion of the attachment with the housing of the tape measure (per Cerrato or Doak).
With Respect to Claim 12
The method as set forth in claim 10, wherein the attachment is a spring clip that includes a first leg and a second leg, and wherein the second leg includes an opening, and wherein the step of threadedly engaging the screw with the tape measure includes inserting a screwdriver through the opening of the second leg to fixedly attach the first leg of the spring clip with the housing of the tape measure (per Doak).
With Respect to Claim 13
The method as set forth in claim 12, wherein the second leg is biased towards the first leg (noting disclosure that it is a spring clip and the leg as shown curving so as to provide very little clearance, it is Examiner’s position that the second leg is biased towards the first leg by the spring action at least during ordinary use or alternately that such would be obvious to one of ordinary skill in the art as that is how spring belt clips function).
With Respect to Claim 17
The method as set forth in claim 10, further including the step of rubbing a knife against the knife sharpening material (as the purpose is to sharpen knives and rubbing a knife against knife sharpening material is how knives are sharpened, this step is inherent in the normal use per Cerrato or alternately clearly obvious).
Claim 6 is rejected under 35 U.S.C. 103 as obvious over Cerrato in view of U.S. Patent #4,760,648 to Doak (Doak) in view of The Gritty Details: Understanding the Numbers on a Sharpening Stone by Christine Urriza https://sharppebble.com/blogs/blogs/the-gritty-details-understanding-the-numbers-on-a-sharpening-stone?srsltid=AfmBOop3Oq-F4NjKfyKdYIER7F1vwqcGCGWzIdUyDNfUAOJRENy30jWk (Urriza) and U.S. Patent #3,861,087 to Martin (Martin), either alone or also in view of U.S. Patent #10,371,496 to Orsini (Orsini) and/or U.S. Patent #3,980,114 to Maniscalki (Maniscalki) and/or U.S. Patent #4,296,554 to Hammerstrom (Hammerstrom).
With Respect to Claim 6
The tape measure as set forth in claim 1, wherein the knife sharpening material includes polycrystalline diamond stones (per Martin).
Claim 7 is rejected under 35 U.S.C. 103 as obvious over Cerrato in view of U.S. Patent #4,760,648 to Doak (Doak) in view of The Gritty Details: Understanding the Numbers on a Sharpening Stone by Christine Urriza https://sharppebble.com/blogs/blogs/the-gritty-details-understanding-the-numbers-on-a-sharpening-stone?srsltid=AfmBOop3Oq-F4NjKfyKdYIER7F1vwqcGCGWzIdUyDNfUAOJRENy30jWk (Urriza) and U.S. Patent Publication #2007/0006682 to Beck (Beck), either alone or also in view of U.S. Patent #10,371,496 to Orsini (Orsini) and/or U.S. Patent #3,980,114 to Maniscalki (Maniscalki) and/or U.S. Patent #4,296,554 to Hammerstrom (Hammerstrom).
With Respect to Claim 7
The tape measure as set forth in claim 1, wherein the knife sharpening material includes monocrystalline diamond stones (per Beck).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over 35 U.S.C. 103 as obvious over Cerrato in view of U.S. Patent #4,760,648 to Doak (Doak) in view of The Gritty Details: Understanding the Numbers on a Sharpening Stone by Christine Urriza https://sharppebble.com/blogs/blogs/the-gritty-details-understanding-the-numbers-on-a-sharpening-stone?srsltid=AfmBOop3Oq-F4NjKfyKdYIER7F1vwqcGCGWzIdUyDNfUAOJRENy30jWk (Urriza) and either U.S. Patent #3,861,087 to Martin (Martin) or U.S. Patent Publication #2007/0006682 to Beck (Beck), either alone or also in view of U.S. Patent #10,371,496 to Orsini (Orsini) and/or U.S. Patent #3,980,114 to Maniscalki (Maniscalki) and/or U.S. Patent #4,296,554 to Hammerstrom (Hammerstrom)as applied to claim 8 above, and further in view of U.S. Patent #7,131,214 to Blackman (Blackman).
With Respect to Claim 9 (add alternate rejection)
As an alternative to the rejection of claim 9 using Cerrato in view of Doak, Urriza, and either Martin or Beck, either alone or also in view of Orsini and/or Maniscalki and/or Hammerstrom alone, Blackman discloses forming a similar tape measure belt clip attachment that is a spring clip (i.e. it is a clip biased/operated by a spring 90) having first and second legs as claimed and having a T-shape (see e.g. FIG. 4), and that this is a substitute for/improvement over R-shaped clips like that of Doak (see Background of the Invention), and that they offer the user the option to open the clip before attachment to the supporting material and closing the clip after attachment to the supporting material.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Blackman, to form the belt clip of the combination as a T-shaped clip as taught by Blackman, for the benefits disclosed by Blackman for its clip structure and/or as a mere substitution of one art known clip structure for another.
With Respect to Claim 14
The method as set forth in claim 10, wherein the attachment (60 per Blackman, see the rejection of claim 9 above for details of the combination) is generally planar and has a T-shape (see the rejection of claim 9 above for details).
Response to Arguments
Applicant's arguments filed 12/24/25 have been fully considered but they are not persuasive or are moot in view of the new ground(s) of rejection.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). This is considered sufficient response to all arguments that a given reference does not individually teach a feature for which that reference is not used (e.g. that Doak does not disclose sharpening material on its clip, as it is Cerrato which is used for the sharpening material)
In response to Applicant’s argument that Doak teaches increasing the size of the first leg rather than an oversized second leg, see the clip in Doak FIG. 4 which does not include the pencil holder, which has a second leg that is longer/larger than the first leg. Alternately, see the new rejection above using the Hammerstrom reference which has a much smaller first leg than second leg.
In Response to Applicant’s arguments that the Examiner has not provided an articulated reason with rational underpinning why a person of ordinary skill in the art would make “all of these changes” to Cerrato’s adhesive stone and Doak’s clip in view of Orsini/Maniscalki with a reasonable chance of success, see the rejection of the claims above for details of the combination and the articulated reasoning for the changes made. It is noted that many of the “changes” are merely selection of an appropriate specific structure where the primary reference discloses the use of a general structure, such as using a particular type of sharpening material where Cerrato merely discloses a sharpening material, and the selection of any given specific subtype of a generic structure is generally obvious as the disclosure of a generic “sharpening material” inherently renders obvious the use of any given particular appropriate “sharpening material”.
In response to Applicant’s arguments regarding the combination, Examiner maintains the position that Cerrato discloses a sharpener accessory attached to a tape measure, and Doak discloses that it is known in the art to combine the functions of other accessories into a belt clip attached to a tape measure. It is noted that this also constitutes merely making integral (i.e. it merely integrates the functions of two accessories that are previously taught separately) which does not patentably distinguish over the prior art (MPEP 2144.04). Alternately, although Examiner maintains that the disclosure of integral functions of Doak is sufficient to render obvious forming the Cerrato accessory as a belt clip (i.e. adding belt clip functionality to the accessory by forming the accessory as a belt clip with the sharpening material located on the second leg), Orsini and/or Maniscalki disclose integrating sharpening structures with a belt clip, which provides additional evidence of the obviousness of and/or motivation to add belt clip functionality to the sharpener of Cerrato.
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 ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734