DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“mounting part” recited in claim 1
“first mounting piece” recited in claim 2
“second mounting piece” recited in claim 2
“control piece” recited in claim 3
“pushing module” recited in claim 4
“limiting module” recited in claim 4
“moving piece” recited in claim 9
“supporting part” recited in claim 9
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The limitation “mounting part” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“part”).
(B) The generic placeholder is modified by functional language (“mounting” or ‘for mounting’). Examiner notes that the recitation of “the main body part forms a complete workbench surface when the mounting part is mounted on the main body part requires the ‘mounting part’ to be configured to form a complete workbench surface with the main body part when the mounting part is mounted on the main body part.
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “first mounting piece” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“piece”).
(B) The generic placeholder is modified by functional language (“mounting” or ‘for mounting’). Examiner notes that the recitation of “the mounting plate is fixed on the main body part through the first mounting piece and the second mounting piece” requires the ‘first mounting piece’ to be configured to fix the mounting plate on the main body part.
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “first mounting piece” will be interpreted so as to comprise ‘a pin having a concave shaped groove that extends downward from a surface of the pin,’ as taught by the Specification (paragraphs 35 and 41), or an equivalent thereof.
The limitation “second mounting piece” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“piece”).
(B) The generic placeholder is modified by functional language (“mounting” or ‘for mounting’). Examiner notes that the recitation of “the mounting plate is fixed on the main body part through the first mounting piece and the second mounting piece” requires the ‘second mounting piece’ to be configured to fix the mounting plate on the main body part.
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “second mounting piece” will be interpreted so as to comprise ‘a pin,’ as taught by the Specification (paragraph 35), or an equivalent thereof.
The limitation “control piece” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“piece”).
(B) The generic placeholder is modified by functional language (“suitable for controlling a distance of the first mounting piece extending out of a front end of the mounting plate”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “pushing module” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“module”).
(B) The generic placeholder is modified by functional language (“pushing” or ‘for pushing’ and “the pushing module is suitable for controlling the first mounting piece to slide forwards or backwards”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “pushing module” will be interpreted so as to comprise ‘a surface and a convex shaped protrusion that extends from the surface,’ as taught by the Specification (paragraph 41), or an equivalent thereof.
The limitation “limiting module” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“module”).
(B) The generic placeholder is modified by functional language (“limiting” or ‘for limiting’ and “the pushing module is suitable for controlling the first mounting piece to slide forwards or backwards”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “moving piece” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“piece”).
(B) The generic placeholder is modified by functional language (“moving” or ‘for moving’ and “the pushing module is suitable for controlling the first mounting piece to slide forwards or backwards”). Examiner notes that the recitation of “the movable plate is suitable for sliding from the interior of the first mounting area through the moving piece” requires that the ‘moving piece’ be configured to slide the movable plate from the interior of the first mounting area.
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “supporting part” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“part”).
(B) The generic placeholder is modified by functional language (“supporting” or ‘for supporting’ and “the pushing module is suitable for controlling the first mounting piece to slide forwards or backwards”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “supporting part” will be interpreted so as to comprise ‘a plurality of supporting legs,’ as taught by the Specification (paragraph 34), or an equivalent thereof.
Claim Rejections - 35 USC § 112
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 – 10 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 10 recites the limitation “the number of the mounting parts.” There is insufficient antecedent basis for the limitation in the claim.
As explained above, each of the claim limitations “mounting part,” “control piece,” “limiting module,” and “moving piece” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the functions. Regarding the limitation “mounting part,” the Specification teaches the ‘mounting part’ as comprising ‘a first mounting piece, a second mounting piece, and a control piece; wherein the first mounting piece comprises a pin having a concave shaped groove that extends downward from a surface of the pin; wherein the second mounting piece comprises a pin; and wherein the control piece comprises a pushing module and a limiting module, wherein the pushing module comprises a surface and a convex shaped protrusion that extends from the surface’ (paragraphs 35 and 41). However, as further explained above, limitation of the “limiting module” also invokes interpretation under 35 U.S.C. 112(f). While the Specification provides proper antecedent basis for the ‘limiting module’ (paragraph 41), the Specification does not teach the structure of the ‘limiting module’ required to perform the claimed function. Therefore, because the Specification teaches the ‘limiting module’ being a required structure for the ‘mounting part’ to perform the claimed function, without teaching the required structure of the ‘limiting module,’ the Specification fails to teach the required structure of the ‘mounting part.’ Regarding the limitation “control piece,” the Specification teaches the ‘control piece’ as comprising ‘a pushing module and a limiting module; wherein the pushing module comprises a surface and a convex shaped protrusion that extends from the surface’ (paragraph 41). However, as further explained above, limitation of the “limiting module” also invokes interpretation under 35 U.S.C. 112(f). While the Specification provides proper antecedent basis for the ‘limiting module’ (paragraph 41), the Specification does not teach the structure of the ‘limiting module’ required to perform the claimed function. Therefore, because the Specification teaches the ‘limiting module’ being a required structure for the ‘control piece’ to perform the claimed function, without teaching the required structure of the ‘limiting module,’ the Specification fails to teach the required structure of the ‘control piece.’ Regarding the limitation “limiting module,” while the Specification provides proper antecedent basis for the ‘limiting module’ (paragraph 41), the Specification does not teach the structure of the ‘limiting module’ required to perform the claimed function. Regarding the limitation “moving piece,” the Specification provides proper antecedent basis for the ‘moving piece’ (paragraph 33), the Specification does not teach the structure of the ‘moving piece’ required to perform the claimed function. Therefore, the claims are indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1 - 10 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.
As explained above, each of the limitations “mounting part,” “control piece,” “ limiting module,” and “moving piece” invoke interpretation under 35 U.S.C. 112(f). As further explained above, the Specification fails to sufficiently teach the structure required for each of the limitation to perform their respective functions. Therefore, the limitations are not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 - 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin (U.S. Patent Application Publication Number 2013/0277902).
As to claim 1, Lin teaches a multifunctional workbench (abstract) comprising: a main body part (figures 1 and 2, element 31 being the ‘main body part’; paragraph 18); and a mounting part (figures 1 and 2, element 40 being the ‘mounting part’; paragraph 16), wherein the mounting part is detachably arranged on the main body part (figures 1 and 2, elements 40 and 31; paragraph 20), and the main body part forms a complete workbench surface when the mounting part is mounted on the main body part (figure 1, elements 31 and 40).
As to claim 2, Lin further teaches that the mounting part comprises a mounting plate, a first mounting piece and a second mounting piece (figure 2, element 41 being the ‘mounting plate,’ first screw and first screw hole on right side of element 41 being the ‘first mounting piece,’ and screw and screw hole on left side of element 41 being the ‘second mounting piece,’ see below; paragraphs 18 – 20).
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As to claim 3, Lin further teaches that the mounting part further comprises a control piece (figure 2, second screw and screw hole on right side of element 41 being the ‘control piece,’ see below); the control piece being arranged on the mounting plate (figure 2, element 41, see below); and the control piece is suitable for controlling a distance of the first mounting piece extending out of a front end of the mounting plate (figure 2, see below). Examiner notes that this can be found because the screws of the first mounting piece, second mounting piece, and the control piece together act to affix the mounting plate to the main body part (paragraphs 18 – 20). It is the position of the Examiner that, when the screws of each of the first mounting piece, second mounting piece, and the control piece are initially threaded onto the ‘fastening block’ (element 33) of the main body part, and the screw of the control piece is further fastened onto the main body part, this further fastening of the control piece will cause the mounting plate to further affix and lower onto the main body plate, causing the screw of the first mounting piece to extend further from a font end of the mounting plate.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726