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 .
Status of the Claims
Claims 1-20 are pending in the application.
Drawings
The drawings are objected to because of the following informalities:
In Fig. 2, ref. no. “12” is objected to because it points to the “top 14”, rather than the “post 12”.
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 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 5-7 and 17-20 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.
Re Claim 5: Claim 5 recites the following limitations for which there is a lack of antecedent basis in the claim:
“the first material” in line 1
“the second material” in line 2
“the second plastic” in line 2
For examination purposes, for this Office Action only, the Examiner will interpret claim 5 as though it depends from claim 2, rather than claim 1, since claim 2 provides antecedent bases for the first and second materials. Further, the Examiner will interpret the “second plastic” as the “plastic” of the second material.
If these interpretations are correct, claim 5 should be amended as follows:
--5. The protective cover of claim 2 wherein the first material is a first plastic and the second material is a second plastic, the first plastic being more flexible than the second plastic.--
Clarification and correction are required.
Re Claims 6-7: These claims are considered indefinite because of their dependency from indefinite claim 5.
Re Claim 17: Claim 17 recites the limitation “the first silicone being more flexible than the first silicone”, which is impossible since a material cannot be more flexible than itself.
For examination purposes, for this Office Action only, the Examiner will interpret this limitation as follows:
--the first silicone being more flexible than the second silicone--
Clarification and correction are required.
Re Claims 18-20: These claims are considered indefinite because of their dependency from indefinite claim 17.
Examiner notes that any prior art rejections made in this Office Action are made in view of the claims, as best understood by the Examiner, in view of the above indefiniteness rejections.
Claim Interpretation – Functional Language
From the outset, it should be noted that some of the language in the claims is functional in nature. For example, the language related to as “end of a post” is functional in nature and limited patentable weight is given to this section of the claim. Additionally, Examiner notes that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does and thus, a prior art device must only be capable of performing the stated function in order to read on the functional limitation. In this instance, the prior art discloses every structural limitation of the claim and thus this limitation fails to distinguish the claimed apparatus from that of the prior art. Please see MPEP 2114.
[Examiner notes that this section of the Office Action does not constitute a rejection or objection, but is merely meant to indicate the manner in which the claims have been interpreted by the Examiner.]
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.
Claims 1-3, 5, 8, 10-11, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parham (WO 2015/109288, a copy of which is attached herewith).
Re Claim 1: Parham discloses a protective cover (10; see Figs. 1-4) for an end of a post (30) comprising:
a base (12, 100) having a wall (102) defining a bore (28) configured to receive the end of the post (30); and
a top (18) integral with the base configured to engage the end of the post when the end of the post is within the bore; and
a plate (16) disposed within the top for providing rigidity to the top.
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Re Claim 2: Parham discloses a protective cover (10; see Figs. 1-4) wherein the base (12, 100) comprises a first material (for example, the plastic material of inner sleeve 100; see parag. [035]) and the top (18) comprises a second material (such as at “polypropylene plastic area 7”; see parag. [025]), the first material being more flexible than the second material.
Re Claim 3: Parham discloses a protective cover (10; see Figs. 1-4) wherein at least one of the first material and the second material is a plastic (see parags. [0025] and [0035]).
Re Claim 5, as best understood by the Examiner: Parham discloses a protective cover (10; see Figs. 1-4) wherein the first material (for example, the plastic material of inner sleeve 100; see parag. [035]) is a first plastic and the second material (such as at “polypropylene plastic area 7”; see parag. [025]) is a plastic, the first plastic being more flexible than the second plastic.
Re Claim 8: Parham discloses a protective cover (10; see Figs. 1-4) wherein the plate (16) is made of metal (for example, steel; see parag. [024]).
Re Claim 10: Parham discloses a protective cover (10; see Figs. 1-4) wherein the plate (16) is disk shaped (“steel disc 16” see parag. [024]).
Re Claim 11: Parham discloses a protective cover (10; see Figs. 1-4) wherein the plate (16) is made of metal (for example, steel; see parag. [024]).
Re Claim 14: Parham discloses a protective cover (10; see Figs. 1-4) wherein the top (18) includes a top surface (at 11; Fig. 3), an outer rim and a flange (see annotated Fig. 3 above) surrounding the top surface and interconnecting the top surface and the rim, the flange extending outwardly at an angle (at the curved outer surface) from the top surface.
Re Claim 15: Parham discloses a protective cover (10; see Figs. 1-4) wherein the base (12, 100) and top (18) are molded (see parag. [028]) together and the plate (16) is molded within the top.
Re Claim 16: Parham discloses a protective cover (10; see Figs. 1-4) further including a plurality of grommets (32) interconnecting the base (12, 100) and the top (18).
Claim Rejections - 35 USC § 103
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 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Parham (WO 2015/109288).
Re Claims 9 and 13: Parham, as discussed for claims 1 and 11 above, discloses a protective cover significantly as claimed except it does not explicitly disclose wherein the plate is made of aluminum.
Examiner notes that it has been held that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) [discussed in MPEP 2144.07].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Parham, with a reasonable expectation of success, such that the plate is made of aluminum, for the purpose of achieving desired strength/weight/cost characteristics of the plate, and since such a choice of a known material would amount to a design consideration within the skill of the art.
Claims 4, 6-7, 12, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Parham (WO 2015/109288), as applied to claims 1-3, 5, 8, 10-11, and 14-16 above, and further in view of Sharp (US Patent Application Publication 2024/0084867).
Re Claim 4: Parham, as discussed for claim 1 above, discloses a protective cover significantly as claimed except it does not explicitly disclose wherein at least one of the first material and second material is a silicone.
Examiner notes that it has been held that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) [discussed in MPEP 2144.07].
Further, Sharp teaches the use of a protective cover (100) for an end of a post comprising a base (120) and a top (110), wherein the base comprises a first material and the top comprises a second material (“The sleeve can be made from the same material that makes the head. Alternatively, the sleeve can be made from a different material.”; see parag. [0024]), and further wherein at least one of the first material and second material is a silicone (see claim 4), for the purpose of providing an appropriate buffering material.
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Parham, with a reasonable expectation of success, such that at least one of the first material and second material is a silicone, as taught by Sharp, for the purpose of providing an appropriate buffering material, and since such a choice of a known material would amount to a design consideration within the skill of the art.
Re Claim 6: Parham, as discussed for claim 5 above, discloses a protective cover significantly as claimed except it does not explicitly disclose wherein the first plastic is a first silicone and the second plastic is a second silicone.
Examiner notes that it has been held that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) [discussed in MPEP 2144.07].
Further, Sharp teaches the use of a protective cover (100) for an end of a post comprising a base (120) and a top (110), wherein the base comprises a first material and the top comprises a second material (“The sleeve can be made from the same material that makes the head. Alternatively, the sleeve can be made from a different material.”; see parag. [0024]), and further wherein the first plastic is a first silicone and the second plastic is a second silicone (see claim 4), for the purpose of providing an appropriate buffering material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Parham, with a reasonable expectation of success, such that the first plastic is a first silicone and the second plastic is a second silicone, as taught by Sharp, for the purpose of providing an appropriate buffering material, and since such a choice of a known material would amount to a design consideration within the skill of the art.
Re Claim 7: Parham, as modified in view of Sharp above, discloses a protective cover significantly as claimed except it does not explicitly disclose wherein the first silicone has a hardness in the range of 44° - 55° Shore A and the second silicone has a hardness in the range of 25°- 35° Shore A.
Examiner notes that it has been held that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) [discussed in MPEP 2144.07].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the device of Parham, with a reasonable expectation of success, such that the first silicone has a hardness in the range of 44° - 55° Shore A and the second silicone has a hardness in the range of 25°- 35° Shore A, for the purpose of achieving desired strength/weight/cost/flexibility characteristics of the protective cover, and since such a choice of a known material would amount to a design consideration within the skill of the art.
Re Claim 12: Parham, as discussed for claim 11 above, discloses a protective cover significantly as claimed except it does not explicitly disclose wherein the top comprises a silicone having a hardness in the range of 44° - 55° Shore A.
Examiner notes that it has been held that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) [discussed in MPEP 2144.07].
Further, Sharp teaches the use of a protective cover (100) for an end of a post comprising a base (120) and a top (110), wherein the base comprises a first material and the top comprises a second material (“The sleeve can be made from the same material that makes the head. Alternatively, the sleeve can be made from a different material.”; see parag. [0024]), and further wherein the top comprises a silicone (see claim 4), for the purpose of providing an appropriate buffering material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Parham, with a reasonable expectation of success, such that the top comprises a silicone, as taught by Sharp, for the purpose of providing an appropriate buffering material, and further wherein the silicone has a hardness in the range of 44° - 55° Shore A, for the purpose of achieving desired strength/weight/cost/flexibility characteristics of the protective cover, and since such a choice of a known material would amount to a design consideration within the skill of the art.
Re Claim 17, as best understood by the Examiner: Parham discloses a protective cover (10; see Figs. 1-4) for an end of a post (30) comprising:
a base (12, 100) constructed of a first material, the base defining a bore (28) configured to receive the end of the post (30);
a top (18) integral with the base and constructed of a material, the top configured to engage the end of the post when the end of the post is within the bore, the first material being more flexible than the second material; and
a metal plate (16) disposed in the top (18) for providing rigidity to the top when the end of the post is received by the bore.
Parham fails to explicitly disclose wherein the first material is a first silicone and the second material is a second silicone.
Examiner notes that it has been held that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) [discussed in MPEP 2144.07].
Further, Sharp teaches the use of a protective cover (100) for an end of a post comprising a base (120) and a top (110), wherein the base comprises a first material and the top comprises a second material (“The sleeve can be made from the same material that makes the head. Alternatively, the sleeve can be made from a different material.”; see parag. [0024]), and further wherein the first plastic is a first silicone and the second plastic is a second silicone (see claim 4), for the purpose of providing an appropriate buffering material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Parham, with a reasonable expectation of success, such that the first material is a first silicone and the second material is a second silicone, as taught by Sharp, for the purpose of providing an appropriate buffering material, and since such a choice of a known material would amount to a design consideration within the skill of the art.
Re Claim 18: Parham, as modified in view of Sharp above, discloses a protective cover significantly as claimed except it does not explicitly disclose wherein the first silicone has a hardness in the range of 44° - 55° Shore A and the second silicone has a hardness in the range of 25°- 35° Shore A.
Examiner notes that it has been held that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) [discussed in MPEP 2144.07].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the device of Parham, with a reasonable expectation of success, such that the first silicone has a hardness in the range of 44° - 55° Shore A and the second silicone has a hardness in the range of 25°- 35° Shore A, for the purpose of achieving desired strength/weight/cost/flexibility characteristics of the protective cover, and since such a choice of a known material would amount to a design consideration within the skill of the art.
Re Claim 19: Parham further discloses a protective cover (10; see Figs. 1-4) wherein the plate (16) is disk shaped (“steel disc 16” see parag. [024]).
Parham fails to explicitly disclose wherein the plate is made of aluminum.
Examiner notes that it has been held that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) [discussed in MPEP 2144.07].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Parham, with a reasonable expectation of success, such that the plate is made of aluminum, for the purpose of achieving desired strength/weight/cost characteristics of the plate, and since such a choice of a known material would amount to a design consideration within the skill of the art.
Re Claim 20: Parham further discloses a protective cover (10; see Figs. 1-4) wherein the base (12, 100) and top (18) are molded (see parag. [028]) together and the plate (16) is molded within the top.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R MCMAHON whose telephone number is (571)270-3067. The examiner can normally be reached Mon-Fri 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571) 270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R MCMAHON/Primary Examiner, Art Unit 3678