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 .
This action is in response to the communication filed 2/9/2026.
Response to Arguments
Applicant's arguments filed 2/9/2026 have been fully considered but they are not persuasive.
With regard to the arguments on page 4,
Applicant argues that there is no requirement for a disclosure if internal processing algorithms or electronic logic, and that he claims are directed towards visual representation of sensitivity adjustments and mode changes to a user. The Examiner respectfully disagrees.
Claim 2 expressly claims a plurality of indicators having visual icons representing sensitivity adjustments and mode changes, and a plurality of function buttons configured to enable navigation among the plurality of indicators and to enable desired sensitivity adjustments and mode changes. On first note, the Examiner respectfully notes that the original disclosure does not reasonably explain what these modes or sensitivity adjustments are in the context of the disclosure. The provided figures for the icons in Figure 1 are not completely visible, and there is no disclosure of what these modes are intended to include. While one mode appears to be that indicating an on/off status, the rest are not readily identifiable. Even an icon that is readily identifiable, such as the S, is not one that has been reasonably described such that a person of ordinary skill in the art would know what this icon and thus mode is intended to represent. As such, a person of ordinary skill in the art would not reasonably recognize In short, a person of ordinary skill in the art would not reasonably recognize the manner in which the different indicators are implemented or any underlying processing deices necessary for such indicators, when the indicators themselves are not clearly disclosed and are not explained in the disclosure.
Furthermore, applicant is not merely claiming buttons and indicators, but is expressly claiming the ability to use these buttons to make sensitivity adjustments and mode changes. As such, applicant must reasonably explain the manner in which these buttons can adjust or change features as claimed. Furthermore, applicant must reasonably explain what these mode changes or sensitivity adjustments are in order to reasonably apprise a person of ordinary skill in the art of the manner in which applicant is implementing the claim features. The Examiner has previously cited relevant MPEP sections demonstrating this requirement.
Applicant argues that a person of ordinary skill in the art would have the necessary skill to create the internal mechanisms that are required to practice this invention, but the Examiner respectfully disagrees. First, applicant is relying upon what applicant believes a person of ordinary skill in the art would know but without evidence and where such evidence is required (see MPEP 2145(I))). Second, a person of ordinary skill in the art would not reasonably recognize the manner in which applicant is implementing the claim features or know how to implement the claim feature, because such a person would neither know what types of mode changes or sensitivity adjustments applicant intends to make, and such a person would not know if applicant intended to rely upon that which was well-known in the art or their own inventive way of implementing the claim feature. The original disclosure does not reasonably provide such an explanation.
With regard to the arguments on pages 5-7 directed towards the prior art PulseDive User Manual reference,
Applicant argues that this reference does not disclose a transparent indicator panel position on the body, a plurality of indicators under the indicator panel, and visual icons representing sensitivity adjustments and mode changes. The Examiner respectfully disagrees.
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First, as seen above, the LEDs are part of a transparent indicator panel. LEDs work by having a light emitting diode located within a glass or plastic housing that is transparent, thus allowing the light from the diode to be seen. The combination of the LED housing and the above noted panel feature reasonable disclose a transparent panel.
Second, the plurality of indicators under the panel are the actual LEDS themselves. LEDs, being light emitting diodes, are under the transparent glass/plastic used to house these diodes, and thus meet that claim feature.
Lastly, the broadest reasonable interpretation of the term “icon” is “An image; a representation” per https://www.ahdictionary.com/word/search.html?q=icon. Applicant does not require these icons to be different, and instead only requires they be present. An LED light is reasonably an icon because it has both a shape and represents a specific feature being implemented. As previously explained, pages 6-7 explain 3 detection modes and 5 levels of sensitivity, all of which are controlled by the buttons, and two indicators (LEDS) that are unobstructed and which indicate differently based upon the functions selected via the function buttons. As such, the different LEDS are icons in that they represent different modes and levels of sensitivity, and thus reasonably disclose the claim feature.
As best understood, applicant is associating a more specific meaning for the term “icon” than is required, as a icon is merely, in light of the disclosure, a visual feature that provides some representation of a mode or sensitivity. This is exactly what an LED light provides. A icon is not required to have any specific shape, and the icons used are not required to be different from each other. That stated, a 103 rejection is also presented to disclose such a feature in the event it is held that the above reference does not disclose the use of icons.
Applicant then argues that the visual representation of the sensitivity adjustments and mode changes is changed through a dedicated visual interface architecture formed on the bod of the detector. However, the Examiner respectfully notes that the prior art is only required to meet those feature expressly claimed, and the prior art discloses such claim features. The manner that the actual device operates does not reasonably distinguish it from the prior art when those features are not claimed or not claimed in the required level of detail. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant then notes various benefits of the instant invention and how it operates differently than the prior art, but the Examiner again respectfully notes that there is no requirement that the prior art disclose any of the benefits of the invention, and instead is only required to disclose those features actually claimed. The prior art discloses those features actually claimed, and the Examiner therefore respectfully disagrees.
Drawings
The drawings are objected to because the various icons now claimed in Claim 2 are not reasonably shown or explained, but where these icons are necessary for an understanding of the invention. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2 is 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.
MPEP 2163.02 explains “An applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997)” (emphasis added)
MPEP 2163.03(V) explains “While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002)” (emphasis added).
As to Claim 2,
The phrase “A pinpoint detector apparatus that has sensitivity adjustments and mode changes such a user can visually observe the changes in the sensitivity adjustments and modes changes without requiring multiple simultaneous button characteristics, the pinpoint detector apparatus comprising: a body; a transparent indicator panel positioned on said body; a plurality of indicators positioned under said transparent indicator panel, said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes; a plurality of function buttons configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes; an audible communicator cooperative with the plurality of indicator” on line 1 to the end lacks proper written description and introduces new matter.
As to new matter,
1) Applicant initially claims “A pinpoint detector apparatus that has sensitivity adjustments and mode changes such a user can visually observe the changes in the sensitivity adjustments and modes changes without requiring multiple simultaneous button characteristics,” but where applicant does not reasonably originally disclose the “without requiring multiple simultaneous button characteristics” feature now claimed.
The Examiner acknowledges that the original claim stated that the device is such that it does not require button combinations, but such a feature is not reasonably the same as “multiple simultaneous button characteristics” as claimed. The original disclosure does not reasonably convey what a “button characteristic” is and thus does not reasonably support this claim feature. A button characteristic can reasonably be any characteristic of a specific button, and is not the same thing as plural buttons or a device that does not require the use of plural buttons to be pressed. The term “characteristic” is synonymous with the term “feature,” and in fact the definition of the term “characteristic is “A feature that helps to identify, tell apart, or describe recognizably; a distinguishing mark or trait” per https://www.ahdictionary.com/word/search.html?q=characteristic. As such, what applicant is now claiming is that the device does not require multiple simultaneous button features, which is not the same scope of a device that does not require pressing multiple buttons. A button “feature” is not reasonably the pressing of the button, but rather an aspect of the button itself, such as its shape or color. Nowhere in the original disclosure is it disclosed that the device does not require multiple simultaneous button characteristics as claimed, when the term “characteristic” is given its plain and ordinary manner. Because this term is not found in the original disclosure, no other reasonable definition for this term is present. The claim feature therefore introduces new matter.
As to written description:
1) Applicant initially claims “A pinpoint detector apparatus that has sensitivity adjustments and mode changes such a user can visually observe the changes in the sensitivity adjustments and modes changes without requiring multiple simultaneous button characteristics,” but where applicant does not reasonably describe what the modes or sensitivities are, or the manner in which any sensitivity adjustments, mode changes are made or reasonably describe these adjustments or mode changes. The original disclosure is completely silent as to what an adjustment is and is completely silent as to any structural feature that would reasonably be capable of performing an adjustment. For example, the original disclosure is completely silent as to any processing device that would necessary for such an adjustment, and is completely silent as to what this processing device would need to do in order to implement such an adjustment. Similarly, applicant’s disclosure is completely silent as to what a mode change is, what device implements such a mode change, and what the device would need to do in order to implement the mode change. As explained in the above MPEP sections, an issue of original description may arise when the disclosure fails to sufficiently identify how the function is performed or the result is achieved. Here, applicant does not reasonably provide a sufficient explanation, such as by way of flow charts, formulas, or other reasonable explanation, as to the manner in which applicant implements the above claim feature, as the original disclosure is completely silent as to the manner in which the above claim feature is implemented. Lastly, the original disclosure is completely silent as to what a mode or sensitivities is or manner in which such a feature should be interpreted. No modes or sensitivities are reasonably disclosed. A person of ordinary skill would not reasonably recognize that applicant had possession of the above claim and as such, this phrase lacks proper written description.
2) Applicant initially claims “A pinpoint detector apparatus that has sensitivity adjustments and mode changes such a user can visually observe the changes in the sensitivity adjustments and modes changes without requiring multiple simultaneous button characteristic,” but where applicant does not reasonably describe the manner in which the above feature is implemented such that a user can visually observe changes in the adjustments and modes without any button combination or audible communication as claimed. As best understood, a button combination of some kind would necessary in order to change a mode or make an adjustment. While the display screen is positioned as such that it is not blocked by any button, a user would not reasonably be able to observe changes as claimed without a button combination being implemented. The original disclosure is completely silent as to what this phrase is intended to mean, and the original disclosure is completely silent as to the manner in which any change can be observed without any form of use of any button on the device. While applicant may be referring to some type of automated process, applicant does not reasonably explain such a process or originally disclose that such an automated process not requiring any use of any button was originally contemplated. A person of ordinary skill would not reasonably recognize that applicant had possession of the above claim and as such, this phrase lacks proper written description.
3) Applicant claims “a plurality of indicators positioned under said transparent indicator panel, said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes,” but where the original disclosure is completely silent as to what these indicators are or the manner in which they are implemented. Applicant discloses that the indicators can be icons, but the original disclosure does not reasonably disclose what these icons are or represent, does not reasonably show or disclose the icons, and does not reasonably disclose the manner in which they are implemented. The figure of the invention does not reasonably make clear what these icons are, and there is no disclosure as to what any of the particular icons represent. Furthermore, these icons are reasonably intended to be used to provide some form of indication, but where the original disclosure is completely silent as to the manner in which they are used to perform any type of indication. No device is disclosed to reasonably control or use the indicators, and no disclosure is made as to when any particular indicator would be use to provide any form of indication. A person of ordinary skill in the art would not reasonably recognize that applicant had possession of the claim feature, because such a person would not reasonably recognize what any of the particular icons are or the manner in which they were used to provide any form of indication.
4) Applicant claims “a plurality of function buttons configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes,” but where applicant does not reasonably disclose the manner in which any of the function buttons would allow for or enable navigation among the indicators, provide any form of adjustment, or any form of mode change. Similar to the above noted issues, the original disclosure is completely silent as to the manner in which any button is used to control or otherwise cause any indicator to provide an indication, enable navigation or any form of navigation, are used to cause any adjustment or mode change to be made, or what applicant means by navigation. No disclosure is made as to the manner in which the buttons function or what they control, and no form of navigation is reasonably disclosed. Furthermore, the difference between reciting that the buttons provide navigation as opposed to “ensure” navigation is further unclear, as no mechanism beyond the buttons is disclosed. Any button would reasonably allow a menu screen to be navigated, but it would not necessarily “ensure” such navigation. The original disclosure furthermore is completely silent as to any device that would be reasonably capable of implementing such a feature, as no form of processing device is reasonably disclosed. Furthermore, as explained above, applicant does not reasonably disclose the manner in which any mode change or adjustment is made, as the original disclosure is completely silent as to what a mode change is, what an adjustment is, the manner in which a change in either a mode or adjustment is made, or any device reasonably capable of making such a change. A person of ordinary skill in the art would not reasonably recognize that applicant had possession of the above claim feature because the original disclosure is completely silent as to the manner in which this feature is implemented.
5) Applicant claims “an audible communicator cooperative with the plurality of indicator,” but the original disclosure is completely silent as to the manner in which this claim feature is implemented. The original disclosure is completely silent as to the manner in which any audible form of communication is implemented, or the manner in which such an audible form of communication is used with the indicators. The original disclosure is completely silent as to any device, such as a processing device, that would be able to correlate or implement any audible feature used together with an indicator. A person of ordinary skill in the art would not reasonably recognize that applicant had possession of the above claim feature because the original disclosure is completely silent as to the manner in which this feature is implemented.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not reasonably provide enablement for “a plurality of indicators positioned under said transparent indicator panel, said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes; a plurality of function buttons configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes.” Specifically, the Examiner does not find any explanation as to how applicant is implementing the above icons, and therefore any related use of these icons including the ability of the function buttons to enable navigation amongst the icons. This is a scope of enablement rejection because the specification does not enable one of ordinary skill to use the invention commensurate with the scope of the claims without undue experimentation.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability or unpredictability in the art;
(F) The amount of direction or guidance presented by invent tor;
(G) The existence or absence of working examples; and
(H) The quantity of experimentation necessary.
See In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988);
MPEP §2164.01(a)
As to factor (A), the Examiner notes that Claim 2 is unbounded. Applicant has not provided any explanation as to how applicant is implementing the icons and any related use or enable use of these icons, and as such claim 2 would cover any and every way possible to accomplish a plurality of indicators positioned under said transparent indicator panel, said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes; a plurality of function buttons configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes as claimed.
As to factor (G), the Examiner notes that applicant has not provided sufficient working examples via the specification commensurate with the scope of the claims. Applicant does not provide any complete example of how implements the claimed icons as part of the plurality of indicators positioned under said transparent indicator panel, said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes, and therefore does not reasonably also provide a complete explain of a plurality of function buttons configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes. The specification is silent as to what these icons are or what they represent. While applicant discloses a figure, this figure does not reasonably show many of the icons or what they are, or provide any reasonable explanation as to what any of the icons are intended to represent. As such, a person of ordinary skill in the art would not reasonably recognize what these icons are or how they can be used in conjunction with the function buttons to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes. Therefore, the specification fails to disclose any suitable and sufficient working examples to perform the claimed feature of “a plurality of indicators positioned under said transparent indicator panel, said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes; a plurality of function buttons configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes.”
As to factor (H), the Examiner notes that the quantity of experimentation need is high. Applicant does not provide a complete examples or explanation as to how applicant is implementing the icons and their related use, and thus does not provide a reasonable explanation as to how applicant is implementing a plurality of indicators positioned under said transparent indicator panel, said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes; a plurality of function buttons configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes. Applicant further does not provide any details of these icons as explained above. Thus, one having ordinary skill in the art would have to independently what icons would be necessary, how they can be implemented, what they need to represent, how they can be used to represent the various modes and sensitivities and changes thereof as claimed, and to identify any associated hardware necessary for such an implementation, including the need to independently develop the software and/or hardware for the device needed to perform or accomplish the claimed functions. A person of ordinary skill in the art would have to independently figure out how to implement a plurality of indicators positioned under said transparent indicator panel, said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes; a plurality of function buttons configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes as claimed.
In view of the forgoing, the Examiner finds that the unbounded modes of operation are directed to an invention for which no working examples have been provided commensurate with the scope of the claims. Based on the Wands factors (A), (G), and (H), the Examiner concludes that applicant's specification does not enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation. The Examiner notes that the claimed feature encompass any and all structures and/or acts for achieving their results and operation, including those which were not what the applicant had invented and those which could be invented in the future. As such, claims 1 is rejected under 35 U.S.C. §112 (a) for lacking an enabling disclosure commensurate with the scope of the claims.
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 2 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.
As to Claim 2,
The phrase “A pinpoint detector apparatus that has sensitivity adjustments and mode changes such a user can visually observe the changes in the sensitivity adjustments and modes changes without requiring multiple simultaneous button characteristics, the pinpoint detector apparatus comprising: a body; a transparent indicator panel positioned on said body; a plurality of indicators positioned under said transparent indicator panel, said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes; a plurality of function buttons configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes; an audible communicator cooperative with the plurality of indicator” on line 1 to the end is indefinite.
1) It is unclear what applicant means by reciting “multiple simultaneous button characteristics” in the context of the disclosure. This feature is not originally disclosed, and no “characteristics” are reasonably referenced that would define or otherwise reasonably set forth the metes and bounds of what this phrase is intended to mean. As best understood, applicant intends this phrase to refer to the lack of a need to press multiple buttons at the same time, but a characteristic of a button is not reasonably its use, and thus such an interpretation is not reasonable and further makes the scope of the claim unclear. As such, it is unclear, in light of the disclosure, what applicant means by reciting “multiple simultaneous button characteristics.”
2) Applicant initially claims “A pinpoint detector apparatus that has sensitivity adjustments and mode changes such a user can visually observe the changes in the sensitivity adjustments and modes changes without requiring multiple simultaneous button characteristics,” but where such a phrase is indefinite because it is unclear what applicant means by reciting sensitivity adjustments, modes, or changes in the adjustments or modes. No modes, adjustments, or changes in modes or adjustments are reasonably disclosed. It is therefore unclear how such features should be interpreted. The metes and bounds of what would and would not be considered a mode, a sensitivity adjustment, or a change in a mode or sensitivity adjustment is unclear. For the purpose of compact prosecution, the Examiner is interpreting these features to mean that a mode is any mode of operation, such as on or off, a sensitivity is how sensitive the device to something is senses, and that these features can be adjusted or changed.
Claim Rejections - 35 USC § 102/103
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 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as anticipated by PulseDive User Manual (PulseDive) or, in the alternative, under 35 U.S.C. 103 as obvious over PulseDive User Manual (PulseDive) in view of Baesan (Professional Metal Detector for Adults, High Sensitivity Gold Detector with Waterproof Coil, Gold Finder with LCD Display).
Note: As evidenced by the attached document from the Wayback Machine, the PulseDive Pointer was published, in public use, and/or on sale at least as early as April 2021, and is therefore available prior art. The two page brochure entitled PulseDive Pointer is provided, but the User Manual for this exact pointer is referenced and relied upon in the rejection. The figure below comes from the brochure.
Also, note that based upon several reviews made for this product in 2021, this product was on sale at least one year before the earliest effective priority of the instant application.
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As to Claim 2,
PulseDive discloses A pinpoint detector apparatus that has sensitivity adjustments and mode changes such a user can visually observe the changes in the sensitivity adjustments and modes changes without requiring multiple simultaneous button characteristics communication (See above Figure), (Pages 6-7 / note 3 detection modes and 5 levels of sensitivity, all of which are controlled by the buttons, and two indicators (LEDS) that are unobstructed and which indicate differently based upon the functions selected via the function buttons), the pinpoint detector apparatus comprising: a body (the overall housing seen above); a transparent indicator panel (see above figure / note that the panel includes two LEDS which must include diodes covered by a transparent material so as to be visible, thus making the panel at least partially transparent) positioned on said body (See above figure), (Page 1); a plurality of indicators (the actual diodes themselves that light up) positioned under said transparent indicator panel (See above figure), (Page 1 / note the diodes must be located under a colored transparent material), said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes (Pages 1 and 6-7 / note the buttons change the modes, sensitivity levels, and control the manner in which the LEDs illuminate, which therefore indicate the sensitivity adjustments and mode changes, and where the LEDs themselves are reasonably icons as they represent these mode changes and sensitivity adjustments); a plurality of function buttons (Buttons F and A) configured to enable navigation among said plurality of indicators so as to as to enable desired sensitivity adjustments and mode changes (Pages 1 and 6-7 / note the buttons change the modes, sensitivity levels, and control the manner in which the LEDs illuminate); an audible communicator cooperative with the plurality of indicator (Page 1 / note speaker).
PulseDive reasonably discloses the feature of “said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes” because the definition of an icon is something that is used as a representation, and the diodes themselves reasonably perform this function as they light up differently based upon the various modes and sensitivity levels as disclosed in PulseDive. The claims do not require any specific interpretation of what an icon is nor limit what an icon must be. That stated, only to the extent that it is held that PulseDive does not disclose the use of icons, PulseDive would not disclose said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes.
Baesan discloses said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes (see above figure and note the different icons used to represent different levels of sensitivity and modes, such as all metal, disc, or pinpoint) (Page 4).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify PulseDive to include said plurality of indicators having respective visual icons representing the sensitivity adjustments and mode changes as taught by Baesan in order to advantageously utilize a indicator panel that provides detection mode, sensitivity/volume level, and battery condition in a clearly visible manner and provides the use of intuitive icons to make it easier to differentiate between various objects being detected (Page 1).
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 DAVID M. SCHINDLER whose telephone number is (571)272-2112. The examiner can normally be reached 8am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lee Rodak can be reached at 571-270-5628. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858
Prosecution Insights