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 .
Information Disclosure Statement
The information disclosure statement filed 7/31/2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include an English translation or concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of the Non-Patent Literature entitled “Office Action for DE 102023111804.8” that is not in the English language. It has been placed in the application file, but the NPL has been struck through as having not been considered.
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.
Claims 1-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. Take for instance the following examples:
Claim 1 is rendered unclear by the recitation “in particular” because it is unclear whether or not the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 is unclear as to which previously recited element is to be modified by “comprising” (line 4), e.g., double drive comprising, support parts comprising, support device comprising, or furniture comprising.
Claim 1 is unclear as to whether “an associated drive unit” (line 10 of claim 1) is to refer to one of the previously recited “two drive units” (line 5 of claim 1) or to an additional element. See MPEP 2173.05(o) which states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite…”
Claim 1 is unclear since “the respective pivot lever” (line 10 of claim 1) lacks full express antecedent basis. See MPEP 2173.05(e) which states "A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made… even though indefiniteness in claim language is of semantic origin, it is not rendered unobjectionable simply because it could have been corrected…”
Claim 1 is unclear as to what element the pronoun “its” (line 13 of claim 1) is to refer.
Claim 1 is unclear as to whether “a transverse cross-member” (line 15 of claim 1) is to refer to one of the previously recited “transverse cross-members” (line 14 of claim 1) or to an additional element. See MPEP 2173.05(o) which states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite…”
Claim 1 is unclear since the limitation “a support surface to rest at a transverse crossmember and the support surfaces are arranged in longitudinal direction of the base body at the height of the pivot axes” (ll.15-18 of claim 1) is contrary to the disclosure which shows (e.g., fig.10) that the support surface (surface where 34, 36 rests at 38, 40) and pivot axes (14, 16) are at different heights. See MPEP 2173.03 which states that a claim may be "indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty".
Claim 1 is unclear since “the mounting position” (line 18 of claim 1) lacks proper antecedent basis. See MPEP 2173.05(e).
Claim 1 is unclear since “the respective associated support surface” (line 19 of claim 1) lacks full express antecedent basis. See MPEP 2173.05(e) which states "A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made… even though indefiniteness in claim language is of semantic origin, it is not rendered unobjectionable simply because it could have been corrected…”
Claim 1 is unclear since the limitation “in the mounting position of the double drive, the pivot axes lie in vertical direction via the respective associated support surface” (last lines of claim 1) is contrary to the disclosure. Note that fig.10 shows pivot axis (14) to be offset from the mounting position of the double drive. Note also that the pivot axis (14) are not shown to be structurally associated with the support surfaces much less “lie in vertical direction via” the surfaces.
Claim 2 is rendered unclear by the recitation “preferably” because it is unclear whether or not the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 2 is unclear as to whether “at least one drive unit” (claim 2) is to refer one of the “two drive units” (claim 1) or to an additional element. See MPEP 2173.05(o) which states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite…”
Claim 3 depends from claim 1 and thus is similarly unclear/rejected.
Claim 4 is unclear as to whether “at least one supporting and fixing structure” (line 2 of claim 4) is to refer to one of the previously recited “two supporting and fixing structures” (claim 1) or to an additional element. See MPEP 2173.05(o) which states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite…”
Claim 4 recites “formed as angle piece” which does not constitute proper English and is unclear as to whether applicant intends to set forth --formed as an angle piece-- or --formed as angle pieces-- or some other meaning.
Claim 4 is unclear as to which previously recited element the phrase “of which” (recited twice in claim 4) refers to.
Claim 4 recites “the other leg” without proper antecedent basis.
Claim 5 recites “formed as metal part” which does not constitute proper English and is unclear as to whether applicant intends to set forth --formed as a metal part-- or --formed as metal parts-- or some other meaning.
Claim 6 is unclear as to whether the phrase “at least one supporting and fixing structure” (claim 6) is to refer to one of the previously recited “two supporting and fixing structures” (claim 1) or to an additional element. See MPEP 2173.05(o) which states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite…”
Claim 7 depends from claim 2 and is thus similarly unclear/rejected.
Claim 8 is unclear as to whether “An electromotively adjustable support device” (claim 8) and other claim 8 elements are to refer to the same element(s) as the previously recited “a support device” (claim 1) and other claim 1 elements, or to elements additional to those recited in claim 8. See MPEP 2173.05(o) which states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite…”
Claim 8 uses the term "characterized" (line 4 of claim 8), which is commonly used in PCT applications and/or under Jepson format to set forth admitted prior art. However, applicant has not clearly maintained proper Jepson claim format throughout the claims (deleting the term in previous claims) such that it is unclear what if anything in the claims applicant intends to be admitted prior art or not. Note the following:
MPEP 1824 The Claims [R-08.2012]
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PCT Rule 6.3. Manner of Claiming(ii) a characterizing portion - preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect - stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.
MPEP 2129 III. JEPSON CLAIMS
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Drafting a claim in Jepson format (i.e., the format described in 37 CFR 1.75(e); see MPEP § 608.01(m)) is taken as an implied admission that the subject mater of the preamble is the prior art work of another. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982) (holding preamble of Jepson-type claim to be admitted prior art where applicant’s specification credited another as the inventor of the subject matter of the preamble). However, this implication may be overcome where applicant gives another credible reason for drafting the claim in Jepson format. In re Ehrreich, 590 F.2d 902, 909-910, 200 USPQ 504, 510 (CCPA 1979) (holding preamble not to be admitted prior art where applicant explained that the Jepson format was used to avoid a double patenting rejection in a co-pending application and the examiner cited no art showing the subject matter of the preamble). Moreover, where the preamble of a Jepson claim describes applicant’s own work, such may not be used against the claims. Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910, 200 USPQ at 510.
37 CFR 1.75 (e)
Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
Claim 9 is rendered unclear by the recitation “in particular” because it is unclear whether or not the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 is unclear as to whether certain labels therein are to refer to the same elements as previously recited labels or to additional elements. For instance, “an electromotively adjustable support device” (claim 9) is unclear as to whether or not is refers to the same element as the previously recited “an electromotively adjustable support device” (claim 8) and/or “a support device” (claim 1) or to an additional element. See MPEP 2173.05(o) which states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite…”
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 6-9 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Dewert US20180125251.
Claims 1, 8 and 9. An electromotive double drive for adjusting, relative to one another, pivotally adjustable support parts of a support device (6-12) to support a cushioning of a seating and/or lying furniture, in particular a mattress of a box spring bed, relative to one another (see written description of “support parts”, “support apparatus”, “box spring mattress”, “upholstered bed”, etc.), [said double drive, see 35 USC 112 rejetions] comprising: a base body (16 or 16/38), at which two drive units (18, 18’) are arranged, which respectively comprises an output member (24), two pivot levers (26, 26’), which are spaced apart from each other in longitudinal direction of the base body and are each pivotably disposed at the base body around a pivot axis (28, 28’), wherein the pivot levers are respectively operatively connected to the output member of an associated drive unit to pivot the respective pivot lever relative to the base body, the base body comprises two supporting and fixing structures (bottom surfaces of 36, 36’) spaced apart from each other in its longitudinal direction to support and fix the base body at transverse cross-members (transverse cross members of 4), wherein each supporting and fixing structure comprises a support surface (bottom surfaces of 36, 36’) to rest at a transverse cross-member (transverse cross-member of 4), and the support surfaces are arranged in longitudinal direction of the base body at the height of the pivot axes in such a way that, in the mounting position of the double drive, the pivot axes lie in vertical direction via the respective associated support surface (in as much as applicant’s invention is best understood, see 35 USC 112 clarity rejections above).1
Claim 2. The double drive according to claim 1, wherein the base body comprises a longitudinal cross-member (16) preferably made of metal (preferably but not necessarily as best understood, see 35 USC 112 rejections), to which at least one drive housing (50, 52, 52’) to accommodate at least one drive unit (18, 18’, see 35 USC 112 rejections) is fixed and at which the pivot levers are pivotably disposed.
Claim 3. The double drive according to claim 1, wherein the drive units are accommodated in a common drive housing (50, 52, 52’).
Claim 4. The double drive according to claim 1, wherein at least one supporting and fixing structure (bottom surfaces of 36, see 35 USC 112 rejection) is formed as angle piece (36 has an angle and is thus an angle piece, see 35 USC 112 rejection), one leg (one leg of 36 having the surface of 36) of which forms the support surface and the other leg (another leg of 36) of which forms or supports a fixing plate (fixing plate of 4 fixed to transverse cross-member of 4) to be fixed to the transverse cross-member.
Claim 6. The double drive according to claim 1, wherein at least one supporting and fixing structure (supporting/fixing structure of 50, see 35 USC 112 rejections) is moulded (see para.0045) to the base body (38/16).
Claim 7. The double drive according to claims 2, wherein the drive housing is made of plastic (see para.0044).
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 of this title, 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.
Claim 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Dewert US20180125251.
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 claim 2 longitudinal cross-member and the claim 5 angle piece to be made of metal, the examiner taking Official Notice that metal was known in the art to be suitable/desirable for making parts for supporting beds and further since metal is inherently stronger than other weaker materials (e.g., plastic) and thus would have been a suitable/desirable/obvious material choice. See MPEP 2144.07 which details that selection of a known material based on its suitability for its intended use is a design consideration and supports prima facie obviousness citing Sinclair & Carroll Co. v. Interchemical Corp, 325 U.S. 327, 65 USPQ 297 (1945); and In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Conclusion
The prior art made of record on the attached PTO-892 and not relied upon above is considered pertinent to applicant's disclosure due general structural similarity thereto.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
1 As noted in the 35 USC 112 clarity rejections elsewhere above, a great deal of confusion and uncertainty exists as to the proper interpretation of numerous claim limitations. In the interest of compact prosecution, the examiner has applied the prior art in as best as the claims can be understood. However, in accordance with MPEP § 2173, detailed mapping of the art to each and every claim limitation as currently written would be improper since such would require undue speculation as to the intended meaning/scope thereof. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962).