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 .
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
The “means for selectively displacing the at least one end piece” in claims 4, and 5. The “means” is given structure in claim 4, respectively.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 4 and 5 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 4 recites “at least one end piece” in line 3. However, it is indefinite and unclear as to how the “at least one end piece” of claim 4 relates to any of the previously recited structure of claim 1 and 4?
Claim 5 recites “a base” in line 2. However, it is indefinite and unclear as to how the “a base” of claim 5 relates to any of the previously recited structure of claim 1, 4 and 5?
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.
Claim(s) 1, 2, 6, 10, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,868,345 (Beisser).
Regarding Claims 1 and 2, Beisser teaches: Claim 1 - an apparatus for adjusting a lateral position of a roll of tissue paper (60), the apparatus comprising: a track (62) comprising a distal lateral end and a proximal lateral end; a mount (25) coupled to the track (62), where the mount (25) comprises a base (AA) and an extended portion (BB) coupled to the base (AA); a mandrel (50/52) coupled to the base (AA), where the mandrel (50/52) is configured to accommodate the tissue roll (60); and means (40/46) for selectively displacing the mount (25) across a longitudinal length of the track (62), where the extended portion (BB) comprises a stop (64) configured to engage with the distal lateral end of the track (62), (Figures 1-6 and Annotated Figure 2 Below); Claim 2 – where the base (AA) is configured to slidably engage with the track (62), (Figures 1-6 and Annotated Figure 2 Below).
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Regarding Claim 6, Beisser teaches: Claim 6 - an apparatus for adjusting a lateral position of a roll of tissue paper (60), the apparatus comprising: a mount (25) disposed adjacent to a toilet (Figures 1 and 2), where the mount (25) comprises a base (AA) and an extended portion (BB) coupled to the base (AA); at least one tissue roll (60) disposed on the base (AA); and means (40/46) for displacing the mount (25) from a first position to a second position, where the second position is disposed adjacent a front portion of the toilet (Figures 1 and 2), and where the extended portion (BB) comprises a stop (64) configured to engage with a distal lateral end of a track (62) when the mount (25) is displaced to the second position, (Figures 1-6 and Annotated Figure 2 Above).
Regarding Claims 10 and 12-14, Beisser teaches: Claim 10 - a method for adjusting a lateral position of a roll of tissue paper (60) relative to a toilet (Figures 1 and 2), the method comprising: providing a mount (25) configured to accommodate the roll of tissue paper (60) at a first position relative to the toilet, where the mount (25) comprises a base (AA) and an extended portion (BB) coupled to the base (AA); moving the mount (25) from the first position to a second position relative to the toilet; engaging a stop (64) disposed on an extended portion (BB) of the mount (25) with a distal lateral end of a track (62); and maintaining the mount (25) at the second position, (Figures 1-6 and Annotated Figure 2 Above); Claim 12 - further comprising retracting the mount (25) from the second position back to the first position, (Figures 1-6 and Annotated Figure 2 Above); Claim 13 – where moving the mount (25) from the first position to the second position comprises sliding the base portion (AA) of the mount (25) along a longitudinal length of the track (62), (Figures 1-6 and Annotated Figure 2 Above); Claim 14 - where maintaining the mount (25) at the second position comprises extending the base portion (AA) of the mount (25) beyond a lateral edge of the track (62), (Figures 1-6 and Annotated Figure 2 Above).
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.
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(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,868,345 (Beisser) in view of EP 3824761 (Chen et al.).
Regarding Claim 3, Beisser teaches the apparatus as described above, in addition to Beisser teaching: Claim 3 - where the base (AA) comprises at least one edge (46) configured to accommodate a correspondingly shaped flange (40) disposed along the longitudinal length of the track (62 – components of (30) being part of the track (62)), (Figures 1-6 and Annotated Figure 2 Above). Beisser does not teach: the edge is a rounded edge (Claim 3). However, Chen et al. teaches: Claim 3 – a base (2100) having at least one rounded edge (2106 or 2108) configured to accommodate a correspondingly shaped flange (2112 or 2114) disposed along a longitudinal length of a track (2102), (Figure 24). Therefore, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Beisser to have the edge is a rounded edge (Claim 3) as taught by Chen et al. as it represents the simple substitution of one known element (the rounded edges (2106 and 2108) of Chen et al.) for another (the square edges (40/46) of Beisser) to obtain the predictable result of having the mount (25) of Beisser moveable along the track (20).
Claim(s) 4, 5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,868,345 (Beisser) in view of U.S. Patent No. 3,485,539 (Fall et al.).
Regarding Claims 4 and 5, Beisser teaches the apparatus as described above, in addition to Beisser teaching: Claims 4 and 5 – where the means for selectively displacing the mount (25) across the longitudinal length of the track (62) comprises at least one flange (46) on the base (AA) coupled to at least one groove (40) on the track (62 – components of (30) being part of the track (62)), (Figures 1-6 and Annotated Figure 2 Above). Beisser does not teach: at least one wheel (Claim 4); and where the wheel is disposed between a base couped to the mount and the track (Claim 5). However, Fall et al. teaches: Claims 4 and 5 – wherein it is well known to have telescopic railings (12, 15, and 27) slidably connected to one another using wheels (38) between flanges (21 and 22) and grooves (30-42), (Figures 1-5). Therefore, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Beisser to have at least one wheel (Claim 4); and where the wheel is disposed between a base couped to the mount and the track (Claim 5) as taught by Fall et al. as it represents the simple substitution of one known element (the wheels (38) of Fall et al.) for another (the flanges (46) and grooves (40) of Beisser) to obtain the predictable result of having the mount (25) of Beisser moveable along the track (30).
Regarding Claim 11, Beisser teaches the apparatus as described above, in addition to Beisser teaching: Claim 11 – where moving the mount (25) from the first position to the second position comprises at least one flange (46) on the base (AA) coupled to at least one groove (40) on the track (62 – components of (30) being part of the track (62)), (Figures 1-6 and Annotated Figure 2 Above). Beisser does not teach: at least one wheel disposed on the mount (Claim 11). However, Fall et al. teaches: Claims 11 – wherein it is well known to have telescopic railings (12, 15, and 27) slidably connected to one another using wheels (38) between flanges (21 and 22) and grooves (30-42), (Figures 1-5). Therefore, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Beisser to have at least one wheel disposed on the mount (Claim 11) as taught by Fall et al. as it represents the simple substitution of one known element (the wheels (38) of Fall et al.) for another (the flanges (46) and grooves (40) of Beisser) to obtain the predictable result of having the mount (25) of Beisser moveable along the track (30).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 and 10-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/JOSHUA E RODDEN/Primary Examiner, Art Unit 3642