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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the length is wrapped end to end with opposing ends, just touching and typically no overlap of the opposing ends from claims 4 and 12 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Specification
The abstract of the disclosure is objected to because the legal phraseology “comprises” should be avoided. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claims 1, 12 and 20 are objected to because of the following informalities:
Claim 1, line 1 “that provides a user with a slide-on clip” should be - - that provides with a slide-on clip - -.
Claim 12, line 1 “that provides a user with a slide-on clip” should be - - that provides with a slide-on clip - -.
Claim 12, line 6 “the end” should be - - an end - -.
Claim 12, line 12 “the user’ pocket” should be - - a user’ pocket - -.
Claim 12, line 19 “a user’ pocket” should be - - the user’ pocket - -.
Claim 20, line 6 “the device” should be - - the carpenter pencil clip device - -.
Claim 20, line 7 “the device and pencil secured to a user’s pocket” should be - - the carpenter pencil clip device and pencil secured to the user’s pocket - -.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burnett (US Patent No. 1,466,203).
Regarding claim 1, Burnett discloses a carpenter pencil clip device that provides a user with a slide-on clip for securing a carpenter pencil to a pocket, the carpenter pencil clip device comprising:
a body component (see annotated Fig. 6); and
a spring clip (see annotated Fig. 6); and
wherein the spring clip is secured to the body component (see annotated Fig. 6);
wherein the body component is secured around an end of a carpenter pencil (see Fig. 1 and annotated Figs. 5 and 6); and further
wherein the body component, the carpenter pencil, and the spring clip are secured to a user’s pocket for storage and easy access of the carpenter pencil (see Fig. 1 and annotated Figs. 5 and 6).
Regarding claim 2, Burnett discloses, wherein the user’s pocket is a pant pocket or a shirt pocket (see Fig. 1 and annotated Fig. 5).
Regarding claim 3, Burnett discloses, wherein the body component comprises a tubular configuration, such that a length wraps around the end of the carpenter pencil (see Fig. 1 and annotated Fig. 5).
Regarding claim 20, Burnett discloses a method of retaining a carpenter pencil for storage and easy access, the method comprising the following steps:
providing a carpenter pencil clip device comprising a body component with a spring clip; inserting a carpenter pencil within the body component, such that the body component forms around an edge of the pencil (see Fig. 1 and annotated Figs. 5 and 6);
securing the device and pencil to a user’s pocket via the spring clip (see Fig. 1 and annotated Figs. 5 and 6); and
working with the device and pencil secured to a user’s pocket until the pencil is needed (see Fig. 1 and annotated Figs. 5 and 6).
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Claim Rejections - 35 USC § 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 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 4-13, 16, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Burnett (US Patent No. 1,466,203), in view of Allen (US Patent No. 1,421,657).
Regarding claim 4, Burnett discloses the claimed invention except for the length is wrapped end to end with opposing ends, just touching and typically no overlap of the opposing ends.
However, Allen teaches the length is wrapped end to end with opposing ends, just touching and typically no overlap of the opposing ends (see Fig. 3).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to touch the ends from Burnett as taught by Allen in order to have a stronger pencil grip.
Regarding claim 5, Burnett discloses, wherein the opposing ends can be pulled apart then placed over the end of the carpenter pencil and pushed back together, effectively clamping the body component around the carpenter pencil for use (see annotated Figs. 5 and 6).
Regarding claim 6, Burnett discloses, wherein the length of the body component is dimensioned to encompass a perimeter of the end of the carpenter pencil (see Fig. 1 and annotated Figs. 5 and 6).
Regarding claim 7, Burnett discloses, wherein the spring clip comprises an elongated body which has a clamping tip portion that is bent and turned down to engage the user’ pocket (see annotated Figs. 5 and 6).
Regarding claim 8, Burnett discloses, wherein the clamping tip portion engages the user’s pocket and sandwiches the user’s pocket between the clamping tip portion and the carpenter pencil (see annotated Figs. 5 and 6).
Regarding claim 9, Burnett discloses, wherein the spring clip is soldered onto the body component (see annotated Figs. 6). The recitation limitation “the spring clip is soldered onto the body component” is directed to a product-by-process claim wherein the process relied upon is “soldered”. This limitation is not given a patentable weight since the structural limitations of the claimed product are met.
Regarding claim 10, Burnett discloses, wherein the spring clip extends down from the body component, with the clamping tip portion curving toward the carpenter pencil and so dimensioned to spring back and then fit tightly against the user’s pocket and the carpenter pencil (see annotated Figs. 5 and 6).
Regarding claim 11, Burnett discloses the claimed invention except for the body component and the spring clip are constructed from aluminum. At the time of the invention, it would have been obvious to a person having ordinary skill in the art to have the body component and the spring clip are constructed from aluminum, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It is obvious to have the metal body component and the spring clip from Burnett made of aluminum for a corrosion resistant material.
Regarding claim 12, Burnett discloses a carpenter pencil clip device that provides a user with a slide-on clip for securing a carpenter pencil to a pocket, the carpenter pencil clip device comprising:
a body component (see annotated Fig. 6); and
a spring clip (see annotated Fig. 6); and
wherein the body component comprises a tubular configuration, such that a length wraps around the end of the carpenter pencil (see Fig. 1 and annotated Fig. 5);
wherein the length of the body component is dimensioned to encompass a perimeter of the end of the carpenter pencil (see Fig. 1 and annotated Figs. 5 and 6);
wherein the spring clip comprises an elongated body which has a clamping tip portion that is bent and turned down to engage the user’ pocket (see annotated Figs. 5 and 6);
wherein the spring clip is soldered onto the body component (see annotated Figs. 6);
wherein the clamping tip portion engages the user’s pocket and sandwiches the user’s pocket between the clamping tip portion and the carpenter pencil (see annotated Figs. 5 and 6);
wherein the spring clip extends down from the body component, with the clamping tip portion curving toward the carpenter pencil and so dimensioned to spring back and then fit tightly against the user’s pocket and the carpenter pencil (see annotated Figs. 5 and 6); and further
wherein the carpenter pencil clip device is secured to a user’s pocket for storage and easy access of the carpenter pencil (see Fig. 1 and annotated Figs. 5 and 6).
Burnett discloses the claimed invention except for the length is wrapped end to end with opposing ends, just touching and typically no overlap of the opposing ends.
However, Allen teaches the length is wrapped end to end with opposing ends, just touching and typically no overlap of the opposing ends (see Fig. 3).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to touch the ends from Burnett as taught by Allen in order to have a stronger pencil grip.
The recitation limitation “the spring clip is soldered onto the body component” is directed to a product-by-process claim wherein the process relied upon is “soldered”. This limitation is not given a patentable weight since the structural limitations of the claimed product are met.
Regarding claim 13, Burnett discloses the claimed invention except for the body component and the spring clip are constructed from aluminum. At the time of the invention, it would have been obvious to a person having ordinary skill in the art to have the body component and the spring clip are constructed from aluminum, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It is obvious to have the metal body component and the spring clip from Burnett made of aluminum for a corrosion resistant material.
Regarding claim 16, Burnett discloses, wherein the body component is adapted to receive the carpenter pencil, which is moved laterally into the body component (see Fig. 1 and annotated Figs. 5 and 6).
Regarding claim 17, Burnett discloses, wherein the body component is pulled apart via the opposing ends, which are sufficiently placed around a perimeter of the carpenter pencil and then pressed together (see annotated Figs. 5 and 6).
Regarding claim 19, Burnett discloses, wherein the user’s pocket is a pant pocket or a shirt pocket (see Fig. 1 and annotated Figs. 5 and 6).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Burnett (US Patent No. 1,466,203), in view of Allen (US Patent No. 1,421,657) as applied to claim 12 above, and further in view of Randle (US Patent No. 2,513,516).
Regarding claim 14, Burnett as modified by Allen does not disclose an interior section of the spring clip comprises a plurality of teeth.
However, Randle teaches an interior section of the spring clip comprises a plurality of teeth (13) (see Fig. 1).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the spring clip from Burnett by adding a plurality of teeth under the spring clip as taught by Randle in order to have a stronger grip with the pocket fabric.
Regarding claim 15, the combination of Burnett in view of Allen, and further in view of Randle discloses, wherein the plurality of teeth (13) are adapted to bite into the user’s pocket, so as to secure the carpenter pencil clip device against an outer wall of the user’s pocket and prevent accidental removal (see Fig. 1 and Col. 2, lines 39-45 from Randle).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Burnett (US Patent No. 1,466,203), in view of Allen (US Patent No. 1,421,657) as applied to claim 12 above, and further in view of Lemieux (US Publication No. 2011/0179655).
Regarding claim 18, Burnett as modified by Allen does not disclose a plurality of indicia.
However, Lemieux teaches a plurality of indicia (see paragraph [0033], lines 1-4).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to add a plurality of indicia or logos on the body component from Burnet as taught by Lemieux in order to advertise the product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS A MERCADO whose telephone number is (571)270-5388. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason W. San can be reached at 571-272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS A. MERCADO/
Examiner
Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677