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 .
DETAILED ACTION
This correspondence is in response to Applicant’s Reply filed on December 9, 2025. Claims 13-17 are newly added and Claims 1-17 are pending. THIS ACTION HAS BEEN MADE FINAL.
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, from Claim 1 the pull cord being extending longitudinally through the tube segments and being anchored to the ceiling-mountable carrier; from Claim 16 the metallic clamping part integrated into the thread; and from Claim 17 the ceiling-mountable carrier is configured to rotatably support a carrier arm system for medical devices, the carrier arm system being suspended from a free end of the ceiling tube, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Notably, these limitations in the claims would require figures that would likely include new matter.
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 Objections
Claim 7 is objected to because of the following informalities:
Claim 7 is objected to under 37 CFR 1.75 as being a substantial duplicate of Claim 1. Note that Claim 1 appears to already recite the subject matter of Claim 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k). Appropriate correction is required.
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 6 and 14-16 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 6 recites the limitations "the male thread” and “the female thread” in line 2. There is insufficient antecedent basis for these limitations in the claim. Applicant should amend this claim to depend from Claim 4. Appropriate correction is required.
Claim 14 recites the limitations "the entrance” and “the female thread” in line 2. There is insufficient antecedent basis for these limitations in the claim. Applicant should amend this claim to depend from Claim 4 and also properly introduce “an entrance.” Appropriate correction is required.
Claim 14 recites “tube segments are provided with a mounting chamfer at the entrance of the female thread.” One interpretation of this recitation is that the mounting chamfer is provided at the entrance of the female thread. This is confusing because the chamfer is provided on the male thread end of the tube not the female thread end. Appropriate correction is required.
Claim 15 recites “wherein the tube segments are manufactured in standardized modular lengths enabling variation of the overall tube length without cutting, machining, or repainting.”
This claim include language that defines the process by which the apparatus (product) is made. Such language amounts to a product-by-process limitations, which are treated differently than structural limitations. The MPEP provides the following: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (See MPEP Section 2113) Further, the MPEP states that "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." (See MPEP Section 2113)
Moreover, “the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. (See MPEP 2113)
For the reasons set forth above, Examiner will analyze the patentability of this claim based on the product itself and not based on the stated process by which it is made.
Claim 15 recites “standardized modular lengths enabling variation of the overall tube length.” Notably not specific lengths are claimed and therefore it is unclear what specifically the Applicant is attempting to claim as their invention with this recitation. Appropriate correction is required.
Claim 16 recites the limitation "the male thread” in line 3. There is insufficient antecedent basis for this limitation in the claim. Applicant should amend this claim to depend from Claim 4. Appropriate correction is required.
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) 1-13 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over by US Patent No. 6,711,272 to Rodgers (Rodgers).
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Regarding Claims 1 and 11: Rodgers discloses a ceiling fastening apparatus for medical devices, the ceiling fastening apparatus comprising: a ceiling-mountable carrier (See Annotated Fig. A); and a vertically elongated ceiling tube (See Annotated Fig. A) held on the carrier in a mounting position, the ceiling tube comprising a plurality of tube segments (See Annotated Fig. A) that are screwed to each other via a thread (See Annotated Fig. A), and adjacent tube segments provide a screw connection securing element (See Annotated Fig. A), which is configured to counteract a loosening of the screw connection, wherein the screw connection securing element comprises . . . clamping ring (See Annotated Fig. A) arranged internally within the ceiling tube--.
Rodgers discloses a ring (See Annotated Fig. A) that is made of “relatively soft or resilient material”1 but does not disclose that the material is plastic. However, it would have been obvious to a person of ordinary skill in the art and a time before the effective date of invention to make the ring out of plastic. Courts have held that it is 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.2 Here, the intended use of the ring is to provide a tight fit between segments.3 A ring made of plastic would be resilient enough to provide a tight fit and protect adjacent segments from damage. Plastic is well known and commercially available at a time before the effective date of the invention. Moreover, it is well-within the level of skill in the art to utilize the known and commercially available materials to produce a part suited for the intended use thereof. The use of plastic rings would not produce any new unexpected results. Therefore, it would be obvious for a person to choose plastic as the material for the ring.
Regarding Claim 2: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein the thread is a fine-pitch thread (See Annotated Fig. A).
Regarding Claim 3: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein the screw connection securing element (See Annotated Fig. A) is in operative engagement with the thread (See Annotated Fig. A).
Regarding Claim 4: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein each tube segment provides a female thread (See Annotated Fig. A) and a male thread (See Annotated Fig. A), the male thread being assigned to a first tube segment end face, and the female thread being assigned to a second tube segment end face opposite the first tube segment end face.
Regarding Claim 5: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein the adhesive (See Annotated Fig. A) is provided as the screw connection securing element.
Regarding Claim 6: Rodgers discloses a ceiling fastening apparatus according to claim 5, wherein the adhesive (See Annotated Fig. A) is applied to the male thread--.
Regarding Claim 7: Rodgers discloses a ring (See Annotated Fig. A) that is made of “relatively soft or resilient material”4 but does not disclose that the material is plastic. However, as discussed above, it would have been obvious to a person of ordinary skill in the art and a time before the effective date of invention to make the ring out of plastic.
Regarding Claim 8: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein the screw connection securing element (See Annotated Fig. A) is implemented internally (note that the ring couples to the threads).
Regarding Claim 9: Rodgers discloses a ceiling fastening apparatus according to claim 1 . . . wherein the tube segment end faces have contact surfaces (See Annotated Fig. A) oriented substantially in parallel to each other and substantially perpendicularly to a longitudinal center axis of the ceiling tube.
Regarding Claim 10: Rodgers discloses a ceiling fastening apparatus according to claim 1 . . . wherein the ceiling tube provides at least two tube segments with a different length.5
Regarding Claim 12: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein the ceiling fastening apparatus (See Annotated Fig. A) is configured for ceiling-mounted suspension of medical devices. (Note that the distal end of the Rodgers apparatus can hold an object)
Regarding Claim 13: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein the ceiling tube (See Annotated Fig. A) has a constant outer diameter (See Annotated Fig. A) across the plurality of the tube segments to maintain a uniform surface appearance.
Regarding Claim 15: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein the tube segments (See Annotated Fig. A) . . . in standardized modular lengths6 enabling variation of the overall tube length without cutting, machining, or repainting.
Regarding Claim 16: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein the screw connection securing element comprises a metallic clamping part (the topmost thread of the threading) integrated into the thread, the metallic clamping part establishing a friction fit with the male thread.
Regarding Claim 17: Rodgers discloses a ceiling fastening apparatus according to claim 1, wherein the ceiling-mountable carrier is configured to rotatably support a carrier arm system for medical devices, the carrier arm system being suspended from a free end of the ceiling tube. Rodgers is configured to rotatably support a carrier arm to the same extent as the disclosed invention.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Rodgers in view of US Patent App. No. 2004/0156674 to Ko (Ko).
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Regarding Claim 14: Rodgers does not disclose a chamfer; however, Ko teaches wherein the ceiling tube segments are provided with a mounting chamfer (See Annotated Fig. B) at the entrance of the female thread, the mounting chamfer configured to promote self-alignment of the adjacent tube segments during assembly.
Response to Amendment
Applicant’s arguments with respect to claim(s) 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In addition to the references used in this rejection and those cited in the PTO-892, the following references are very relevant to the claimed invention: US 11859799.
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 ERET C MCNICHOLS whose telephone number is (571)270-7363. The examiner can normally be reached Monday - Friday: 9:00 - 5:00 (Eastern).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terrell McKinnon can be reached at 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ERET C. MCNICHOLS
Primary Examiner
Art Unit 3632
/ERET C MCNICHOLS/Primary Examiner, Art Unit 3632
1 See Col. 3, lines 36-39.
2 See MPEP 2144.07.
3 See Col. 3, lines 32-35.
4 See Col. 3, lines 36-39.
5 See Col. 2, lines 57-60.
6 See Col. 2, lines 57-60.