DETAILED ACTION
This is a Non-final Office Action on the merits for U.S. App. 18/668,173.
Claims 19-32 are pending.
Claims 1-18 are cancelled.
Claims 19-32 are examined.
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 Objections
Claim 29 is objected to because of the following informalities: line 4 of claim 29 defines “the sidewall a and a second level” which instead should defined --the sidewall [[a]] and a second level]]-- to remove the grammatical error. 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 21-24 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 21 defines “a third layer,” which renders the claimed invention indefinite since first and second levels have been previously defined and not layers and thus one of ordinary skill in the art would not know whether first and second layers are required in addition to the first and second levels or whether such limitations include a minor informality and instead should define --a third level--. For examining purposes and in light of the specification and drawings, “a third layer” is instead considered to define a --third level--. Moreover, claims 22-24 are rendered indefinite for depending upon claim 21.
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.
Claim(s) 19, 29, and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Green et al. (U.S. Publication 2016/0208491).
Regarding claim 19, Green et al. disclose a method for securing an impalement hazard, the method comprising:
selecting an impalement hazard cap (#8) having a first impact surface portion (#11) and a second, body portion (#9) having a sidewall (the cylindrical outer sidewall as depicted in figures 3 and 4) defining a void (#10), the void having a first level (the level where hole #15 is located in figure 3) wherein the void has a first cross-sectional area and a second level (the level where fins #14 are located in figure 3), above the first level (see figure 3), wherein the void has a second cross-sectional area smaller than the first cross-sectional area (The cross-sectional areas are not related to the levels and are only defined with respect to the void. As depicted in figure 5, the void #10 can comprise of a non-circular shape so that the vertical area along one vertical cross-section closer to the hole #15 is greater than the vertical area along a vertical cross-section further away from the hole #15 and thus meet such limitations as defined.), and a moveable plunger (#16) disposed in the void (see figure 5);
disposing an end of the impalement hazard (#17) within the void (see figure 7) so that the impalement hazard extends into the first level or the second level depending on the size of the impalement hazard (see figure 5, where the hazard #17 is inserted within a first level so as to be engaged by the plunger #16), and
advancing the plunger to push the impalement hazard against a portion of the sidewall of the body portion opposite the plunger to maintain the impalement hazard against a portion of sidewall of the second, body portion opposite the plunger (see figure 5, where the hazard #17 is pushed against the sidewall opposite the plunger and is maintained in the first level where the plunger is located and not in the second level where the sidewall forms the smallest cross section).
Regarding claim 29, Green et al. disclose a protective cap (#8) comprising an impact surface (#11) and a body (#9) extending downwardly from the impact surface (see figure 3), the body defining a void (#10), the protective cap further comprising a moveable plunger (#16) within the void (see figure 5), the plunger being movable toward a sidewall of the body defining the void (see figure 5), and therein the void has a first level having a first cross-sectional area between the plunger and the sidewall (the first level is considered the larger circular area closer to the aperture #15 of the plunger #16 of figure 5 which extends between the plunger and the sidewall, such as the plunger’s initial insertion within the aperture #15) and a second level having a second cross-sectional area between the plunger and the sidewall (the smaller circular area opposite the aperture #15 of figure 5 is considered the second level with second, different cross-sectional area that is located between the plunger and sidewall), the second cross-sectional area being smaller than the first cross-sectional area (see figure 5).
Regarding claim 30, Green et al. disclose the sidewall has a concave portion opposite the plunger (see figure 5, where the sidewall is curved so as to be concave shaped).
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.
Claim(s) 21-23 and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Green et al. in view of Bush et al. (U.S. Patent 4,202,378).
Regarding claim 21, Green et al. disclose the claimed invention except for a third level having a cross-sectional area smaller than the second cross-sectional area such that the method includes advancing the impalement hazard into the third layer. Such limitations positively define such a third level comprises of a cross-sectional area different than that of the second cross-sectional area and relates the third level with the cross-sectional area of such a level. It is highly well known in the art, as evidenced by Bush et al., that a cap for an impalement hazard comprising of an impact surface #18a and a body portion #16a can comprise of a void in the body portion #16a with a top portion that includes ribs #46a-d that form a stepped portion so as to form 3 different levels of different cross-sectional areas so as to allow for engagement of rebar of different diameters. See figure 6 and col. 3, ll. 28-35. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the cap of Green et al. to comprise of three levels in the void, where each level comprises of a different cross-sectional area, as taught in Bush et al., in order to properly engage and locate rebar of different diameters within the void and still allow for clamping of such rebar therein, such as by pushing smaller diameter rebar closer towards that far, concave sidewall of the void away from the plunger to maintain a vertical orientation of such rebar.
Regarding claim 22, Green et al. in view of Bush et al. render obvious the sidewall has a concrete portion at the first level opposite the plunger (as taught in Bush et al., the levels comprise of concave, circular portions in order to properly engage the outer cylindrical surface of rebar, where such features would be provided within Green et al. as explained above).
Regarding claim 23, Green et al. in view of Bush et al. render obvious the side wall has a concave portion at the first level, the second level, and the third level (Figure 6 of Bush et al. depicts the levels comprise of circular, concave portions in order to allow for engaging the outer, cylindrical surface of rebar. Furthermore, Green et al. disclose the sidewall where the plunger #16 is non-circular to form a decreasing width and concave portion for pushing rebar thereagainst. Thus, when Green et al. is modified in view of Bush et al., as explained above, the second and third levels can be considered any two of the top smaller circular areas of the void and the first level can be considered the area of the void where the plunger is located and which the plunger is to push the rebar against the sidewall of.).
Regarding claim 25, Green et al. disclose a protective cap (#8) for impalement hazards (#17) comprising: a housing (#8) with an impact surface (#11) and a body portion (#9) extending away from the first impact surface (see figure 3), the body portion having a sidewall (the cylindrical outer sidewall of the body #9 of figure 3) defining a void (#10), and a plunger (#16) movable within the void for holding an impalement hazard in the void (see figure 5).
However, Green et al. do not disclose first and second levels having different cross-sectional areas. It is highly well known in the art, as evidenced by Bush et al., that a cap for an impalement hazard comprising of an impact surface #18a and a body portion #16a can comprise of a void in the body portion #16a with a top portion that includes ribs #46a-d that form a stepped portion so as to form 3 different levels of different cross-sectional areas so as to allow for engagement of rebar of different diameters. See figure 6 and col. 3, ll. 28-35. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the cap of Green et al. to comprise of three levels in the void, where each level comprises of a different cross-sectional area, as taught in Bush et al., in order to properly center rebar of different diameters within the void and still allow for clamping of such rebar therein, such as by pushing smaller diameter rebar closer towards that far, concave sidewall of the void away from the plunger to maintain a vertical orientation of such rebar.
Regarding claim 26, Green et al. in view of Bush et al. render obvious a portion of the sidewall defining the void forms a concave portion in the first level (Green et al. depicts in figure 5 the sidewall at the level/area of the plunger is concave to abut the rebar thereagainst and figure 6 of Bush et al. depicts the levels comprise of concave, circular sidewalls in order to abut rebar of different diameters thereagainst).
Regarding claim 27, Green et al. in view of Bush et al. render obvious a portion of the sidewall defining the void forms a concave portion in the second level (Green et al. depicts in figure 5 the sidewall at the level/area of the plunger is concave to abut the rebar thereagainst and figure 6 of Bush et al. depicts the levels comprise of concave, circular sidewalls in order to abut rebar of different diameters thereagainst).
Regarding claim 28, Green et al. in view of Bush et al. render obvious the void has a third level disposed above the second level, the third level having a cross-sectional area smaller than the second level (as depicted in figure 6 of Bush et al., the ribs can form three different areas of different diameters in order to allow for rebar of different diameters to be inserted therein, where a third level can be provided within Green et al. above a second level when Green et al. is modified in view of Bush et al. as explained above).
Claim(s) 24 is rejected under 35 U.S.C. 103 as being unpatentable over Green et al. in view of Bush et al. and Kies et al. (U.S. Publication 2005/0169701).
Regarding claim 24, Green et al. in view of Bush et al. render obvious the claimed invention including the impalement hazard is held between the plunger and the concave portion of the side wall as depicted in figure 5 of Green et al., except for the plunger includes a concave portion. It is highly well known in the art, as evidenced by Kies et al. that in order to hold rebar #12 within a void #22, one can use a plunger #32 by itself, see figure 4A, or can use the plunger in conjunction with a plate #120 comprising of a concave inner surface that mates with the exterior surface of the rebar in order to press the rebar between the concave surface of the plunger plate and an opposite concave surface of the void. See figures 20 and 21. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the plunger of Green et al. to comprise of a plate portion with a concave portion, as taught in Kies et al., in order to better engage the outer surface of the rebar and properly compress the rebar against the opposite curved surface of the void.
Claim(s) 31 is rejected under 35 U.S.C. 103 as being unpatentable over Green et al. in view of Kies et al.
Regarding claim 31, Green et al. disclose the claimed invention except for the plunger includes a concave portion. It is highly well known in the art, as evidenced by Kies et al., that in order to hold rebar #12 within a void #22, one can use a plunger #32 by itself, see figure 4A, or can use the plunger in conjunction with a plate #120 comprising of a concave inner surface that mates with the exterior surface of the rebar in order to press the rebar between the concave surface of the plunger plate and an opposite concave surface of the void. See figures 20 and 21. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the plunger of Green et al. to comprise of a concave portion, as taught in Kies et al., in order to better engage the outer surface of the rebar and properly compress the rebar against the opposite curved surface of the void.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 12, 17, and 18 of U.S. Patent No. 11,988,001 in view of Bush et al.
Claim 19 of the present application is defined in claim 17 of U.S. Patent ‘011, except for the limitations defining first and second levels and first and second different cross-sectional areas. However, Bush et al. teach the obviousness of providing ribs #46a-d that are stepped in order to allow for seating or rebar of different diameters and it would have been obvious before the effective filing date of the claimed invention to have constructed the cap of U.S. Patent ‘011 with multiple levels with different cross-sectional areas, as taught in Bush et al., in order to allow for proper engagement of rebar of different diameters.
Claim 20 of the present application is defined in claim 18 of U.S. Patent ‘011 in view of Bush et al. as explained above.
Claim 21 of the present application is defined in claim 17 of U.S. Patent ‘011 in view of Bush et al. as explained above, where Bush et al. teach the obviousness of using at least three different levels of different cross-sectional areas for rebar engagement.
Claim 22 of the present application is defined in claim 17 of U.S. Patent ‘011 in view of Bush et al. as explained above.
Claim 23 of the present application is defined in claim 17 of U.S. Patent ‘011 in view of Bush et al. as explained above, where Bush et al. teach the obviousness of using concave surfaces for such levels.
Claim 24 of the present application is defined in claim 17 of U.S. Patent ‘011 in view of Bush et al. as explained above.
Claim 25 of the present application is defined in claim 12 of U.S. Patent ‘011, except for the limitations defining specifically that such steps of U.S. Patent ‘011, equivalent to the present first and second levels of the claimed invention, comprise of first and second different cross-sectional areas. However, Bush et al. teach the obviousness of providing ribs #46a-d that are stepped in order to allow for seating or rebar of different diameters and it would have been obvious before the effective filing date of the claimed invention to have constructed the cap of U.S. Patent ‘011 with multiple levels with different cross-sectional areas, as taught in Bush et al., in order to allow for proper engagement of rebar of different diameters.
Claim 26 of the present application is defined in claim 12 of U.S. Patent ‘011 in view of Bush et al. as explained above, where claim 12 of U.S. Patent ‘011 teaches such concave channels within each step.
Claim 27 of the present application is defined in claim 12 of U.S. Patent ‘011 in view of Bush et al. as explained above, where claim 12 of U.S. Patent ‘011 teaches such concave channels within each step.
Claim 28 of the present application is defined in claim 12 of U.S. Patent ‘011 in view of Bush et al. as explained above, where Bush et al. teach the obviousness of providing at least 3 levels of different cross-sectional areas in order to engage rebar of different diameters.
Claim 29 of the present application is defined in claim 12 of U.S. Patent ‘011, except for the limitations defining specifically that such steps of U.S. Patent ‘011, equivalent to the present first and second levels of the claimed invention, comprise of first and second different cross-sectional areas. However, Bush et al. teach the obviousness of providing ribs #46a-d that are stepped in order to allow for seating or rebar of different diameters and it would have been obvious before the effective filing date of the claimed invention to have constructed the cap of U.S. Patent ‘011 with multiple levels with different cross-sectional areas, as taught in Bush et al., in order to allow for proper engagement of rebar of different diameters.
Claim 30 of the present application is defined in claim 12 of U.S. Patent ‘011 in view of Bush et al. as explained above.
Claim 31 of the present application is defined in claim 12 of U.S. Patent ‘011 in view of Bush et al. as explained above.
Claim 32 of the present application is defined in claim 7 of U.S. Patent ‘011, where claim 7 of U.S. Patent ‘011 can be modified to include a plurality of levels of different cross-sectional area as explained above in view of Bush et al.
Allowable Subject Matter
Claims 20 and 32 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the double patenting rejections as provided above are overcome.
Conclusion
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635