Detailed Action
Preliminary Amendment
1. Entry of applicant’s preliminary amendment dated 2-5-24 into the application file is acknowledged.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
3. 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.
The abstract of the disclosure is objected to because it contains drawing figure reference numerals. 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).
Drawings
4. 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 movable portion enclosing the bristles as detailed in claim 15 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.
Claim Interpretation
5. 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.
Regarding claims 10 and 22, applicant has not invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed means of corresponding dimples and bumps in that applicant claims specific structure for this claimed feature being the dimples and bumps claimed.
Regarding claims 11 and 23, applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed releasable catch mechanism and as seen in applicant’s originally filed disclosure the releasable catch mechanism is detailed as such a catch mechanism may comprise one or more resilient tabs on the outer ferrule or moveable portion and corresponding slots on the inner ferrule. Any suitable catch mechanism can be used that allows the moveable portion to be moved as required and that retains it in the desired set position or positions.
Claim Rejections - 35 USC § 112
6. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5, 7-8, 18 and 20-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claim limitations of the proximal ends of the front plate and the rear plate are moved apart to rotate the distal ends of the plates together in claim 5 are not described in applicant’s originally filed specification to enable one skilled in the art to make and/or use the invention in that applicant’s originally filed disclosure details the plates move along the grooves via associated tabs in the grooves and the grooves are linear grooves and the orientation of these grooves being the convergence of the grooves as seen in applicant’s drawing figures brings the distal ends of the plates together and this would not provide for a rotation of the distal ends of the plates given the linear orientations of the grooves.
Further, the claim limitations of the front and rear plate are connected by a hinge portion and are arranged to rotate from a position where the plates are parallel to one another to a position where the distal ends of the plates are moved closer to each other in claims 8 and 20 are not described in applicant’s originally filed specification to enable one skilled in the art to make and/or use the invention in that applicant’s originally filed disclosure details the plates move along the grooves via associated tabs in the grooves and the grooves are linear grooves and the orientation of these grooves being the convergence of the grooves as seen in applicant’s drawing figures brings the distal ends of the plates together and this would not provide for a rotation of the distal ends of the plates given the linear orientations of the grooves.
7. 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 11, 14, 20 and 23 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.
Claims 11 and 23 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. In claims 11 and 23, applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed releasable catch mechanism and as seen in applicant’s originally filed disclosure the releasable catch mechanism is detailed as such a catch mechanism may comprise one or more resilient tabs on the outer ferrule or moveable portion and corresponding slots on the inner ferrule. Any suitable catch mechanism can be used that allows the moveable portion to be moved as required and that retains it in the desired set position or positions, and the phrase any suitable catch mechanism can be used renders the claims indefinite in that it is unclear to what catch mechanisms are being contemplated by the claims.
Claim 14 is 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. It is unclear to how many slots are being claimed in that claim 14 requires at least two slots but parent claim 13 only requires one or more slots.
Claim 20 is 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. It is unclear to whether the rotation detailed in claim 20 is the same or different than the rotation detailed in parent claim 5 and it is unclear to whether the hinge detailed in claim 20 provides for the rotation detailed in parent claim 5.
Claim Rejections - 35 USC § 102
8. 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.
(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, 5, 7-9, 11-12, 16-17, 20-21 and 23 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by U.S. Patent No. 4,237,579 to Salmon.
Referring to claim 1, Salmon discloses a paintbrush having adjustable control of bristle length, the paintbrush comprising, a handle – at 22, a plurality of bristles – at 28, an inner ferrule – at portion of 9 containing item 10 between items 22 and 28 as seen in figure 4, for mounting the bristles – at 28, to the handle – at 22 – see figure 4, the inner ferrule having a proximal end adjacent the handle – at 22 – see figure 4, and a distal end adjacent the bristles – at 28 – see figure 4, characterized in that the paintbrush further comprises an outer ferrule – at 11,12, mounted on the inner ferrule – see via 10 and 14-19 in figures 4-5, wherein the outer ferrule comprises at least one moveable portion – at 11,12, having proximal and distal ends – see figures 4-5, the at least one moveable portion comprising two independent plates – at 11 and 12, a front plate – at 11, and a rear plate – at 12 – see figures 4-5, the at least one moveable portion is arranged to surround the bristles – at 28 – see figures 4-5, and the at least one moveable portion – at 11,12, has a retracted position wherein it is positioned over the inner ferrule with the distal end of the at least one moveable portion positioned adjacent the distal end of the inner ferrule – see movable via items 14-19 into the position of figure 6, and wherein the at least one moveable portion – at 11,12, can be moved from the retracted position along the bristles – at 28, to an extended position wherein the at least one moveable portion – at 11,12, surrounds the bristles – at 28, along at least a portion of the length of the bristles – at 28 – see movable via items 14-19 into the position of figure 7, the extended position being selected to provide a desired amount of bristle – at 28, length beyond the distal end of the moveable portion – at 11,12, or to extend beyond the length of the bristles – at 28 – see desired amount of bristle length beyond the distal end of the moveable portion – at 11,12 in figures 4-7.
Referring to claim 5, Salmon further discloses the proximal ends – at 21 and 24, of the front plate and the rear plate – at 11,12, are moved apart to rotate the distal ends of the plates – at 13,23, together to compress bristles – at 28, at the distal ends of the plates – at 11,12, as the at least one moveable portion is moved towards an extended position – see figures 4-7 where upon loosening of item 16 on item 14 items 21,24 are capable of moving apart so that rotation of items 13,23 about item 14 can be made to move items 13,23 closer together and in contact with the bristles – at 28.
Referring to claim 7, Salmon further discloses the inner ferrule – at portion of 9 containing item 10 between items 22 and 28 as seen in figure 4, comprises a wedge – see outer surface containing item 10 as seen in figure 4, the wedge shaped to assist in forcing the distal ends – at 21,23, of the plates – at 11,12, together as the plates – at 11,12, are moved to an extended position – see figure 4-7 where the outer surface of 9 proximate 10 allows for the proximal ends of the plates – at 11,12 at 21,24 to be spaced apart allowing the distal ends – at 21,23 to be located close together as seen in figure 4.
Referring to claims 8 and 20, Salmon further discloses the front plate – at 11, and the rear plate – at 12, are connected by a hinge portion – at 14, and are arranged to rotate from a position where the plates – at 11,12, are parallel to one another – see figures 4-6, to a position where the distal ends of the plates – at 21,23, are moved closer to each other – see for example figures 5 and 7 where upon loosening of item 16 on item 14 items 21,24 are capable of moving apart so that rotation of items 13,23 about item 14 can be made to move items 13,23 closer together and in contact with the bristles – at 28.
Referring to claims 9 and 21, Salmon further discloses the front plate – at 11, and the rear plate – at 12, are different lengths – see figure 5.
Referring to claims 11 and 23, Salmon further discloses a releasable catch mechanism – at 14-19, mounted on one or both of the inner ferrule and the at least one movable portion – see on both in figures 4-5, the catch mechanism – at 14-19, being released to allow at least one moveable portion – at 11,12, to move – see released via item 16 in figures 4-5. Regarding the 35 U.S.C. 112(f) means plus function analysis with respect to the claimed releasable catch mechanism items 14-19 of Salmon comprise tabs – at 14-17 and slots – at 18-19 as disclosed by applicant.
Referring to claim 12, Salmon further discloses the catch mechanism is operable at set positions to retain the at least one moveable portion – at 11,12, in preselected positions over the bristles – at 28 – see figures 4-7 with set positions along items 18-19.
Referring to claim 16, Salmon further discloses the at least one moveable portion – at 11,12, is arranged to compress the bristles – at 28, as the at least one moveable portion – at 11,12, is moved towards the end of the bristles – at 28 – see via items 13 and 23 in figures 4-7.
Referring to claim 17, Salmon further discloses the bristles – at 28, have a left side and a right side – see figures 4-5, and the at least one moveable portion – at 11,12, is longer at one of the left or right sides than the other of the sides – see longer – at 11 in figures 4-5, such that the distal end – at 21,23, of the at least one moveable portion – at 11,12, is positioned diagonally with respect to the distal end of the inner ferrule – at 9 containing 10 – see diagonal at items 13,21,23,24,26,27 in figures 4-5.
Claim Rejections - 35 USC § 103
9. 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.
Claim(s) 6 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Salmon as applied to claims 1 or 5 above, and further in view of U.S. Patent No. 987,277 to Wright.
Referring to claims 6 and 18, Salmon discloses top and bottom plates – at 11 and 12 but does not disclose the inner ferrule comprises at least one pair of grooves, the grooves converging towards the distal end of the inner ferrule, and the front plate comprises at least one tab that engages with one of the pair of grooves and the rear plate comprises at least one tab that engages with the other of the pair of grooves. Wright does disclose the inner ferrule – at 1 proximate 2, comprises at least one pair of grooves – at 4 – see figures 1-5 and lines 47-51, the grooves – at 4, converging towards the distal end of the inner ferrule – at 1 proximate 2 – see at 4 in figures 1-2 which extend/converge from the handle to the distal end at connection of 1,2, and the front portion – top of 3, comprises at least one tab – at 5, that engages with one of the pair of grooves – at 4 – see figures 1-5, and the rear portion – at bottom of 3, comprises at least one tab – other of items 5, that engages with the other of the pair of grooves – at 4 – see figures 1-5. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Salmon and add the grooves and tabs of Wright, so as to yield the predictable result of reliably moving and securing the inner and outer ferrules with respect to each other during use.
Referring to claim 19, Salmon as modified by Wright further discloses the inner ferrule – at portion of 9 containing item 10 between items 22 and 28 as seen in figure 4 of Salmon, comprises a wedge – see outer surface containing item 10 as seen in figure 4 of Salmon, the wedge shaped to assist in forcing the distal ends – at 21,23, of the plates – at 11,12, together as the plates – at 11,12, are moved to an extended position – see figure 4-7 of Salmon where the outer surface of 9 proximate 10 allows for the proximal ends of the plates – at 11,12 at 21,24 to be spaced apart allowing the distal ends – at 21,23 to be located close together as seen in figure 4 of Salmon.
Claim(s) 10, 15 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Salmon as applied to claims 1 or 5 above, and further in view of U.S. Patent No. 4,847,939 to Derencsenyi et al.
Referring to claims 10 and 22, Salmon does not disclose the at least one moveable portion is retained in set positions by means of corresponding dimples and bumps on an outer surface of the inner ferrule and an inner surface of the at least one moveable portion. Derencsenyi et al. does disclose the at least one moveable portion – at 10, is retained in set positions by means of corresponding dimples and bumps – at 12 and between 12, on an inner surface – at 3,3’, of the at least one moveable portion – at 10 – see figure 7. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Salmon and add the dimples and bumps of Derencsenyi et al., so as to yield the predictable result of removably securing the movable portion to the inner ferrule as desired. Salmon as modified by Derencsenyi et al. does not disclose the dimples and bumps are on an outer surface of the inner ferrule. However, it would have been obvious to one of ordinary skill in the art to take the device of Salmon as modified by Derencsenyi et al. and have the dimples and bumps on the outer surface of the inner ferrule as claimed, so as to yield the predictable result of removably securing the movable portion to the inner ferrule as desired.
Referring to claim 15, Salmon does not disclose the at least one moveable portion can be moved to an extended position that completely encloses the bristles. Derencsenyi et al. does disclose the at least one moveable portion – at 10, can be moved to an extended position that completely encloses the bristles – see figure 5. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Salmon and add the movable portion enclosing the bristles as disclosed by Derencsenyi et al., so as to yield the predictable result of better protecting the bristles as desired.
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Salmon as applied to claim 11 above.
Referring to claim 13, Salmon further discloses the catch mechanism comprises at least one tab –
at 14,16,17, on the at least one moveable portion – at 11,12, - see figures 4-5, and at least one
corresponding slot – at 10, on the inner ferrule – see figures 4-5. Salmon does not disclose the at
least one tab is resilient. However, it would have been obvious to one of ordinary skill in the art
to take the device of Salmon have the at least one tab be resilient as claimed, so as to yield the
predictable result of allowing the tab to be easily moved into different positions as desired to
assemble the components of the device together.
Referring to claim 14, Salmon further discloses the slots – at 18,19, are arranged at set positions to retain the at least one moveable portion – at 11,12, in preselected positions relative to the length of the bristles – at 28 – see figures 4-7.
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following patents are cited to further show the state of the art with respect to paint brushes in general:
U.S. Pat. No. 136,288 to Wagner – shows paint brush
U.S. Pat. No. 2,787,016 to Carpenter – shows paint brush
U.S. Pat. No. 4,062,084 to Dubois – shows paint brush
U.S. Pat. No. 4,339,837 to Reeberg – shows paint brush
U.S. Pub. No. 2011/0239392 to Levy et al. – shows paint brush
U.S. Pat. No. 10,986,915 to Meyer et al. – shows paint brush
U.S. Pat. No. 11,904,627 to Davis – shows paint brush
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PARSLEY whose telephone number is (571)272-6890. The examiner can normally be reached Monday-Friday, 8am-4pm EST.
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, Peter Poon can be reached at (571) 272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID J PARSLEY/Primary Examiner, Art Unit 3643