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 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.
The terms “relatively flexible and pliable” and “low stiffness” in claim 11 are relative terms which render the claim indefinite. The term “relatively flexible and pliable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention..
Claims 1, 2, 4, 5, and 6 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 Claim 1, the final clause of the claim--“wherein the retainer is configured to release…”--constitutes a functional, rather than structural, limitation. A claim term is functional when it recites a feature "by what it does rather than by what it is" (e.g., as evidenced by its specific structure or specific ingredients). MPEP 2173.05(g). In this case, the clause is functional because it purports to define the invention in terms of how it would operate/perform, and how the parts would move with respect to each other during a hypothetical vehicle impact.
On the one hand, there is nothing inherently wrong with defining some part of an invention in functional terms, and functional language does not, in and of itself, render a claim improper. In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). However, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008. Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (en banc).
In this case, it is unclear whether a device having all of the structural elements of claim 1 (i.e., the strap, the retainer, and the supporting arrangement) would, or would not, satisfy the functional elements of the final clause. For instance, as outlined below, Examiner finds all of the structural elements of claim 1 in US 2213239 to Camp. Moreover, Examiner finds that Camp satisfies the functional limitations as well. However, if Camp is not “configured to release from the supporting arrangement…and remain movably connected to the strap such that the retainer is free to move along a length of the strap together with a contacting surface of the impacting vehicle,” then it is unclear what structural features are missing from Camp that would enable it to meet that limitation.
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) 1-7, 9, and 11-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2213239 to Camp (hereinafter “Camp”)
-From Claim 1: Camp discloses a roadside crash barrier configured for deflecting errant vehicles that impact the crash barrier, the barrier comprising:
at least one elongate tensioned flexible strap 12 comprising a planar face facing the road in use and at least one retainer 11 operatively connecting the strap to a supporting arrangement 10, or a portion thereof, that is configured to support the retainer at a height above the ground in use pre-impact,
wherein the retainer 11 is configured to release from the supporting arrangement 10 during or after impact from an errant vehicle on the barrier (p. 3, ll. 14-26)` and remain movably connected to the strap (12 could slide within 17) such that the retainer 11 is free to move along a length of the strap 12 together with a contacting surface of the impacting vehicle.
-From Claim 2: Camp discloses wherein the movement of a released retainer along the length of the strap together with the impacting vehicle provides (i.e., would be configured to provide) a protective sheath between the contacting surface of the vehicle and the strap (if 11 disconnected from 10 due to an impact, 11 could slide with respect to the strap 12.)
-From Claim 3: Camp discloses wherein the barrier comprises a plurality of retainers 11 and plurality of corresponding supporting arrangements 10 along a length thereof.
-From Claim 4: Camp discloses wherein each retainer of at least some of the plurality of retainers is (i.e., is configured so as to be) successively collected by an impacting vehicle as it moves along a length of the barrier so as to provide a protective sheath between the contacting surface of the vehicle and the strap. (if 11 disconnected from 10 due to an impact, 11 could slide with respect to the strap 12.)
-From Claim 5: Camp discloses wherein the impacting vehicle continues to collect (i.e., is configured to collect) successive retainers of at least some of the plurality of retainers as it moves along the barrier the vehicle is deflected away therefrom and/or the vehicle's movement is substantially arrested. (if 11 disconnected from 10 due to an impact, 11 could slide with respect to the strap 12.)
-From Claim 6: Camp discloses wherein the protective sheath so formed during impact of the errant vehicle (would) substantially inhibits at least some penetration of the straps into the contacting surface of the vehicle. (if 11 disconnected from 10 due to an impact, 11 could slide with respect to the strap 12.)
-From Claim 7: Camp discloses where the strap's 12 elongate direction extends parallel the road, or lane of a road, in use, and/or wherein the planar face has a normal direction facing the road, and/or wherein the planar face is perpendicular a surface of the road, and the barrier is configured to deflect errant vehicles back towards the road.
-From Claim 9: Camp discloses wherein the planar face comprises a surface that is relatively smooth, and/or continuous along the length of the strap. (Fig. 1)
-From Claim 11: Camp discloses wherein the strap 12 is relatively flexible and pliable, and/or has low stiffness.
-From Claim 12: Camp discloses wherein the barrier comprises a plurality of straps 12.
-From Claim 13: Camp discloses wherein the supporting arrangement 10 is a rigid, semi-rigid, or deformable barrier.
-From Claim 14: Camp discloses wherein a connection between the retainer and the supporting arrangement or portion thereof is configured as a weak point (bolt 13) to allow disconnection therefrom at a predetermined force or movement.
-From Claim 15: Camp discloses wherein the supporting arrangement comprises a mount 13 to which the retainer is releasably connected, and an upright 10 to which the mount is releasably connected, the retainer 11 being configured to release from the mount and/or the mount being configured to release from the upright, upon the impact from the errant vehicle.
-From Claim 16: Camp discloses wherein the retainer comprises a retainer assembly of an outer retainer 17 and at least one an inner retainer 11 between which the strap is sandwiched in a manner so as to permit sliding movement of the retainer assembly along the strap after its release from the supporting arrangement or portion thereof.
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) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Camp.
-From Claim 8: Camp does not disclose wherein the strap is configured to be tensioned to between 200kN and 400kN; rather, Camp is silent as to the specific tension in the strap.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to arrange the strap with a tension of between 200kN and 400kN, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
-From Claim 10: Camp does not disclose wherein the strap is composed of two distinct straps sandwiched together; rather, it discloses just one strap per connection to retainer 11.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use two sandwiched-together straps instead of one, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St, Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, as the cited references include structure similar to that of the presently claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J WILEY whose telephone number is (571)270-7324. The examiner can normally be reached Mon-Fri, 9am-5pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at 5712705281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL J WILEY/Primary Examiner, Art Unit 3678 1/13/2026