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 .
Specification
The disclosure is objected to because of the following informalities:
In the specification page 11, para [0065], line 1, “the negative form 4” should be “the negative form 2”.
In the specification page 14, para [0065], line 1, “the handle 3” should be “the handle 4”. Appropriate correction is required.
Claim Objections
Claims 1-7 are objected to because of the following informalities: claims 1 and 2 includes the limitations “the securing means (1) being adapted, at least in regions, to the outer contour (3) of the hand-held torch (5)” and “the negative form (4) of the at least one securing means (1) is adapted to a handle (4) of the hand-held torch (5)” respectively. It is suggested to replace the respective limitation with -- a shape of the securing means (1) being adapted, at least in some regions, to the outer contour (3) of the hand-held torch (5) --; and --a shape of the negative form (4) of the at least one securing means (1) is adapted to a handle (4) of the hand-held torch (5)”. In that the conformity between the claimed features is by shape Appropriate correction is required.
In claim 1, line 4, it is suggested to replace “at least in regions” with --at least in some regions --.
In claim 3, lines 5-6, it is suggested to replace “and wherein at least one sub-element (6, 7) in each case” with -- and wherein one of the at least two sub-element (6, 7) --. For claim language consistency (i.e., see line 3 of claim 3).
In claim 4, line 5, it is suggested to replace “is covered at least in regions” with – is covered at least in some regions --.
In claim 5, lines 2-3, it is suggested to replace “at least one button” with -- the at least one button --. In that claim 4 provides sufficient antecedent basis for the limitation.
In claim 6, lines 5-7, replace “the sub-element” with --the at least one sub-element--.
In claim 7, it is suggested to replace “the sub-elements (6, 7) are each held in a receptacle (13, 14) of the holder (10)” with --the at least one sub-elements (6, 7) are held in a receptacle (13, 14) of the holder (10) --.
Claim Interpretation
4. 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.
5. 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.
Claim 1, line 3 recites the limitation “securing means for releasably securing……..”.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 1 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof. A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: the recited securing means in claim 1, line 3 is shown in the drawing figure 1 for example as numerical label 1, and described in the specification page 5, para [0028] for example as two half-shells.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1-19 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 1 recites the limitation "the outer" at the end line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the at least one securing means" in lines 2-3.
There is insufficient antecedent basis for this limitation in the claim, in that the base claim 1, requires a securing means.
Claim 4, recites the limitation “wherein when the hand-held torch (5) is secured, an operating element (12) or at least one button of the hand-held torch (5) is covered at least in regions in order to prevent unintentional operation”, without reciting what structure covers said operating element (12) or at least one button of the hand-held torch (5) and/or how said operating element (12) or at least one button of the hand-held torch (5) is covered. The limitation appears vague, thereby rendering the scope of the claim unascertainable.
Claim 5 recites the limitation "wherein the operating element (12) or at least one
button of the hand-held torch is covered by the holder (10) or the securing means (1) or a closure (11) or a receptacle (13, 14)” in lines 2-4.
Claim 6 recites the limitation "wherein at least one sub-element (6, 7) of the securing means (1)" in line 2-3. There is insufficient antecedent basis for this limitation in the claim, and furthermore the base claim 1, from which claim 6 depends from does not recite the securing means to comprise sub-elements.
Claim 6, lines 5-6, recites “the sub-element (6,7)”. There is insufficient antecedent basis for this limitation in the claim, in the preceding line requires “at least one sub-element (6,7)”.
Claim 7 recites the limitation "the sub- elements (6, 7)" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim, and furthermore the base claim 1, from which claim 6 depends from does not recite the securing means to comprise sub-elements.
Claim 8 recites the limitation "the receptacles (13, 14)" in line 2. There is insufficient antecedent basis for this limitation in the claim, and furthermore the base claim 7, from which claim 8 depends from recites “a receptacle (13,14)”.
Claim 8, recites the limitation “wherein the receptacles (13, 14) are pivotably connected to one another by means of a hinge (16) in order to be moved between an open position, in which the holder (10) can be attached to or on the hand- held torch (5)” in lines 1-5. In particular, the phrase “in which the holder (10) can be attached to or on the hand- held torch (5)” renders the limitation incomplete, and appears to be missing element(s). The claim is therefore rendered indefinite since the metes and bounds are unascertainable.
Claim 11 recites the limitation "wherein the sub-elements (6,7)" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim, and furthermore the base claim 1, from which claim 11 depends from does not recite sub-elements (6,7).
Claim 13 recites the limitation "the handle" in line 3. There is insufficient antecedent basis for this limitation in the claim, and furthermore neither the independent /base nor claim 12 from which claim 134 directly depends from recite “a handle”.
Claim 16 recites the limitation “The holder according to claim 14, wherein the half shells are each held in a respective receptacle of the holder, and wherein the receptacles are pivotably connected to one another by a hinge in order to be moved between an open position, in which the holder can be attached to or installed on the hand-held torch, and a closed position, in which the holder is secured to the hand-held torch”. The claim limitation as written is very confusing in that the configuration of the receptacle in the open position and the opposing closed position with respect to the hinge, the holder and the hand-held torch lack clarity, thereby rendering that claim indefinite since the scope is unascertainable.
Interpretation of Claim
8. Independent claims 1 and 14, recites a holder for a hand-held torch, however because these independent claims and the respective dependent claims only recites the particulars of the holder and not necessarily the particulars of the hand-held torch, the Examiner in this instant case construes the hand-held torch as an intended use of the claimed holder. Furthermore, it has been held by the court [A]pparatus claims cover what a device is, not what a device does"; and that a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Also, see MPEP 2114. II. Therefore, any prior art cutting or welding torch holder that shows all the structural features as in any of the instant claims would be interpreted by the Examiner to meet the claims even if said torch is not necessarily a hand-held type of torch.
Claim Rejections - 35 USC § 102
9. 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.
10. Claims 1-7, 11-15, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sperling (US Patent No. 5,837,967).
Regarding claims 1, 2 and 12, Sperling teaches a holder for a cutting or a welding torch (2, see abstract and column 1, lines 9-28), said holder (see figure 1, 2 and 4 and abstract), comprising a securing means (i.e., the two clamping jaws 3, 4 which is structural equivalent to the two half shells use to define the securing means in the application’s specification, see abstract , figures 1 and 4 and column 3, line 65-column 4, line 56) for releasably (see abstract, figures 1 and 4 and claim 1) securing a torch (2, see figures 1-2), the securing means (i.e., the two clamping jaws 3, 4) having at least in some regions a negative form (i.e. the concave inner surface of each one of the clamping jaws 3 and 4 for abutting the torch 2, see figures 1 and 4) of the torch (2,. See figures 1, 2 and 4) for reproducibly positioning (see abstract) the torch (2) in the holder (see figures 1, 2 and 4), and a shape of the securing means (i.e., the two clamping jaws 3, 4) being adapted, at least in some regions, to the outer contour ( see figure 4 shows as such) of the torch (2, see figures 1, 2 and 4) when the torch (2) is secured (see figure 4); wherein said negative form (i.e. the concave inner surface of each one of the clamping jaws 3 and 4 for abutting the torch 2, see figures 1 and 4) abuts a handle of the torch (2, see figures 2 and 4).
Note claim 12 is rejected together with the base claim 1 because said hand-held
torch as set forth in the claim is construed by the Examiner as any manually operated torch, which is covered by the disclosure of Sperling (see column 3, lines 53-54), particular since the hand-held torch as claimed does not include any particular structure features to distinguish over any convention torch, be it a hand-held or machine operated torch.
Regarding claim 3, Sperling teaches a securing means of the holder (see figures 1 and 4) that comprises two clamping jaws 3 and 4, and as such meets the requirement of at least two sub-element and in addition each of the clamping jaws 3 and 4 defines a negative form or a concave inner surface for abutting the torch (2, see figures 1, 2 and 4), hence Sperling shows substantially all aspects of the claim.
Regarding claims 4 and 5, Sperling teaches a holder in which when the torch (2) is secured, an operating element or at least one button (i.e. switch element 20, see figure 2 and column 4, lines 57-65) of the torch is covered (see figure 2, shows the switch element 20 covered as such) at least in some regions in order to prevent unintentional operation; wherein said an operating element or at least one button (i.e. switch element 20) is covered by securing means (jaws 3 and 3, see figure 2 shows as such).
Regarding claims 6, 7 and 11, Sperling teaches a securing means of the holder that comprises the two clamping jaws 3 and 4 (see figures 1 and 4) equipped with at least one sub-element (i.e., the locking element 16&16 see figures 1 and 4 and column 4, lines 1-14 ) of the securing means (1) that has at least one projection (see figures 1 and 4 the locking element (16) defines a projection or a protrusion (see column 4, lines 5-10); projecting from the surface of the at least one sub-element of the securing means which, when the at least one sub- element (16, 16, see figures 1 and 4) is arranged on the torch (2), engages in a corresponding recess (i.e., indentation 15, see column 4, lines 1-14 and figures 1 and 4) on the torch (2, see figures 1 and 4); wherein the at least one sub-elements (16 & 16) is held in a receptacle (reads on the hollow housing holding the spring 25, see figures 1 and 4 and column 4, lines 5-10) of the holder (see figures 1 and 4); and wherein the sub-elements (i.e., the locking element
16&16 see figures 1 and 4) are made of metal since all the components of the holder are made of metal.
Regarding claim 13, Sperling teaches a torch in which the main body (23) which reads on the handle as claimed; is designed to be non-rotationally symmetrical (see in figure the main body 23 is non-symmetrical and hence meets the requirement of being non-rotationally symmetrical).
Regarding claims 14 and 18, Sperling teaches a holder for a cutting or a welding torch (2, see abstract and column 1, lines 9-28), comprising: means (i.e., the two clamping jaws 3, 4 which is structural equivalent to the two half shells use to define the securing means in the applications’ specification, see abstract , figures 1 and 4 and column 3, line 65-column 4, line 56) for releasably (see abstract, figures 1 and 4 and claim 1) securing a torch (2, see figures 1-2) wherein at least one half-shell (i.e., or of clamping jaws 3, 4) is shaped to receive at least a portion of the outer contour ( see figure 4 shows as such) of the torch for reproducibly positioning the torch in the holder (see abstract).
Note claim 18 is rejected together with the base claim 14 because said hand-held
torch as set forth in the claim is construed by the Examiner as any manually operated
torch, which is covered by the disclosure of Sperling (see column 3, lines 53-54), particular since the hand-held torch as claimed does not include any particular structure features to distinguish over any convention torch, be it a hand-held or machine operated torch.
Regarding claim 15, Sperling teaches a holder in which when the torch (2) is secured, an operating element or at least one button (i.e. switch element 20, see figure 2 and column 4, lines 57-65) of the torch is covered (see figure 2, shows the switch element 20 covered as such) at least in some regions in order to prevent unintentional operation
Regarding claim 19, Sperling teaches a torch in which the main body (23) which reads on the handles as claimed; is designed to be non-rotationally symmetrical (see in figure the main body 23 is non-symmetrical and hence meets the requirement of being non-rotationally symmetrical).
Allowable Subject Matter
11. Claims 8-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
12. The following is a statement of reasons for the indication of allowable subject matter: Sperling which the closest prior art of record differs from the instant claimed invention by failing to teach and/or adequately suggest:
As in claim 8: a torch holder that comprises receptacles that are pivotably
connected to one another by means of a hinge in order to be moved between an open position, in which the holder is attached to the hand- held torch, and
a closed position, in which the holder is secured to the hand-held torch.
As in claim 10: a torch holder that comprises receptacles for the sub-elements, which when the securing means is arranged with the sub-elements on the hand-held torch, are releasably connected to one another by means of a snap-in connection or a screw connection or a closure
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Baldwin et al. (US 5,018,705), Binzel (US 2011/00622131), Bromwich et al. (US 4,161,640), Kane et al. (US 6,325,366) and Jokinen (WO2012/052621) are also cited in PTO-892.
14. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to MICHAEL ABOAGYE whose telephone number is
(571)272-8165. The examiner can normally be reached 8:30AM-5:00PM.
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, Keith Hendricks can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.A/Examiner, Art Unit 1733
/JESSEE R ROE/Primary Examiner, Art Unit 1759
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