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 14 is objected to because of the following informalities: claim 14 “the actuating end” should be read –an actuating end”; . Appropriate correction is required.
Claim Interpretation
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
The “first stop portion for limiting a moving distance of the suction pipe” and the “first operation portion for limiting …” in claims 1 and 16 and
The “second stop portion …” and the “second operation portion…” in claim 9 invoke 112F because, an example, In claim 1, “a first stop portion for limiting a moving distance of the suction pipe” invokes 112F because first, "portion" is a generic substitute for “means”; second, the "portion" is modified by functional language including “for limiting …”; and third, the "portion" is not modified by sufficient structure to perform the recited function because "stop" preceding portion describes the function, not the structure of the portion.
Similarly analysis with other limitations.
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. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6, 9-22 of this pending application are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims of the copending applications No. 19/087451.
Although the claims language at the copending applications are not identical, they are not patentably distinct from each other because it is clear that all structures of Claims of this pending application are found in Claims of the copending applications (for an example, claim 1 of this application recites “a first stop position” and claim 3 of the copending application recites “a first stop portion” .
For example, Claims 1 and 16, the pending application No. 19/087451 teaches all of the limitations as set forth in claims 1 and 16 of this Application (see claims 1, 3-5 of the copending application No. 19/087451).
Structures of depending Claims may be found in claims 1-20 of the copending application in view with art as seen below except allowable claims.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 5-6, 9-11, 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu (CN 110227962 A and Translation)
Regarding claim 1, Lu shows a dust collecting device (Figure 3) comprising:
a main housing (40);
a suction pipe (74) disposed on the main housing along longitudinal direction the suction pipe, wherein the suction pipe is movable relative to the main housing along the longitudinal direction of the suction pipe (see the discussion of the suction pipe 74 adjustable);
a first stop portion (61, Figure 16, for movable and engaging one of slots 802) for limiting a moving distance of the suction pipe toward the main housing, wherein the first stop portion is disposed on the suction pipe (Figure 14) and is movable relative to the suction pipe along the longitudinal direction of the suction pipe (Translation, page 10, the last paragraph “first stopping unit provided with a drive 60, the drive 60 is provided with can enter and off the holding part 802 of the locking part 600, …the first stopping unit can move along the length direction of the extension tube 74 relative to the extension tube 74”);and
a first operation portion (600/602/605/604 for operating or moving the blocking member 600, Figure 16) for limiting a moving distance of the first stop portion relative to the suction pipe along the longitudinal direction of the suction pipe, wherein the first operation portion is disposed on the main housing (as this is written, it is not required to have the first operation portion is directly disposed on the main housing, therefore, see Figure 4, all parts are connecting to the tool housing and meet this limitation).
Regarding claim 2, Lu shows that the first operation portion (600/602/605/604) has a first position and a second position relative to the main housing (see a pressing manner and a releasing manner of the button 602), and the first operation portion (not pressing or releasing positions of the button 602) is disposed in the first position to prevent the first stop portion from moving relative to the suction pipe (because the part 600 is entered to the one of slots 802) and disposed in the second position to allow the first stop portion moving relative to the suction pipe (releasing position, not enter to the slot 802).
Regarding claim 3, Lu shows that the first operation portion comprises a first locking member (see the part 600, Figure 15), the first stop portion comprises a second locking member (one of the slots 802), the first locking member is engaged with the second locking member when the first operation portion is in the first position, and the first locking member is separated from the second locking member when the first operation portion is in the second position (see claim 2 above).
Regarding claim 5, Lu shows that the first operation portion comprises a first button assembly (see the button 602, Figures 16 and 18) operably disposed on the main housing (this is inherent limitation, since all parts are connecting to the tool housing), and the first locking member (600, Figure 15) responds to the operation of the first button assembly.
Regarding claim 6, Lu shows that the first button assembly (602) comprises a first pressing member (a top surface of the button 602) and a first response member (spring 62, Figure 16) disposed at an actuating end of the first pressing member, and the first locking member (600) is disposed on the first response member (Figure 16).
Regarding claim 9, Lu shows a second stop portion (65 with a portion of the rack 80, Figure 15) disposed on the suction pipe along the longitudinal direction of the suction pipe and a second operation portion (64) disposed on the main housing, and the second stop portion cooperates with the second operation portion to limit the moving distance of the suction pipe away from the main housing (Figures 4 and 15);
Regarding claim 10, Lu shows wherein the second operation portion has a first position and a second position relative to the main housing, and the second operation portion is disposed in the first position to prevent the second stop portion from moving relative to the suction pipe and disposed in the second position to allow the second stop portion moving relative to the suction pipe (see the driving member 64 of 640 for holding and releasing the holding part 802)
Regarding claim 11, Lu shows that the second operation portion comprises a third locking member (640), the second stop portion comprises a fourth locking member (one of the holding parts 802), the third locking member is engaged with the fourth locking member when the second operation portion is in the first position, and the third locking member is separated from the fourth locking member when the second operation portion is in the second position (see the discussion in claim 10 above),
Regarding claims 13-15, Lu shows that the second operation portion comprises a second button assembly (630, Figure 8) operably disposed on the main housing, and the third locking member (640, Figure 8) responds to the operation of the second button assembly,
wherein the second button assembly (630) comprises a second pressing member (a top of the button 630) and a second response member (spring 66) disposed at an actuating end of the second pressing member, the third locking member is disposed on the second response member (see part 640, Figure 15), and the second response member is movable relative to the main housing along the longitudinal direction of the suction pipe (see the discussion of second slider 65 moved along extension 74),
wherein the second stop portion is disposed on one side of the suction pipe opposite to the first stop portion (see Figure 14, both sliders 61, 65 on the tube 74).
Regarding claims 16-17,Lu shows all of the limitations as stated in claims 1-3 above.
Claim Rejections - 35 USC § 103
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.
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.
Claims 4 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Lu
Claims 4 and 12, Lu shows all of the limitations as stated above except a first or third toothed rack disposed along the longitudinal direction of the suction pipe, and second or a fourth toothed rack disposed along the longitudinal direction of the suction pipe and matched with the first or third toothed rack, and the length of the first or third toothed rack is less than the length of the second or fourth toothed rack, respectively.
Examiner notes that Lu’s reference having a tooth for the first locking member and a tooth for the second locking member.
Therefore, it would have been obvious to one having ordinary skill in the art to have modified the first locking member and the second locking member (single tooth) to be a toothed rack, 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., in order to allow to firmly lock or grasp the holding parts (toothed rack of the suction pipe).
Allowable Subject Matter
Claims 18-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: claim 18 do not anticipate or render obvious the features of the first operation portion comprises a first locking member, the first stop portion comprises a second locking member, the main housing is provided with a fifth locking member, the first locking member is respectively engaged with the second locking member and the fifth locking member when the first operation portion is in the first position, and the first locking member is engaged with the second locking member and the first locking member is separated from the fifth locking member when the first operation portion is in the second position in combination with the limitations as set forth in the independent claim and any intervening claims.
Response to Arguments
Claims have been amended, the previous 112b issues are mooted.
Applicant's arguments filed 06/18/2026 have been fully considered but they are not persuasive for the reason below.
Claim 1 that has been amended to have “the first stop portion…is movable relative to the suction pipe along the longitudinal direction of the suction pipe”, see the slider 61, Lu’s Figures 14-16, for movable and engaging one of slots 802 and see the discussion in claim 1 above. See the first stop portion in the rejection above for details.
And “a first operation portion for limiting a moving distance of the first stop portion relative to the suction pipe along the longitudinal direction of the suction pipe, wherein the first operation portion is disposed on the main housing”, this argument is not persuasive because as this is written, it is not required to have the first operation portion is directly disposed on the main housing, therefore, see Figure 4, all parts are connecting to the tool housing and meet this limitation. See the first operation portion in the rejection above for details.
With regards to the rack 80 is fixedly mounted to the tube 74, Examiner agrees that is corrected. However, claims have been changed their scope, the first stop portion can be interpreted as a slider 61 and the first operation portion can be interpreted as a driver member 600/602/605/604, Figure 16. See the rejections above for details.
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
Conclusion
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 NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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/NHAT CHIEU Q DO/ Primary Examiner, Art Unit 3724 8/24/2026
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