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 Interpretation
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.
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 limitations are:
i. Claim 14, “attachment device”, which has been interpreted as detailed in paragraph 34 of Applicant’s published application, or equivalents thereof.
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.
Claim Objections
Claims 1-15 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 1, the 5 instances of “least one” in lines 2-5 should be --at least one-- to correct the grammar.
Regarding claims 9-11, the many instances of “least one” should be --at least one-- to correct the grammar.
Regarding claim 10, “includes” in line 4 appears to be a typographical error and should be deleted.
Regarding claim 11, line 2, “at to” should be --[[at]] to-- to correct the grammar.
Regarding claims 11-12, it is reasonably clear that coupling the first and second seam sections implicitly indicates a seam. Accordingly, there is sufficient antecedent basis for “the seam” in claim 12 even though a seam is not explicitly recited. However, the examiner suggests inserting --to form a seam and-- before “to couple” line 4 of claim 11. This explicitly introduces the seam referenced in claim 12 and thereby improves claim readability.
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 1-15 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.
Regarding claim 1, at least one pliable insert is recited in line 2. It is unclear which of the at least one pliable insert is being referenced by “the pliable insert” in line 10. The examiner suggests consistently referencing the at least one pliable insert.
Regarding claim 6, there is insufficient antecedent basis for “the at least one pliable rod”. Parent claim 1 does not recite at least one pliable rod or any rod.
Regarding claims 7-9, parent claim 1 recites at least one first cover layer and at least one second cover layer. It is unclear which is being referenced by instances of “the first cover layer” and “the second cover layer”, respectively, in claims 7-8. The examiner suggests consistently referencing the at least one first cover layer and the at least one second cover layer.
Regarding claim 8, it is unclear how “type” modifies mesh. Accordingly, it is unclear what falls within the scope of “mesh type”.
Regarding claim 9, parent claim 1 recites at least one pliable insert. It is unclear which of the at least one pliable insert is being referenced by “the pliable insert”. The examiner suggests consistently referencing the at least one pliable insert.
Regarding claim 9, it is unclear if “first and second cover layers” in line 4 is referencing previously recited cover layer or new layers. Additionally, parent claim 1 recites at least one first cover layer and at least one second cover layer. It is unclear if this phrase in claim 9 is referencing the at least one first cover layer and at least one second cover layer of claim 1. The examiner suggests consistently referencing the previously recited at least one first cover layer and at least one second cover layer.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2018/0337520 A1) in view of Murray (US 4402489).
Regarding claim 1, Kim teaches a method for forming a flexible covering (paragraph 7). Kim provides a pliable insert, a first cover layer and a second cover layer on opposite sides of the pliable insert (paragraphs 8-11), the flexible wrap having a prescribed length between first and second ends in a first direction (paragraph 16; claim 1). Kim teaches a first edge of the flexible wrap overlaps a second edge of the flexible wrap in a first state (Figures 1-3; paragraph 7; claim 1), wherein the at least one pliable insert is at least partially embedded within the flexible wrap (Figure 1-3; paragraph 11-12), wherein the pliable insert is configured to maintain the flexible wrap in a bent state when the flexible wrap is folded in a second direction different from the first direction (paragraph 12; claim 1), and wherein the flexible wrap is capable of being unrolled into a second state (Abstract; paragraph 8; claim 1).
Kim differs from claim 1 in that:
i. Kim does not teach coupling together the first and second cover layers.
(i) The illustrated embodiments of Kim show a flexible covering in which the components are integrated into a unitary sleeve. In a flexible multicomponent sleeve for a rope with insert components provided between cover layers, Murry suggests coupling the cover layers together around edges and around the inserts by sewing to form a unitary sleeve (Figures 1-2; column 2, lines 15-27). It is readily apparent that the stitching around the inserts keeps them in a desired position between the cover layers. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional step in Kim because one having ordinary skill in the art would have been motivated to form a unitary sleeve in a known suitable manner and/or to keep the pliable inserts in a desired position as suggested by the teachings of Murray.
Regarding claims 2-8, Kim teaches these additional limitations (paragraphs 8-9, 11, 14 and 16; claims 1-8). Further regarding claims 7-8, Kim’s teachings of a non-conducting flexible rubber covering (paragraph 8), a mesh wrap (claim 8), and a covering comprising two layers of covering material with the pliable insert therebetween (paragraph 11), and a covering which may be a mesh (paragraph 15), it is reasonably clear that Kim suggests one of the covering layers may be a non-conducting rubber or mesh material.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Murray as applied to claims 1-8 above, and further in view of either one of Wetsch (US 2018/0305049 A1) or Kane (US 2013/0014326 A1).
Regarding claims 9-10, Murray was applied above for suggesting Murray suggests coupling the cover layers together around edges by sewing to form a unitary sleeve. While Murray only suggests sewing to perform the coupling step, it is generally recognized that adhesive bonding (claim 10), or hook and loop mechanical fastening (claim 9) are alternatives to sewing for joining layers at seams. See Wetsch (paragraph 26). See Kane (paragraph 37). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in the modified method of Kim because one having ordinary skill in the art would have been motivated to art recognized suitable alternative seaming methods as suggested by either one of Wetsch or Kane.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Murray and Kane, and optionally further in view of Wetsch.
Kim, Murray, Kane and Wetsch are applied as above in the rejection of claims 9-10. Kane is required here to address claim 11 as detailed below.
Regarding claim 11, as noted above Wetsch or Kane suggests using a seam formed by a hook and loop fasteners. Such fasteners commonly work by securing a first hook seam section to one substrate and a second loop seam section to another substrate such that the seam sections are coupled together to join the substrates at a seam. See Kane (paragraph 41). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these further limitations in the modified method of Kim because one having ordinary skill in the art would have been motivated to use hook and loop fasteners in a known manner, as evidenced by Kane.
Regarding claim 12, as applied above, Murray suggests coupling the cover layers around the inserts, which satisfies the recited edge of a portion of the pliable insert, in order to form a unitary sleeve. As noted above, it is readily apparent that the stitching around the inserts keeps them in a desired position between the cover layers. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this step in Kim because one having ordinary skill in the art would have been motivated to form a unitary sleeve in a known suitable manner and/or to keep the pliable inserts in a desired position as suggested by the teachings of Murray.
Claim 13 is satisfied for the reasons provided above.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Murray as applied to claims 1-8 above, and further in view of Bryl (US 2004/0099426 A1)
Regarding claims 14-15, while not taught by Kim, these additional limitations are suggested by Bryl to allow for suitable attachment or removable attachment of a sleeve to a desired surface (Figures 9-10; paragraphs 10, 11, 17, 22, 45, 50 and 56-57). It is noted that the hook and loop connector or adhesive connector suggested by Bryl falls within the scope of the claimed attachment device as interpreted above in the Claim Interpretation section. See Applicant’s published application (paragraph 34). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in the modified method of Kim because one having ordinary skill in the art would have been motivated to allow for suitable attachment or removable attachment of a sleeve to a desired surface as suggested by the teachings of Bryl.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745