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 .
Response to Amendment and Arguments
Applicant’s amendment and arguments, filed 6/17/2025, have been reviewed and considered. Claims 1 and 6 have been amended and therefore, claims 1-11 are currently pending. Applicant’s amendments to claims 1 and 6, are sufficient in overcoming the claim objection and the 35 U.S.C. 112(b) rejection, respectively. However, within the amendment to the drawings, dated 6/17/2025, the applicant added the reference character (7) to figures 1 and 2. Note that reference character (7) is supposed to represent the “threader” as claimed. This amendment is NOT sufficient in overcoming the drawings objection because the “threader”, as claimed, is still not shown in the drawings. The added reference character (7) is just pointing to the needle (5). The “threader” is still not being shown as required.
Applicant’s arguments in response to the prior art rejections of the previous Office Action are NOT persuasive for the reasons addressed below. Firstly, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., needle size interchangeability and adjustment of loop length) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Note that the applicant is only claiming a single punch needle; however, the structure of the punch needle assembly of MIDAS is fully capable of functioning to allow replacement of the punch needle with one having a differing size. Additionally, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The needles within SHORT 047 and SHORT 676 being used within a machine and not having a handle, as argued, is irrelevant because these references are secondary, but are still relevant to the issues at hand. Accordingly, the prior art rejections of the previous Office Action are deemed proper and still stand. This Office Action is a Final Rejection.
Drawings
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 “threader” must be shown or the feature(s) canceled from the claim(s). Note that the addition of the reference character (7) to figures 1 and 2 is not sufficient in showing the claimed feature(s) because the reference character (7) is just pointing at the needle (5). 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 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 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MIDAS (US 2,610,598).
Regarding claim 1, MIDAS discloses a punch needle assembly comprising of: a handle (18; includes 19) with a hollow cylinder (“cylindrical bore”; fig. 3) inside of the handle (18); a punch holder (20) attached to the handle; a guide bush (22, 24); a thumb screw (21); a punch needle (10); and a threader (16, 12a, 13a), wherein the guide bush (22, 24) is placed inside the punch holder (20) to insert the punch needle (10), and the thumb screw (21) is inserted into the punch holder (20) horizontally to secure the punch needle (10) (Figures 1-3, 5-6 and 8-11).
Regarding claim 2, MIDAS discloses wherein the punch needle (10) inserted into the guide bush (22, 24), is secured in place in the hollow cylinder inside of the handle (18) by fastening the thumb screw (21) (Figures 1-2 and 8-11).
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) 3 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over MIDAS (US 2,610,598) in view of GRAY (US 4,103,631).
Regarding claim 3, MIDAS discloses the punch needle assembly as discussed above. Note that MIDAS discloses elements 12a, 13a, 15 and 16 (i.e., “threader”) for threading a thread through a hollow center of the punch needle (10) to functionally guide a user to create loops on a fabric by punching the punch needle (Figures 1-2 and 5-6). However, MIDAS fails to discloses a threader that is separate from the punch needle wherein the “threader is inserted through tip of the punch needle”. GRAY discloses a punch needle assembly (10) comprising a threader (38) in the form of a wire (col. 3, lines 10-27) which is separate from a punch needle (22) thereof wherein the threader is inserted through a tip of the punch needle in order to more easily and quickly thread a thread through the punch needle (Figures 1 and 4). Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have provided the punch needle assembly of MIDAS with a separate threader, in light of the teachings of GRAY, in order to more easily and quickly thread the thread/yarn through the punch needle.
Regarding claim 11, MIDAS in view of GRAY teaches the punch needle assembly as discussed above comprising a threader in the form of a threading wire. However, MIDAS in view of GRAY fails to disclose the threader being made from tiger tail wire. The use of tiger tail wire (nylon-coated stainless steel wire) is considered old and known in the beading/threading art and is advantageous for its strength and flexibility. Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have made the threader (threading wire) of MIDAS in view of GRAY from a tiger tail wire material because such is considered old and known in the art in order for the threader to be strong and flexible.
Claim(s) 4 and 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over MIDAS (US 2,610,598).
Regarding claim 4, MIDAS discloses the punch needle assembly as discussed above wherein the punch holder (20) is secured to the handle (18) as shown in figures 1-3 and 8. However, MIDAS fails to disclose how the two elements are connected together. The use of adhesive to connect two or more elements together is considered old and known in the art in order in order to create a strong durable bond that is not visually unsightly. Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have connected the punch holder and handle of MIDAS with adhesive because such is considered old and known in the art in in order to create a strong durable bond that is not visually unsightly.
Regarding claim 7, MIDAS discloses the punch needle assembly as discussed above wherein the handle is made from wood (col. 2, lines 51-53). However, MIDAS fails to disclose the handle being made form engineered wood. The use of an engineered wood is considered old and known in the art in order to provide a wood finish that is more resistance to moisture, more dimensionally stable and cost effective. Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have provided the handle of MIDAS from an engineered wood because such is considered old and known in the art in order to provide a wood finish that is more resistance to moisture, more dimensionally stable and cost effective.
Regarding claim 8-10, MIDAS discloses the punch needle assembly as discussed above. However, MIDAS fails to disclose the specific materials being used for the punch holder, thumb screw and the guide bush. The use of metals such as stainless steel and aluminum are considered old and known in the art. Stainless steel is known for its corrosion resistance, strength and durability while aluminum is known for its corrosion resistance, light weight and low cost. Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have provided the punch holder of MIDAS from stainless steel, the thumb screw of MIDAS from stainless steel and the guide bush of MIDAS from aluminum because such metals are considered old and known in the art and the determination of the most appropriate metal for a particularly component/application would only involve routine skill in the art and thus fail to patentably distinguish over the prior art.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over MIDAS (US 2,610,598) in view of SHORT (US 3,356,047).
Regarding claim 5, MIDAS discloses the punch needle assembly as discussed above having a punch needle for a tufting operation. However, MIDAS fails to disclose the diameter of the punch needle. SHORT teaches the use of a punch needle (tufting needle) having an outside diameter of .145 inches (3.683 mm) in order to perform a tufting operation. Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have provided the punch needle of MIDAS with an outside diameter of 0.145 inch (3.683 mm), in light of the teachings of SHORT, in order to efficiently perform a tufting operation.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over MIDAS (US 2,610,598) in view of SHORT (US 3,217,676).
Regarding claim 6, MIDAS discloses the punch needle assembly as discussed above having a punch needle (tufting needle). However, MIDAS fails to disclose the punch needle being made of stainless steel tubing. Note that the punch needle (10) of MIDAS is made from a sheet material blank 23. SHORT teaches a punch needle (tufting needle) made from stainless steel tubing in order to promote efficiency in strand feeding (friction reduction) (col. 5, line 75 to col. 6, line 6). Accordingly, it would have been obvious to a person with ordinary skill in the art at the time the invention was made to have provided the punch needle of MIDAS from stainless steel tubing, in light of the teachings of SHORT, in order to promote efficiency in strand feeding.
Conclusion
THIS ACTION IS MADE FINAL. 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 NATHAN E DURHAM whose telephone number is (571)272-8642. The examiner can normally be reached 8:00 am - 4:00 pm, Monday - Friday.
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, Alissa J Tompkins can be reached at 571-272-3425. 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.
NED
/NATHAN E DURHAM/Primary Examiner, Art Unit 3732