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 § 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 7-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishijima et al. (US 2006/0040752).
With regard to claim 7, Ishijima discloses a boot (8) that extends along an axis direction (i.e. the direction of the shaft axis as seen in figs. 1, etc.), is formed into a tubular shape (as seen in Figs. 1, etc.) that is extendable and contractible in the axis direction (as seen in Figs. 1, etc. due to bellows part 15 made of a flexible material (see para. [0026], etc.)), wherein the boot is configured to be mounted to a mounting portion of a mounting target object by injecting fluid inside the boot by a fluid injecting unit (as seen in Figs. 1, etc. the boot is considered configured for such as it has a shape that would allow for it to be mounted to a mounting portion of a mounting target object (i.e. as it has an opening at either end such can be mounted to an object), and as it could be mounted with the aid of injecting fluid inside the boot (i.e. from the other opening) via a fluid injecting unit. E.g. as once placed abutting a mounting target object the fluid could be introduced to the other end to help temporarily widen the mounted portion and aid installation. Examiner notes Applicant has not claimed or disclosed any other specific structure that is required for a boot to have such a capability), wherein the boot comprises: an annular mounted portion (e.g. at 13) that is provided on one end side in the axis direction (as seen in Figs. 1, etc.) and is to be mounted to the mounting portion (i.e. it is capable of such an intended use/functional limitation as it can be mounted to a variety of portions (e.g. see Fig. 1, etc.)), an abutting portion (e.g. at 14) that is provided on an other end side in the axis direction (as seen in Figs. 1, etc.) and onto which a tip of the fluid injecting unit can abut toward the one end side in the axis direction along the axis direction (i.e. it is capable of this functional/intended use limitation by virtue of it’s structure that can have various elements abut it (e.g. see Fig. 1, etc.)), and an extendable/contractible portion (bellows 15) that extends along the axis direction between the mounted portion and the abutting portion (as seen in Figs. 1, etc.), and wherein the abutting portion extends along a radial direction on the other end side of the boot in the axis direction of the boot (as seen in Figs. 1, etc. as it has radial thickness there), is formed into an annular shape along a direction around the axis of the boot (as seen in Figs. 1, etc.), and is provided, on an inner side in the radial direction of the abutting portion, with an opening (i.e. the opening receiving 4) that allows fluid communication between an inside and an outside of the boot (as seen in Figs. 1, etc. the opening is capable of such as it is an opening and such depends on how the boot is installed/used).
With regard to claim 8, Ishijima discloses that the abutting portion extends to an inner side and an outer side in the radial direction of the boot (i.e. as seen in Figs. 1 as the abutting portion has radial thickness it extends both radially inward and radially outward).
With regard to claim 9, Ishijima discloses that the mounting target object has an extension portion that extends along the axis direction in at least a part of the inside of the boot when the boot is mounted (Examiner notes that as the mounting target object has only been recited as a functional/intended use limitation this is a further narrowing of the prior claimed intended use/functional language and Ishijima still anticipates such as nothing in this limitation changes the necessary structure of the claimed boot (e.g. see Fig. 1 showing the boot can be used with part of a mounting target object (9) having an extension portion inside the boot or a part of 4 that extends inside the boot)), wherein the boot comprises a guiding portion (e.g. the wall portions of 14 that define the opening are capable of guiding something (e.g. 4) and thus are a guiding portion) that is configured to guide the extension portion (i.e. by virtue of the disclosed structure it is capable of such depending on what it is used with) so as to be capable of extending and contracting along the axis direction with respect to the extension portion (i.e. as it is made of the same flexible material (see para. [0026]), and wherein the guiding portion extends radially inward from an inner circumference of the boot (as seen in Figs. 1, etc. the guiding portion (radially within 18) extends radially inward from inner circumferences of 14, 14 as a whole extends radially inward from inner circumferences of 15, etc.), is formed into an annular shape along the direction around the axis of the boot (as seen in Figs. 1, etc.), and is provided, on an inner side in the radial direction of the guiding portion, with the opening through which the extension portion can be inserted (as seen in Fig. 1, etc.).
With regard to claim 10, Ishijima discloses that at least a part of the abutting portion is provided on a surface of the guiding portion (i.e. the axial faxing surface thereof) on the other end side in the axis direction (as seen in Figs. 1, etc.).
With regard to claim 11, Ishijima discloses that the abutting portion is formed into a plate shape (i.e. due to the flat annular axial facing surface thereof as seen in Figs. 1, etc.) deformable in the axis direction (i.e. as it is made of the same flexible material (see para. [0026])).
With regard to claim 12, Ishijima discloses that the boot comprises, on an outer periphery of the abutting portion in the radial direction, an axis misalignment suppressing portion (i.e. the axial outer portion on the outer periphery of the abutting portion can, depending on what devices the boot is used with, suppress axis misalignment (e.g. if a device inserted thereinto also has an outer surface for going outside of the abutting portion)) configured to suppress axis misalignment of the tip of the fluid injecting unit relative to the opening when the tip of the fluid injecting unit abuts onto the abutting portion (i.e. Ishijima is capable of this intended use/functional limitation as the structure of the outer misalignment suppressing portion is capable if such depending on what it is used with).
Response to Arguments
Applicant’s arguments with respect to claims 7-12 have been considered but are moot in view of the new grounds of rejection.
The argument that could still pertain to the above grounds of rejection is that the prior art fails to disclose a boot that is configured to be mounted to a target object by injecting fluid into the boot. This argument is not persuasive as the claimed limitation has been fully rejected in the new grounds of rejection above. Additionally Examiner notes that as this is an intended use/functional limitation as long as the boot is in some way capable of such by virtue of it’s structure it will be anticipated by the prior art. In the instant case once placed abutting a mounting target object fluid could be introduced to the other end to help temporarily widen the mounted portion and aid installation. Examiner further notes that Applicant has not claimed or disclosed any other specific structure that would be required for a boot to have such a capability.
In the interest of advancing prosecution Examiner recommends claiming additional structural details of the boot, especially any related to the argued functional capabilities thereof. Examiner is unclear which, if any, of the illustrated structure would need to be included to result in an allowable claim as the art is replete with many similar looking boots. Alternatively Applicant could file a DIV/CON and claim the method of installing such a boot using a fluid injecting unit as then the functional/intended use limitations currently only given a small amount of weight would then be required to be specifically disclosed/made obvious by the prior art, which it would appear none of the cited prior art teaches.
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 NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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/NICHOLAS L FOSTER/Primary Examiner, Art Unit 3675