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 .
Drawings
The drawings are objected to because in Figure 2 there are two occurrences of reference number “151” pointing out two separate parts. It is believed that the lower one is meant to be “155” instead of “151”. 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 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 limitation(s) is/are: “first locking mechanism” in claims 1 and 10.
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 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 1-20 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 "said second rigid wand segments" in line 6. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “said second wand segments”, but there is no basis for “rigid wand segments”.
Claim 9 recites the limitation "the locking cavity" in line 5. There is insufficient antecedent basis for this limitation in the claim. Is this the same structure as the “plunger cavity” recited in claim 1?
Claim 10 recites the limitation "said second rigid wand segments" in line 6. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “said second wand segments”, but there is no basis for “rigid wand segments”.
Claim 16 recites the limitation "said second rigid wand segments" in line 4. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “said second wand segments”, but there is no basis for “rigid wand segments”.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Innes et al., WO 2018/080873 A1 in view of Rosenzweig et al., US 8,813,297.
Regarding claim 1, Innes et al. disclose a wand comprising: a first and a second wand segment defining a first and a second portion of an air passage (640 and 650 are first and second wand segments, Figure 6A; paragraph [0051]; also see embodiment of Figures 14-18 also with segments 640 and 650); a bendable wand joint (670 in Figures 6A-6D; alternatively 655 in Figures 14-18) comprising a first and a second hinge member (641, 651) and a hinge (655) configured to pivotally connect said first and said second wand segments about a pivot axis between an extended configuration and a storage configuration (Figures 6A-6D, axis of 655, extended configuration in Figure 6A and storage configuration in Figure 6D or Figure 16); a flexible tube between said first and said second rigid wand segments defining a flexible air portion of said air passage and configured to flex when said first and said second hinge members pivot about said hinge (620, paragraph [0051], Figures 6A-6D); a first locking mechanism configured to lock the first and second wand segments in said extended configuration (675, paragraphs [0052] and [0054]); and a second locking mechanism configured to lock the first and second wand segments in said storage configuration (680, paragraphs [0053]-[0054], Figure 6D; in Figures 14-18 also includes arms 1408, 1410). Regarding claim 2, there is a single actuator configured to simultaneously actuate both the first locking mechanism and the second locking mechanism (679; alternatively 1406, see paragraph [0056] and Figures 16-17). Regarding claim 3, wherein said single actuator includes a release button (679; alternatively 1406, see paragraph [0056] and Figures 16-17). Regarding claim 4, said release button is disposed on an opposite side of said wand than said hinge (Figures 6A-6B or Figures 14-18). Regarding claim 5, the first and the second wand segment are configured to be folded about 180° in a forward direction when transitioning from the extended configuration to the storage configuration (Figures 6A-6D and 14-18). Regarding claim 6, the single actuator includes a locking collar pivotally coupled to the second hinge member (1402, paragraph [0055] points to the locking collar being pivotally coupled to second hinge member 651). Regarding claim 7, the locking collar includes at least one release button (1406, paragraph [0055], release button is the same as the actuator). Regarding claim 8, the locking collar includes a biasing device configured to urge the locking collar to a default locking position (see discussion in paragraph [0055], “optionally, the locking collar 1402 may include a biasing device…”).
Innes et al. fail to disclose that said second locking mechanism comprises a plunger configured to be selectively received within a plunger cavity, wherein said plunger and said plunger cavity rotate relative to each other about the pivot axis.
Further regarding claim 1, Rosenzweig et al. teach a wand comprising first and second wand segments (14, 16; see Figures); a bendable wand joint (at 22) comprising a first and a second hinge member (one at 24 and the other at 26, see Figures 3-4 and 6) and a hinge (42) to pivotally connect the first and second wand segments about a pivot axis (axis of 42) between an extended configuration and a storage configuration (see configurations in Figure 1); and a locking mechanism (at 22, includes 38 and 40; column 3 lines 22-49) configured to lock the first and second wand segments in a storage configuration (Figures 1-2 and 4), the locking mechanism comprises a plunger (40) configured to be selectively received in a plunger cavity (not labeled, space within 24 where 40 is positioned, see Figures 3-4), wherein the plunger and plunger cavity rotate relative to each other about its pivot axis (axis extends through 42, Figures 3-4). The locking mechanism serves to position the wands in angular orientations (Abstract).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hinge of Innes et al. for one including a second locking mechanism configured to lock the segments and comprising a plunger received in a cavity that rotates about its pivot axis, as taught by Rosenweig et al., so that the hinge and locking member allow the wand segments to be locked at various angular orientations during use.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,053,141 (herein ‘141). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the present application are anticipated by 1-20 of ‘141. Claims 1-20 are generic to a species or sub-genus claimed in claims 1-20 in ‘141. See MPEP 804(II)(B)(2). Specifically:
All of the limitations of claim 1 of the present application are recited within claim 1 of ‘141, except for the recitation of a pivot axis and that the plunger and plunger cavity rotate relative to each other about the pivot axis. Claim 1 of ‘141 does recite that the hinge is “configured to pivotally connect the first and second wand elements together”, and inherently there would be an pivot axis in that pivotal connection. Claim 1 of ‘141 describes the first and second wand segments pivot about the hinge and provides a more specific limitation on the plunger and plunger cavity, the “plunger is configured to be at least partially received in said plunger cavity when said wand is disposed in said storage configuration” and “when said wand is disposed in said storage configuration, depressing the single actuator causes…said sliding rod to move…and urge said plunger out of said plunger cavity.”
Claim 2 of the present application is nearly recited verbatim within claim 1 of ‘141, except does not use the term simultaneously to describe that the single actuator is configured to actuate both of the first locking mechanism and the second locking mechanism. ‘141 provides additional limitations about the first and second locking mechanisms (see column 7 lines 11-25) and does describe that when depressed, the single actuator causes portions of the first and second locking mechanisms to be actuated (column 7 lines 26-37).
Claims 3-9 of the present application correspond to and are nearly verbatim to claims 3-9 of ‘141.
Each of the limitations recited in claim 10 are anticipated within claim 10 of ‘141. Claims 11-12 drawn to the first configuration are within claim 10 of ‘141 and the remaining portion of claims 11-12 are verbatim to claims 11-12 of ‘141.
Claims 13-15 of the present application are verbatim to claims 13-15 of ‘141.
All of the limitations of claim 16 of the present application are recited within claim 16 of ‘141, except for the recitation of a pivot axis and that the plunger and plunger cavity rotate relative to each other about the pivot axis. Claim 16 of ‘141 does recite that the hinge is “configured to pivotally connect the first and second wand elements together”, and inherently there would be an pivot axis in that pivotal connection. Claim 16 of ‘141 describes the first and second wand segments pivot about the hinge and provides a more specific limitation relating to the plunger and plunger cavity, the “plunger is configured to be at least partially received in said plunger cavity when said wand is disposed in said second configuration” and “when said wand is disposed in said second configuration, depressing the single actuator causes…said sliding rod to move…and urge said plunger out of said plunger cavity.”
Claims 17-20 of the present application are verbatim to claims 17-20 of ‘141.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura C Guidotti whose telephone number is (571)272-1272. The examiner can normally be reached typically M-F, 6am-9am, 10am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA C GUIDOTTI/Primary Examiner, Art Unit 3723
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