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 .
Priority
Acknowledgement is made of applicant’s claim for priority under 35 U.S.C. 119 (e) with reference to Provisional Application Number: 63/512058 filed on 7/5/23.
Drawings
Figures 1-12 is/are objected to under 37 CFR 1.84 (m) because the figures contain shading, which fails to aid in understanding the invention and/or reduces legibility. Shading may be used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object; flat parts may also be lightly shaded, but such shading is preferred in the case of parts shown in perspective, not for cross sections. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
Sheets 1-3 are objected to for having extraneous matter in the form of crosshairs that are improper.
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 “enlarged longitudinal side is a tubular shape” of claims 2 and 7 (a tube by definition is hollow and nowhere does applicant illustrate a hollow cylinder or a tube) must be shown or the feature(s) canceled from the claim(s). 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 § 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.
Claim(s) 1-13 is/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 pre-AIA the applicant regards as the invention.
Claims 1 and 6: recites “the body curvature defining a longitudinal length curved about an axis”; however, this language is confusing and unclear because the preceding lines already require “a convex upper surface and a concave lower surface” so is this “curve” the same as the convexity or concavity or different? Based on a review of applicant’s disclosure, this “curve” appears to be the concavity and not some other additional curve. For examination purposes, the claim will be treated as reciting “wherein the concavity is concave about an axis”. Line 5-6 recites “an enlarged longitudinal side located along a side of the body that is configured to extend outward beyond a surface of the body”, but this language is confusing because by definition “an enlarged longitudinal side” is “a side of the body” so why is it repeated. The language “configured to extend outward beyond a surface of the body” is also confusing because if this is the side of the body and it forms the side of the body, then how does it also “extend outward beyond a surface of the body” when it forms part of the body? It cannot extend beyond itself because that does not make sense. For examination purposes, the claim will be treated as reciting “the body includes an enlarged longitudinal side”. Line 7 recites “a surface treatment”; however, this language is unclear and undefined. The term “surface treatment” could mean almost anything and the claims and disclosure do not clearly redefine the term to limit what it should mean. It appears applicant is trying to claim an abrasive surface, so for examination purposes, the claim will be treated as reciting “an abrasive surface”. Clarification or correction is requested.
Claims 2 and 7: each of these claims recites “a tubular shape”; however, no hollow tubes are discussed or disclosed. It appears applicant means cylindrical. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. The term is indefinite because the specification does not clearly redefine the term. For examination purposes, the claim will be treated as reciting “a cylindrical shape”. Clarification or correction is requested.
Claims 4 and 9: each of these claims recites “wherein the enlarged longitudinal side protrudes proud of the body at a first end of the body so as to create a bump extending beyond the side of the body”; however this language is confusing and unclear. At the outside, “protrudes proud” is not proper English and it is impossible to determine what direction, if any, this is supposed to mean. Furthermore, the language “so as to create a bump extending beyond the side of the body” is also indefinite because the enlarged longitudinal side forms a side of the body and does not extend beyond itself and the “enlarged” part is this “bump”. Applicant is required to use a single term consistently throughout the claims to refer to a single structure feature in order to avoid confusion. Additionally, the word “bump” is improper in this instance because by definition a bum is “a protuberance on a level surface” and the surfaces claimed by applicant are curved, not level making this language further unclear. For examination purposes, the claim will be treated as reciting “wherein the enlarged longitudinal side is rounded” because this is supported by the figures. Clarification or correction is requested.
Claims 5 and 11: each of these claims recites “a surface treatment”; however, this language is unclear and undefined. The term “surface treatment” could mean almost anything and the claims and disclosure do not clearly redefine the term to limit what it should mean. It appears applicant is trying to claim an abrasive surface, so for examination purposes, the claim will be treated as reciting “an abrasive surface”. Clarification or correction is requested.
Claim 13: recites “wherein the first…longitudinal side include a surface treatment”; however, this is already required by claim 6, so why is it repeated here? Is this trying to claim an additional “treatment” or “abrasive surface”? Applicant should not repeat limitations in dependent claims that are already set forth in the independent claims because this creates clarity issues and confusion. For examination purposes, the claim will be treated as omitting this language regarding the first longitudinal side. Clarification or correction is requested.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11: this claim repeats limitations already recited in the last lines of the second clause of claim 6, so it is not further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claim(s) 1-13, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Troya (US 2233438) in view of Silverman (US 2450207).
Claim 1: Troya discloses a nail file (see Figs 1-2) comprising: a body with a first section having a defined curvature (15) defining a convex upper surface and a concave lower surface (see Figs 1 & 4) with the concavity curving around an axis. Two enlarged longitudinal sides are located on each side of the body and form sides of the file (see annotations). The concave lower surface includes an abrasive surface (14) and the enlarged longitudinal sides form internal corners with the lower surface of the body (see annotations). Troya discloses the invention essentially as claimed except for an abrasive surface on the convex upper surface, as well, which would result in the enlarge longitudinal sides forming internal corners with the upper surface of the body.
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Silverman, however, teaches a nail file with a convex upper surface (see Fig 9 & 21) and a concave lower surface (see Fig 9 & 21) and explicitly states that even though only the concave surface is illustrated as carrying an abrasive surface (see Figs 9 & 21), both surfaces can carry an abrasive surface (Col 1, 20-30). In other words, Silverman teaches it is an obvious matter of design choice to provide the entire nail fail extending from the handle with all around abrasive surfaces or just one surface with an abrasive surface. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the nail file of Troya to have an abrasive surface on the convex upper surface in view of Silverman since Silverman teaches it is an obvious matter of design choice to provide additional abrasive surfaces and since it is common sense that more abrasive surfaces give a user more options when filing their nails than a single abrasive surface.
Claims 2-4: Troya already discloses the enlarged longitudinal side to be curved (see Fig 4 & annotations) and raised above the upper surface of the body (see annotations).
Claim 5: Modified Troya discloses the invention essentially as claimed except for the longitudinal sides also including abrasive surfaces. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the file of modified Troya to include additional abrasive surfaces on the sides since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. See MPEP 2144.04(VI)(B).
Claims 6 and 10-13, : Troya discloses a nail file (see Figs 1-2) comprising: a body with a first section having a defined curvature (15) defining a convex upper surface and a concave lower surface (see Figs 1 & 4) with the concavity curving around an axis. Two enlarged longitudinal sides are located on opposite sides of the body and form sides of the file (see annotations). The concave lower surface includes an abrasive surface (14) and the enlarged longitudinal sides form internal corners with the lower surface of the body (see annotations). Troya discloses the invention essentially as claimed except for an abrasive surface on the convex upper surface and the side surfaces, as well, which would also result in the enlarged longitudinal sides forming internal corners with the upper surface of the body.
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Silverman, however, teaches a nail file with a convex upper surface (see Fig 9 & 21) and a concave lower surface (see Fig 9 & 21) and explicitly states that even though only the concave surface is illustrated as carrying an abrasive surface (see Figs 9 & 21), both surfaces can carry an abrasive surface (Col 1, 20-30). In other words, Silverman teaches it is an obvious matter of design choice to provide the entire nail fail extending from the handle with all around abrasive surfaces or just one surface with an abrasive surface. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the nail file of Troya to have an abrasive surface on the convex upper surface in view of Silverman since Silverman teaches it is an obvious matter of design choice to provide additional abrasive surfaces and since it is common sense that more abrasive surfaces give a user more options when filing their nails than a single abrasive surface.
Modified Troya discloses the invention essentially as claimed except for the longitudinal sides also including abrasive surfaces. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the file of modified Troya to include additional abrasive surfaces on the sides since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. See MPEP 2144.04(VI)(B).
Claims 7-9: Troya already discloses the enlarged longitudinal side to be curved (see Fig 4 & annotations) and raised above the upper surface of the body (see annotations).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Gill whose telephone number is (571)270-1797. The examiner can normally be reached on Monday-Friday 10:00am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, can be reached on 571-270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772