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 § 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 1-18 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.
The term “firmly” in claim 1 is a relative term which renders the claim indefinite. The term “firmly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What force defines firmly? Is it 1 N? Is it 10N? Is it 100N? Clarification is required. All subsequent dependent claims are also rejected with this 112 2nd rejection.
The term “user’s finger size” in claim 1 is a relative term which renders the claim indefinite. The term “user’s finger size” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. How is one to know how large the end user’s finger will be? What defines the size of the user’s finger? Will 1cm be an acceptable size? Will 5cm be an acceptable size? Will 10cm be an acceptable size? Clarification is required. All subsequent dependent claims are also rejected with this 112. 2nd rejection.
Claim 1 requires “a toollessly changeable retainer” with “one or more latches (that) are compatible with a user’s finger size” … and “one or more latches (that) are configured to be released by the user’s finger.” This set of requirements is contradictory because although the claim addresses “a toollessly changeable retainer” it simultaneously requires “one or more latches (that) are configured to be released by (a) user’s finger” which redefines a user’s finger as the tool by which the latches are released. If the human finger is not present, this device cannot work. If the human finger is necessary for the function of the “toollessly” changeable retainer, then it brings up the problem of having an invention the requires a human being or encompasses a human being. This is addressed below. Therefore, the claim is either contradictory with itself or not eligible to be patented because it encompasses a human being as addressed below.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-18 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). The independent claim 1 states that the retainer assembly can be toollessly changeable but also necessarily requires a human finger to perform a task otherwise requiring a tool. The claim requires “the one or more latches are configured to be released by the user’s finger.” That would then mean that the human being’s finger is an integral part of the functionality of the retainer assembly. That is not patent eligible subject matter because it encompasses a human being’s finger and use thereof. If the finger is not present, this device would apparently not be usable because it is, as disclosed, a “toollessly changeable retainer assembly.” Correction and clarification are required.
The claims require elements that the examiner cannot properly address in a search, namely the use of a human finger. That requirement and the 112 2nd rejections make it overly difficult to adequately search for the invention as presently claimed. Although the written opinion of the equivalent Korean application states that the claims are allowable over the prior art of record, Examiner can neither concur with or disagree with that opinion based on the rejections listed above.
The independent claims are generally narrative and indefinite. They appear to be a literal translation into English from a foreign document, KR 20240179665, and are replete with idiomatic and patent subject eligibility errors.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER P MCANDREW whose telephone number is (469)295-9025. The examiner can normally be reached Monday-Thursday 6-4:30.
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/CHRISTOPHER P MCANDREW/Primary Examiner, Art Unit 2858
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