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 .
Status of Claims
This office action is in response to Applicant's Amendment/Request for Reconsideration filed on 4 November 2025.
Claims 1, 5 – 8, 12 – 15, and 17 – 19 are pending. Claims 2 – 4, 9 – 11, 16, and 20 are cancelled by Applicant.
The examiner is issuing a new ground of rejection for independent claim 19 thus this office action is non-final.
Claim Objections
Claim 1 is objected because of the following informalities:
Regarding claim 1, line 15, the limitation, “the arm base”, should read, “the base of the arm”.
Regarding claim 1, line 16, the limitation, “the arm tip”, should read, “the tip of the arm”.
Appropriate correction is required.
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.
Claims 5 and 19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 5, the limitation, “ergonomically arched”, is indefinite because the plain meaning of the term, “ergonomic”, is “designed for efficiency or comfort” wherein this efficiency or comfort are subjective terms and the specification does not supply some objective standard for measuring the scope of this term. For the purpose of compact prosecution, the examiner interprets the limitation to mean, “arched”.
Regarding claim 20, the limitation, “a hard plastic ring”, is indefinite because the term, “hard”, is a relative term wherein this term is not defined by the claim and the specification does not provide a standard for ascertaining the requisite degree, and thus one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of compact prosecution, the examiner interprets the limitation to mean, “a plastic ring”.
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 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.
[AltContent: textbox (Q)]Claims 1, 5 – 8, 12 – 15, and 17 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US 5,069,090 A).
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Please note, applicant filed a “clean claim set” and a “marked claim set” where in the clean claim set, claim 13 is cancelled, and in the marked claim set, claim 13 is currently amended. Since it is ambiguous whether claim 13 is cancelled or not, for the purpose of compact prosecution, claim 13 is being examined.
Regarding claim 1, Clark discloses a tool for removing packaging, comprising:
an elongated body (18, fig. 1) having a first end (end A, annotated fig. 1) and a second end (end B, annotated fig. 1);
the first end of the elongated body having an arm (arm C, D), wherein a base (base C, annotated fig. 1) of the arm is wider than a tip (tip D, annotated fig. 1) of the arm and the arm tapers from the base to the tip (Figure 2 show the base C of arm C, D being wider than the tip D of arm C, D); and
the elongated body having a first side (side E, annotated fig. 1) and a second side (side F, annotated fig. 1), wherein a protrusion (14, fig. 1) is disposed on the first side of the elongated body opposite to the base of the arm disposed on the second side of the elongated body (As shown in annotated fig. 1),
wherein a recess (the recess between a rear projection 14 and the base C of the arm C, D, annotated fig. 1) is created between the protrusion and the base of the arm;
wherein a center of the elongated body is disposed in a center plane (plane G, annotated fig. 1), the tip of the arm is disposed in a first plane (plane H, annotated fig. 1) and a top surface of the protrusion is disposed in a second plane (plane I, annotated fig. 1), and a distance (distance J, annotated fig. 1) between the center plane and the first plane is greater than a distance (distance K, annotated fig. 1) between the center plane and the second plane (As shown in annotated fig. 1);
wherein an outer surface (surface L, annotated fig. 1) of the second end is disposed in a third plane (plane M, annotated fig. 1) and the base of the arm has an exterior surface (surface N, annotated fig. 1) disposed in a fourth plane (plane O, annotated fig. 1), and a distance (distance P, annotated fig. 1) between the fourth plane and the center plane is greater than a distance (distance Q, annotated fig. 1) between the center plane and the third plane (As shown in annotated fig. 1); and
wherein a width between the protrusion and the base of the arm (Annotated fig. 1 shows a width between the rear projection 14 and the base C of the arm C, D) and a width of the tip of the arm (Annotated fig. 1 shows the tip D of the arm C, D having a width).
Clark does not disclose specific dimension of the tool of Clark and thus does not disclose a width between the protrusion and the base of the arm being between 46.5 mm and 66.5 mm and a width of the tip of the arm being between 46.5 mm and 66.5 mm
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the width between the protrusion and the base of the to be between 46.5 mm and 66.5 mm and a width of the tip of the arm to be between 46.5 mm and 66.5 mm because the Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
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Regarding claim 5, Clark discloses the invention as recited in claim 1.
Clark further discloses a middle portion (portion R, annotated fig. 1) of the elongated body (18, fig. 1) is arched, such that a first surface (surface S, annotated fig. 1) on the first side (side E, annotated fig. 1) and a second surface (surface T, annotated fig. 1) on the second side (side F, annotated fig. 1) of the middle portion each form opposing convex curves (As shown in figure 1).
Regarding claim 6, Clark discloses the invention as recited in claim 1.
Clark further discloses the protrusion (14, fig. 1) is bulbous (Figure 1 shows the rear projection 14 as rounded).
Regarding claim 7, Clark discloses the invention as recited in claim 1.
Clark further discloses the tip (tip D, annotated fig. 1) of the arm (arm C, D, annotated fig. 1) is pointed (Annotated fig. 1 shows the tip D having a point where three edges converge forming an intersection vertex/point).
Regarding claim 8, Clark discloses the invention as recited in claim 1.
Clark further discloses the arm (arm C, D, annotated fig. 1) is curved (Annotated fig. 1 shows the arm C,D curved as the base C curves into tip D).
Regarding claim 12, Clark discloses the invention as recited in claim 1.
Clark further discloses the recess (the recess between a rear projection 14 and the base C of the arm C, D, annotated fig. 1) between the protrusion and the base of the arm is adapted to receive the packaging (The examiner deems the limitation, “adapted to receive the packaging”, as recitation of intended use of the claimed invention. Please note, a recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patently distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, figure 2 of Clark shows the recess between the rear projection 14 and the base C of the arm C, D receiving a lid engaging flange of the lid 28).
Regarding claim 13, Clark discloses the invention as recited in claim 1.
Clark further discloses the protrusion (24, fig. 1) is adapted to militate against the packaging from moving toward the middle portion of the elongated body (The examiner deems the limitation, “adapted to militate against the packaging from moving toward the middle portion of the elongated body”, as recitation of intended use of the claimed invention. Please note, a recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patently distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the rear projection 14 physically projects from the middle portion R of the elongated body 18 and thus physically prevent or militates any package held against the rear projection 14 from moving towards the middle portion R of the elongated body 18).
Regarding claim 14, Clark discloses the invention as recited in claim 1.
Clark further discloses a hole (26, fig. 1) is formed in the second end (end B, annotated fig. 1) of the elongated body (18, fig. 1).
Regarding claim 15, Clark discloses the invention as recited in claim 14.
Clark further discloses the hole (26, fig. 1) is circular (As shown in fig. 1).
Regarding claim 17, Clark discloses the invention as recited in claim 14.
Clark does not explicitly disclose the elongated body is formed through 3D printing, however, the limitation, "the elongated body is formed through 3D printing", is a product-by-process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. V. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. V. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020). In the instant case, Lozano discloses the elongated body formed by an unspecified process wherein the claimed product appears to be the same or similar to that of the elongated body of Lozano, although produced by a possibly different process than 3D printing. "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983))
Regarding claim 18, Clark discloses the claimed invention as recited in claim 1. Clark further disclose the tool is composed of thermoplastic or metal (Col. 2, ll. 57 – 60 describes the tool may be formed of various materials including metal).
Allowable Subject Matter
Claim 19 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
Response to Arguments
Applicant’s amendments, filed 4 November 2025, with respect to the claim objection of claims 11 and 12 have been fully considered and are persuasive. The claim objection of claims 11 and 12 have has been withdrawn.
Applicant’s arguments, filed 4 November 2025, with respect to the rejection(s) of claim(s) 1 – 3 and 8 – 17 under 35 USC 102(a)(1) and 102(a)(2) over Lozano and the rejection(s) of claim(s) 1 – 2, 6, 8, 10-13, 17, and 19 under 35 USC 102(a)(1) and 102(a)(2) over Naukam have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Clark.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID G SHUTTY whose telephone number is 571-272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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/DAVID G SHUTTY/Examiner, Art Unit 3731
8 February 2026