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 the Claims
Claims 2-20 are pending in the application.
In the Preliminary Amendment filed 17 March 2025, claim 1 was cancelled and new claims 2-20 were added. These amendments have been entered.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because of the following informalities:
The abstract is objected to for including purported merits and speculative applications of the invention
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Drawings
The drawings are objected to because of the following informalities:
Figs. 1-2 and 4 are objected to for containing extraneous written matter (all of the words in the figures that are not reference characters or figure labels)
Figs. 1 and 4 are objected to for showing multiple views in a single figure
In Fig. 1, ref. no. “103” is objected to because its lead lines extend across multiple views from the same ref. no.
In Fig. 4, each instance of ref. no. “121” is objected to because its lead lines extend across multiple views from the same ref. no.
Figs. 1-5 are objected to for containing excessive shading of the slender piece 102 and its securing elements 103, such that their reproduction is unclear (see US Patent Application Publication 2025/0135729)
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 securing elements having a relative position relative to the slender piece that is “adjustable”, as required by claims 6 and 7, 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 Objections
Claims 4, 6-7, and 12 are objected to because of the following informalities: Appropriate correction is required.
Re Claims 4, 6-7, and 12: In each of these claims the recitation “the securing element” or “the securing elements” should be replaced with --the one or more securing elements--.
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 2-20 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.
Re Claim 2: It is not clear if the “pre-manufactured item” introduced in the preamble of claim 2 is meant to be positively claimed as part of the claimed “apparatus” or if it is meant only as a functional limitation related to an intended use of the “apparatus”. The “pre-manufactured item” is first introduced in the preamble of the claim as a functional limitation (“to be inserted into a cavity within a pre-manufactured item”), which appears to indicate that it is not meant to be positively claimed, but rather is only meant as an intended use limitation. However, further limitations in the claims related to the “pre-manufactured item” (for example, lines 5-7 of the claim, which positively states that the “slender piece is inserted into a cavity within the pre-manufactured item”) appear to indicate that perhaps the “pre-manufactured item” is meant to be positively claimed as part of the “apparatus”. Accordingly, the metes and bounds of the claim cannot be determined because the scope of the claim is unclear.
For examination purposes, for this Office Action only, the Examiner will interpret the claims as though the “pre-manufactured item” is NOT positively claimed as part of the “apparatus”, but rather is recited only as a functional limitation related to an intended use of the “apparatus”. Clarification and correction are required.
If this interpretation is correct, it would appear that lines 3-6 of claim 2 should be amended as follows:
--a. a slender piece having a slenderness ratio; wherein (i) the slenderness ratio is defined as the ratio of the length of the slender piece to the thickness of the slender piece and (ii) the slender piece is configured to be inserted into a cavity within the pre-manufactured item; and--
In addition, the terms “good bending flexibility and twisting flexibility” (see lines 7-8, “highly reversible and recoverable” (see line 10 and line 13) in claim 2 are relative terms which render the claim indefinite. The terms “good” and “highly” are 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.
Clarification and correction are required.
Re Claims 3-20: These claims are considered indefinite because of their dependency from indefinite claim 2.
Examiner notes that any prior art rejections made in this Office Action are made in view of the claims, as best understood by the Examiner, in view of the above indefiniteness rejections.
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.
Claims 10, 12-17, and 19 are 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. 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.
Re Claims 10, 12-16, and 19: Each of these claims is drawn to the “slender piece” of claim 2, rather than the “apparatus” as a whole of claim 2. Accordingly, these claims are improper dependent claims because they do not include all the limitation of the base claim from which they depend.
For examination purposes, for this Office Action only, the Examiner will interpret the preamble each of these claims as follows: --The apparatus of claim …--
Re Claim 17: This claim is drawn to “At least one slender piece of claim 2”, rather than the “apparatus” as a whole of claim 2. Accordingly, this claim is an improper dependent claim because it does not include all the limitation of the base claim from which it depends.
For examination purposes, for this Office Action only, the Examiner will interpret claim 17 as follows:
--17. The apparatus of claim 2, wherein at least one slender piece connects two or more pre-manufactured items.--
Clarification and correction are required.
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 2-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/820,712 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 2-8, 10, 12-13, and 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morris US Patent 7,988,721).
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Re Claim 2, as best understood by the Examiner: Morris discloses an apparatus (260/290; see Figs. 17-20) to be inserted into a cavity (the aperture at, for example, loops 278, 279/294, 293; see Figs. 19 and 20) within a pre-manufactured item (frame element 262/295; see Figs. 19 and 20) comprising
a. a slender piece (264; see Fig. 19) having a slenderness ratio; wherein (i) the slenderness ratio is defined as the ratio of the length of the slender piece to the thickness of the slender piece and (ii) the slender piece is inserted into a cavity within the pre-manufactured item; and
b. said slender piece (264) having good bending flexibility and twisting flexibility (see Figs. 17 and 18); wherein (i) the bending flexibility is defined as the slender piece's smallest bending curvature radius divided by the thickness of the slender piece and the bending is highly reversible and recoverable; (ii) the twisting flexibility is defined as the shortest length within a slender piece to allow the section of the slender piece to be twisted 360 degrees and the twisting is highly reversible and recoverable; and
c. one or more securing elements (teeth 274/292; see Figs. 19 and 20) on the slender piece that secures the slender piece within the cavity.
Re Claim 3: Morris discloses an apparatus wherein the slender piece (264; Fig. 19) is at least partially inserted (at rail member 265) into the cavity (the aperture at, for example, loops 278, 279/294, 293; see Figs. 19 and 20).
Re Claim 4: Morris discloses an apparatus wherein the securing element (teeth 274/292; see Figs. 19 and 20) secures the slender piece (166; Fig.19) to the pre-manufactured item (262/296) by a method selected from the group consisting of mechanical locking means (for example, teeth 292 mechanically engaging with corners 299; see Fig, 20), mechanical pin, rivet, friction, adhesion, fusion, welding, threaded fastening and any combination thereof.
Re Claim 5: Morris discloses an apparatus wherein the slender piece (264; Fig. 19) is removable from the cavity (the aperture at, for example, loops 278, 279/294, 293; see Figs. 19 and 20).
Re Claim 6: Morris discloses an apparatus wherein the relative positions of the securing elements (teeth 274/292; see Figs. 19 and 20) with respect to the slender piece (264) are adjustable (for example, by sliding coupling element 266 along the rail member 265) by users.
Re Claim 7: Morris discloses an apparatus wherein the relative positions of the securing elements (teeth 274/292; see Figs. 19 and 20) with respect to the slender piece (264) are adjustable (for example, by sliding coupling element 266 along the rail member 265).
Re Claim 8: Morris discloses an apparatus further comprising a jamming means (for example, corners 299, which can cause the teeth 292 to be jammed within the openings of loops 294, 295; see Fig. 20).
Re Claim 10, as best understood by the Examiner: Morris discloses an apparatus further comprising longitudinal reinforcement (for example, protrusions 267; Fig. 19).
Re Claim 12, as best understood by the Examiner: Morris discloses an apparatus wherein the securing element (teeth 274/292; see Figs. 19 and 20) comprises a buffer layer (for example, an outer layer of the material of the teeth; note that the device can be formed of a layered material; see Col. 9 lines 34-35).
Re Claim 13, as best understood by the Examiner: Morris discloses an apparatus wherein the buffer layer (for example, an outer layer of the material of the teeth) comprises particle modifiers where the particle modifiers are selected from nanoparticles (see Col. 40 lines 33-35) or microparticles.
Re Claim 15, as best understood by the Examiner: Morris discloses an apparatus wherein the buffer layer (for example, an outer layer of the material of the teeth) the particle modifiers in said buffer layer are selected from one or more of the following: carbon nanotubes, carbon nanofibers, graphene, electrically conductive nanofibers or nanoparticles, carbon blacks, carbon fibers (see Col 40 lines 32-35), and other electrically conductive microfibers and microparticles.
Re Claim 16, as best understood by the Examiner: Morris discloses an apparatus wherein the slender piece (body section 264, including rail member 265; Fig. 19) reinforces the pre-manufactured item (262).
Re Claim 17, as best understood by the Examiner: Morris discloses an apparatus wherein at least one slender piece (body section 264, including rail member 265; Fig. 19) connects two or more pre-manufactured items (see Fig. 17).
Re Claim 18: Morris discloses an apparatus further comprising two or more slender pieces (at 269’ and 269’’; Fig. 19) connected to one another through a slender piece connecting means (upper body section 264 in Fig. 19).
Re Claim 19, as best understood by the Examiner: Morris discloses an apparatus wherein the slender piece further comprising at least one of a sensor, a duct (for example, the opening at 269’’’; Fig. 19), an actuator or a remote signal communication device.
Re Claim 20: Morris discloses an apparatus further comprising a release guide means (for example, the surface of the opening of loop 294/295/297/298 opposite of the corners 299, which can be used to guide the surface of the rail member 265).
Claims 2-5, 9, 11, 16-17, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by James US Patent 5,286,135).
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Re Claim 2, as best understood by the Examiner: James discloses an apparatus (70; see Fig. 6) to be inserted into a cavity (46; see Fig. 3b) within a pre-manufactured item (32, 12) comprising
a. a slender piece (70) having a slenderness ratio; wherein (i) the slenderness ratio is defined as the ratio of the length of the slender piece to the thickness of the slender piece and (ii) the slender piece is inserted into a cavity within the pre-manufactured item; and
b. said slender piece (70) having good bending flexibility and twisting flexibility (see Fig. 6); wherein (i) the bending flexibility is defined as the slender piece's smallest bending curvature radius divided by the thickness of the slender piece and the bending is highly reversible and recoverable; (ii) the twisting flexibility is defined as the shortest length within a slender piece to allow the section of the slender piece to be twisted 360 degrees and the twisting is highly reversible and recoverable; and
c. one or more securing elements (72) on the slender piece that secures the slender piece within the cavity.
Re Claim 3: James discloses an apparatus wherein the slender piece (70; Fig. 6) is at least partially inserted into the cavity (46; Fig. 3b).
Re Claim 4: James discloses an apparatus wherein the securing element (72; Fig. 6) secures the slender piece (70) to the pre-manufactured item (32, 12) by a method selected from the group consisting of mechanical locking means (for example, by splice ring 70, including the teeth 72 mechanically engaging the cavity 46), mechanical pin, rivet, friction, adhesion, fusion, welding, threaded fastening and any combination thereof.
Re Claim 5: James discloses an apparatus wherein the slender piece (70; Fig. 6) is removable from the cavity (46).
Re Claim 9: James discloses an apparatus further comprising a deformation control device (for example, power driven device 74 can be considered a “deformation control device” since it controls the bending deformation of splice ring 70 by controlling its insertion into the cavity between members 12, 32; see Fig. 6).
Re Claim 11: James discloses an apparatus wherein the deformation control device (74; Fig. 6) is selected from the group consisting of a piezoelectric disk, a hydraulic cylinder, a power screw (76), a pinion-rack gear system, and a gear box.
Re Claim 16, as best understood by the Examiner: James discloses an apparatus wherein the slender piece (70) reinforces (by connecting together) the pre-manufactured item (12, 32).
Re Claim 17, as best understood by the Examiner: James discloses an apparatus wherein at least one slender piece (70) connects two or more pre-manufactured items (12 and 32).
Re Claim 19, as best understood by the Examiner: James discloses an apparatus wherein the slender piece further comprising at least one of a sensor, a duct, an actuator (74; Fig. 6) or a remote signal communication device.
Re Claim 20: James discloses an apparatus further comprising a release guide means (for example, the opening in housing member 32, through which splice ring 70 extends; Fig. 6).
Claim Rejections - 35 USC § 103
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 14 is rejected under 35 U.S.C. 103 as being unpatentable over Morris US Patent 7,988,721).
Re Claim 14, as best understood by the Examiner: Morris, as applied to claim 12 above, discloses an apparatus significantly as claimed except wherein the buffer layer is piezoresistive.
Examiner notes that it has been held that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) [discussed in MPEP 2144.07].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Morris, with a reasonable expectation of success, such that the buffer layer is piezoresistive, for the purpose of achieving desired material characteristics, and since such a material choice would amount to a design consideration within the skill of the art.
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 MATTHEW R MCMAHON whose telephone number is (571)270-3067. The examiner can normally be reached Mon-Fri 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571) 270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R MCMAHON/Primary Examiner, Art Unit 3678
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