DETAILED ACTION
This is a first action on the merits addressing the disclosure provided.
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 .
Disposition of the Claims
On 30 August 2024, Applicant submitted Original Claims 1-25 with a preliminary amendment. On 18 November 2024, Applicant provided a subsequent amendment presenting claims 1-25 and requested entry of the amendments. As a result, the examiner will review claims 1-25 as filed 18 November 2024.
Information Disclosure Statement
The Information Disclosure Statement dated 29 April 2025, is entered.
Substitute Specification
Applicant’s substitute specification dated 18 November 2024 complies with the requirements under 37 CFR 1.125 and is entered.
Claim Objections
Claims 5-25 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from a multiple dependent claims, and must be provided in the alternate form only. See MPEP § 608.01(n). Accordingly, the claims 5-25 have not been further treated on the merits.
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 1-4 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.
Below is a reproduction of applicant’s claims with the examiner’s comments in bold italics.
Claim 1: Anchor sleeve (the preamble lacks antecedent basis) (10) for an injection system for securing an anchor element in an opening (50) in an article, especially in a borehole in masonry (the language “especially in…masonry” is indefinite as it is unclear if the associated language is intended to be part of the claim), characterized in that the anchor sleeve (10) consists at least (“consists at least” is indefinite as “consists” and “at least” are contradictory; “consists” is a limiting term that excludes any element, step, or ingredient not specified in the claim per MPEP 2111.03, and “at least” is an open term that has no ceiling in range) in sections (indefinite as to the metes and bounds of what constitutes an “in section”) of flexible permeable open-cell foam.
Claim 2: Anchor sleeve (lacks antecedent basis) (10) according to Claim 1, characterized in that the anchor sleeve (10) has a tubular element (14) made of the foam. The language of this claim is indefinite as “tubular element” is an addition element, which is not permitted by the language “consisting”.
Claim 3: Anchor sleeve (lacks antecedent basis) (10) according to Claim 2, characterized in that the tube-like element (“the tube-like element” lacks antecedent basis, and the metes and bounds of this are unclear as “tubular element” is initially claimed) (14) made of foam forms a blind hole. The language of this claim is indefinite as “blind hole” is an addition element, which is not permitted by the language “consisting”. Further, it is unclear as claimed, how a tube element forms a blind hole, as a tube by definition is open at both ends.
Claim 4: Anchor sleeve (10) according to Anchor sleeve (10) according to characterized in that a number of pores in the foam is between 15 ppi (pores per inch) and 25 ppi, especially 20 ppi (“especially” is indefinite as it is a range withing a range, so the metes and bounds of the claim are unable to be determined).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Below is a reproduction of the presented claims with the examiner’s comments in bold italics.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vivier et al. (U.S. Publication 2015/0233409 A1).
Claim 1: Vivier Anchor sleeve (10) for an injection system (“for an…” is functional language fully capable of being met by the prior art; see however, paragraph [0091]) for securing an anchor element in an opening (50) in an article (as per its purpose), especially in a borehole in masonry, characterized in that the anchor sleeve (10) consists at least in sections of flexible foam (paragraph [0010], it is a polymeric material which is a foam).
Vivier does not specifically disclose the foam is permeable open-cell, however, it teaches the membrane (6) made of a polymer material. It would have been obvious at the time of filing to a person having ordinary skill in the art to incorporate a permeable, open-cell foam
because simple substitution of one known element for another to obtain predictable results is not a patentable advance. See MPEP 2143 citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). One having ordinary skill in the art would use the material based on the overall desired use and function of the system.
Claim 2: The obvious modification of the prior art provides Anchor sleeve (10) according to Claim 1, characterized in that the anchor sleeve (10) has a tubular element (14) made of the foam (as rendered obvious in Vivier, the membrane is a foam sleeve, which would be a tube).
Claim 3: The obvious modification of the prior art provides Anchor sleeve (10) according to Claim 2, characterized in that the tube- like element (14) made of foam forms a blind hole (Fig. 7: 6B).
Claim 4: The obvious modification of the prior art provides Anchor sleeve (10) according to any of the preceding claims, except characterized in that a number of pores in the foam is between 15 ppi (pores per inch) and 25 ppi, especially 20 ppi. It would have been obvious at the time of filing to a person having ordinary skill in the art to have this limitation because optimization of a limitation will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such a limitation is critical. See M.P.E.P. §2144.05 "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454 (CCPA 1955) (Claimed process which was performed at a temperature between 40C and 80C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100C and an acid concentration 10%.) One having ordinary skill in the art would have the desired amount of pores based on the overall desired function of the system. The examiner takes the position this would be the result of routine experimentation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For similar systems, see the following:
Carbonelli (U.S. Publication 2011/0135419 A1)
Irwin (U.S. Patent 6,392,795 B1)
Dankert (U.S. Patent 4,134,546)
Shuermann et al. (U.S. Patent 3,108,443)
Perrier et al. (U.S. Publication 2016/0363151 A1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM V GILBERT/Primary Examiner, Art Unit 3993
Prosecution Insights