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 .
Response to Arguments
Applicant’s arguments/remarks directed to the drawing objections and 112 rejections are traversed. Applicant has pointed to the specification to further illuminate the verification elements and the manner in which they interact. However, the disclosure does not sufficiently clarify the structure such that the 112(b) rejection is traversed. The disclosure states that “…verifications elements 204a, 204b, which may be legs of the insert 202…”, however, the disclosure also sets forth “legs 210”. It is unclear and confusing whether these are the same legs. Furthermore, the disclosure only states that the verification elements “may” be legs. So, the verification elements are represented in the drawings by abstract rectangles and the disclosure only states that these boxes “may” be “legs”, but does not clarify if these are the same legs disclosed by reference numerals 210 or different legs. The drawing objection and 112(b) rejection are upheld.
Applicant’s arguments directed toward the verification elements of Okada are traversed. The Amman-Okada combination simply uses engagement of the verification elements to ease insertion of the device into a hole. The verification elements can then be released by a tool and then they will spontaneously move into their final engagement positions. This does not contradict the utility of the device, but simply provides an alternate method of installing the device and verifying the proper installation.
Drawings
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 “verification elements” 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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-20 rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without “the unitary clip body”, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). The new limitation is a positively recited structural limitation which was not previously claimed nor set forth in the disclosure. As such, it is considered new matter and the claims 17-20 are withdrawn from consideration.
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 11-16 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.
Claim 11 recites “the insert comprising a pair of verification elements” which are supported in the specification, but are not show in the drawings. The Examiner cannot determine what these structures are. The elements 204a and 204b are not set forth in the drawings in any meaningful sense that can be understood by those of ordinary skill in the art. Additionally, the “engagement” cannot be adequately evaluated since it is not understood.
Claims 12-16 are rejected as depending from a rejected claim.
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(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amman, U.S. Patent 11,261,898 in view of Mutz, U.S. Patent 11,835,075.
Regarding Claim 1, Amman teaches:
a clip body (1) having a first end, a second end, and a pair of side walls (see below)
extending from the first end to the second end and defining an internal cavity (Fig. 6) of the clip body, each side wall including a window (3)…
…a pair of retaining portions (4) extending from the side walls at the second end of the clip body, each of the pair of retaining portions comprising:
a protruding portion (see below) extending through the window in the respective side wall and being deflectable into the internal cavity of the clip body when the fastening clip is inserted through the hole of the component;
an end portion (16) disposed within the internal cavity and configured to contact the protuberance; and
a head portion (6) disposed at the first end of the clip body and protruding outwardly from the side walls.
Amman does not teach:
A protuberance.
Mutz teaches a similar device with a protuberance (see below).
It would have been obvious to one of ordinary skill in the art to provide Amman with the protuberance as taught by Mutz because that would stiffen the sidewalls which would reduce the likelihood of deformation or bending while the device is inserted.
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Regarding Claim 2, Amman teaches:
The protruding portions comprises a first section (see below) joined to the side wall at a first bend (see below) and protruding through the window at an angle relative to the side wall, an intermediate bend (see below), and a second section (see below) extending from the intermediate bend through the window into the internal cavity and defining the end portion (see below).
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Regarding Claim 3, insofar as the claim is understood, Amman teaches:
The protruding portion has a substantially a constant cross-sectional shape in a plane from the first bend to the intermediate bend (see cross section in Fig. 4 which remains constant in the direction claimed).
Regarding Claim 4, Amman teaches:
The second section is substantially perpendicular to the side wall (see drawing selection above).
Regarding Claim 5, Amman teaches:
The end portion (see above) is connected to the second section by a second bend (7).
Regarding Claim 6, Amman teaches:
The end portion extends substantially parallel to the side wall (see drawing selection above).
Regarding Claim 7, Amman teaches:
the retaining portion comprises a slot at the first bend (see drawing selection above in the rejection of Claim 1).
Regarding Claim 8, Amman teaches:
Each of the pair of side walls is free of slots and apertures extending from the window towards the first end of the clip body (see fig. 5 and note that the side walls may teach slots or apertures, but these do not extend form the window and therefore the prior art meets the limitation as claimed).
Regarding Claim 9, in the instant combination, Amman teaches:
Wherein the end portion of each of the retaining portions extends within the internal cavity of the clip body towards the first end of the clip body and has a height.
Amman does not teach:
Wherein at least 40% of the height of the end portion extends beyond the window and overlaps the side wall of the clip body
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide Amman with the claimed dimension because the prior art appears to teach dimensions very close to those claimed and it has been held that “where 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. See MPEP 2144.05 [R-5]. Furthermore, Applicant has not provided any criticality stemming form the use of the claimed dimension.
Regarding Claim 10, in the instant combination, Mutz teaches:
The protuberance extends into the internal cavity, and maintains spacing between the end portion and the respective side wall sufficient to permit insertion of a removal tool between the end portion and the side wall to deflect the retaining portion inwardly for removal of the fastening clip from the component (the protuberance connects the end portion to the sidewalls and therefore maintains the separation the end portions experience at equilibrium).
**Examiner’s Note: Examiner notes that the above claim contains the claim language “for insertion of…from the component“, and a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim because the prior art need only be capable of meeting the claimed limitations. See MPEP 2114 [R-1].
Claim(s) 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amman-Mutz as applied to claim 1 above, and further in view of Okada, U.S. Patent 8,636,454.
Regarding Claim 11, insofar as the claim is understood, Amman teaches:
An insert (11) configured to be inserted through an opening in the head portion of the
fastening clip and into the internal cavity (see figs. 8-10), the insert comprising a pair of verification elements (12);
wherein the pair of retaining portions are configured to deflect inwardly into the internal cavity of the clip body as the clip body is pushed through the hole of the component (see 4, see Abstract).
Amman does not explicitly teach the claimed functional limitations:
Configured to move each of the verification elements into engagement with the other of the verification elements.
Okada clearly teaches:
Retaining portions are adapted to move each of the verification elements into engagement with the other of the verification elements.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide Amman with the features taught by Okada because releasing the engagement of the verification elements would provide feedback (tactile and perhaps audible) to the user that the fastener is properly installed.
Regarding Claim 12, in the instant combination, Okada teaches:
at least one of the verification elements comprises an engaging element (43) configured to engage with the other of the verification elements when the verification elements are brought into contact by deflection of the retaining portions during mounting of the fastening clip through the hole of the component.
**Examiner's Note: Examiner notes that the above claim contains the claim language “configured to engage…of the component”, which does not constitute a recitation of positively claimed structural elements, but a recitation of function which the claimed device must be capable. The prior art of Amman-Okada, is interpreted as capable of these functions. See MPEP 2111.04 [R-3], see Ex Parte Marsham, 2 USPQ2d 1647 (1987).
Regarding Claim 13, in the instant combination, Okada teaches:
wherein each of the verification elements comprises an engaging element (see 43, Figs. 2A-B), and wherein each engaging element is configured to engage with the engaging element of the other of the verification elements.
Regarding Claim 14, in the instant combination, Okada teaches:
wherein each engaging element is configured to frictionally engage with the engaging element of the other of the verification elements (see elements 43, Figs. 2A-B).
**Examiner’s Note: Examiner notes that although the “friction” of the engagement is not explicitly set forth it is inherent that friction would be an element in the interaction of the engaging elements.
Regarding Claim 15, in the instant combination, Okada teaches:
wherein each engaging element is configured to lock with the engaging element of the other of the verification elements (see elements 43, figs. 2A-B).
**Examiner's Note: Examiner notes that the above claim contains the claim language “configured to lock…the verification elements”, which does not constitute a recitation of positively claimed structural elements, but a recitation of function which the claimed device must be capable. The prior art of Amman-Okada, is interpreted as capable of these functions. See MPEP 2111.04 [R-3], see Ex Parte Marsham, 2 USPQ2d 1647 (1987).
Regarding Claim 16, in the instant combination, Amman teaches:
wherein the pair of verification elements are retained within the internal cavity of the clip body by the side walls (see Fig. 1, elements 12).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J SULLIVAN whose telephone number is (571)270-5218. The examiner can normally be reached IFP, Typically M-Th, 8:00-6:00, regular Fr availability.
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, Jason San can be reached at 571-272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW J SULLIVAN/Examiner, Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677
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