DETAILED ACTION
This is a first Office action on the merits responsive to applicant’s original disclosure, including the preliminary amendment filed on 10/5/2024. Claims 1-6 are pending. No claims have been withdrawn, cancelled or added.
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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Poland on 4/9/2022 (PLP 440899). It is noted, however, that applicant has not filed a certified copy of the foreign application as required by 37 CFR 1.55.
Information Disclosure Statement
The references cited in the PCT international search report by the EPO have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within the set period for reply to this Office action.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “positioner” in claims 3 and 4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections and Rejections Under 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 1-6 are objected to or 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 1 and several dependent claims are reproduced below with the examiner’s comments regarding claim objections and 112 rejections in bold italics. Appropriate correction is required.
Any claim not specifically addressed in this section is rejected by virtue of dependency upon a rejected base claim.
1. A device for aligning tiles which has at a bottom a base with recesses (“which has at a bottom a bas with recesses” is objected to because the limitation appears to be missing clarifying language that defines what comprises the bottom and the base with recesses; this objection can be overcome by reciting, “A device for aligning tiles, the device comprising of the device a base with recesses” or equivalent), guided in two directions - forward and backward - and which, in the base, has an essentially vertically positioned spacer in which - at the bottom thereof (“the bottom thereof” is rejected under 112b for being indefinite as the limitation lacks antecedent basis; note that the claim previously recites the device having a bottom, but not the spacer; does applicant intend for the limitation to refer to a bottom of the device or a bottom of the spacer?) - an opening is made, into which, when assembled, a wedge (“when assembled, a wedge” is rejected under 112b for being indefinite, as it is unclear whether the wedge is part of the claimed device; in other words, it is unclear whether the claimed device comprises the wedge, or is merely intended to be used with the wedge; applicant is requested to clarify; this rejection can be overcome by amending the claim to more clearly positively recite the device as comprising the wedge), serrated across its width (“its” is rejected under 112b for being indefinite, as it is unclear what the term is referring to in the claim; does applicant intend for its to refer to the wedge or the opening? It is noted that the wedge and the opening are inanimate objects that are incapable of ownership, and applicant is requested to write out the actual claim element represented by “its” and avoid reciting such pronouns; the term “its” is repeated throughout the claims, and the same rejection applies, but is not repeated for brevity), is inserted transversely and essentially horizontally, whereby the opening is made between columns (“made between columns” is rejected under 112b for being indefinite, as it is unclear whether the device comprises the recited columns; this rejection can be overcome by amending the claim to more clearly define the device as requiring columns) and whereby the spacer is only connected to the base in two short sections, wherein the columns are derived from the base which is spring-loaded in both longitudinal and transverse directions (“the base which is spring-loaded in both longitudinal and transverse directions” is rejected under 112b for being indefinite as the metes and bounds of being spring loaded is not clearly defined in the claim; the plain meaning of “spring-loaded” generally involves compressing or tensioning a spring, however, applicant’s disclosure does not define any of the claimed elements being compressed or tensioned; does applicant intend to require the base being flexible?) (“both longitudinal and transverse directions” is rejected under 112b for being indefinite, as the claim does not previously define such directions; this rejection can be overcome by previously in the claim defining the directions) and are connected to an upper wall of the spacer by narrowings (“narrowings” is rejected under 112b for being indefinite, as the limitation lacks a point of reference; the term implies that the structure is more narrow than something else, but the claim does not define a point of reference; what is it narrower than in the claim? applicant is requested to clarify the claim language) with lateral undercuts, as a bottom of the base is flat only centrally in a middle of the base, but sides of the base, more specifically its edges (“its” is rejected under 112b; see previous rejection of “its” as above) perpendicular to the columns - are curved and raised upwards.
3. The device for aligning tiles, according to claim 2, wherein in at least one opening hole (“one opening hole” is rejected under 112b for being indefinite, as it is unclear what is required to have the opening hole; does the device comprise the one opening hole?) the device has a positioner.
4. The device for aligning tiles, according to claim 2, wherein a positioner (“a positioner” is rejected under 112b for being indefinite, as it is unclear what is required to have the positioner; does the device comprise the positioner?) has at least one additional identifying feature (“one additional identifying feature” is rejected under 112b for being indefinite, as the claims do not previously define a first identifying feature; this rejection can be overcome by previously in the claim defining an identifying feature), preferably color or shape (“preferably color or shape” is rejected under 112b for being indefinite; the phrase "preferably color or shape" renders the claim indefinite because it is unclear whether the limitations following “preferably” are part of the claimed invention. See MPEP § 2173.05(d)).
5. The device for aligning tiles, according to claim 1, wherein at least one component thereof (“at least one component thereof” is rejected under 112b for being indefinite as it is unclear what the limitation requires; does applicant intend for one component to refer to one of the previously recited claim elements? Applicant is requested to clarify) is made of polypropylene (PP) plastic.
6. The device for aligning tiles, according to claim 1, wherein at least one component thereof (“at least one component thereof” is rejected under 112b for being indefinite as it is unclear what the limitation requires; does applicant intend for one component to refer to one of the previously recited claim elements? Applicant is requested to clarify) is made of a copolymer comprising from 3% to 6% of added polyethylene, preferably 5% polyethylene (“preferably 5% polyethylene” is rejected under 112b for being indefinite; the phrase "preferably 5% polyethylene" renders the claim indefinite because it is unclear whether the limitations following “preferably” are part of the claimed invention. See MPEP § 2173.05(d)).
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.
Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sighinolfi (US 20210363764).
Claim 1, Sighinolfi provides a device 10 for aligning tiles which has at a bottom a base 20 with recesses 23, guided in two directions - forward and backward (Fig. 4) - and which, in the base, has an essentially vertically positioned spacer 30 in which - at the bottom thereof - an opening 40 is made, into which, when assembled, a wedge 50, serrated 53 across its width (Fig. 8), is inserted transversely and essentially horizontally (Fig. 9), whereby the opening is made between columns 31 and whereby the spacer is only connected to the base in two short sections (the spacer 30 is only connected to the base 20 in two sections, which are considered short sections, as shown in Figs. 1-4, as exceedingly broadly claimed), characterized in that wherein the columns are derived from the base which is spring-loaded in both longitudinal and transverse directions (see 112b rejection above pertaining to spring-loaded; under the broadest reasonable interpretation in light of applicant’s specification, the base is elastic and thus spring-loaded in both longitudinal and transverse directions; “the polymeric material comprises a mixture of a first polypropylene, so-called structural, (60%) and of a second polypropylene, so-called elasticizing, (40%), wherein the second polypropylene has a greater elasticity than the elasticity of the first polypropylene”; [0088]) and are connected to an upper wall of the spacer by narrowings with lateral undercuts 310, as a bottom of the base is flat only centrally in a middle of the base (at 220; Fig. 1), but sides of the base, more specifically its edges perpendicular to the columns - are curved and raised upwards (it is understood that sides of the base 20, including edges that are perpendicular to columns 31 are curved and raised upwards; Figs. 1-6).
Claim 5, Sighinolfi further provides wherein at least one component thereof is made of polypropylene (PP) plastic ([0087]-[0088]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sighinolfi (US 20210363764) in view of FR 3021336 (‘FR ‘336’).
Claims 2-4, Sighinolfi further teaches wherein the wedge of the device has at least one position hole (unlabeled in Fig. 8). Sighinolfi does not teach [claim 2] the one position hole being two positioning holes, [claim 3] wherein in at least one opening hole the device has a positioner, and [claim 4] wherein [the] positioner has at least one additional identifying feature, preferably color or shape. However, FR ‘336 teaches a wedge comprising at least two positioning holes (4, 7; Fig. 1), wherein in at least one opening hole the device has a positioner (holes 4 are provided to fix the shim 1 on a support, for example to nail or screw the shim 1 in the desired position; FR ‘336 specification; Fig. 1), wherein [the] positioner has at least one additional identifying feature, preferably color or shape (it is understood that the shape of the positioner, for example the screw or nail serves as an identifying feature, as exceedingly broadly claimed; FR ‘336 specification; Figs. 1 and 4). It would have been obvious to one of ordinary skill in the art, before the effective filing date to form the positioning hole being two positioning holes, wherein in at least one opening hole the device has a positioner, wherein a positioner has at least one additional identifying feature, preferably color or shape, with the reasonable expectation of success of using a known quantity of positioning holes and arrangement of positioners to further secure the wedge, since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. In re Regis Paper Co. v. Bemis. See also In re Harza, 274 F2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sighinolfi (US 20210363764) in view of Fiore (US 20040250435).
Claim 6, Sighinolfi teaches all the limitations of claim 1 as above. Although Sighinolfi teaches the device having at least one component made of polymer, which may include polyethylene [0087], Sighinolfi does not specify that the polymer comprises a copolymer comprising from 3% to 6% of added polyethylene, preferably 5% polyethylene. However, Fiore teaches a device for aligning tiles, wherein at least one component thereof is a copolymer [0031]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the at least one component to comprise a copolymer comprising polyethylene, with the reasonable expectation of success of utilizing a known, readily available material to form the at least one component, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.). Regarding the amount of 3% to 6% of added polyethylene, preferably 5% polyethylene, the examiner takes the position that it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to utilize a known copolymer such as one that comprises 3% to 6% of added polyethylene, preferably 5% polyethylene to form the copolymer, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635
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