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 .
Claim Objections
Claim 16 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 9. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 18-20 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.
With Respect to Claims 18-20
The scope of the means plus function limitation of claim 18 is unclear, noting that it is unclear how much of the inventive structure should be considered part of the “straight-line movement means” or what structures would constitute equivalents to such. Clearly, per the language of claim 18, at least the traction cables are part of the means, but it is unclear whether the means should also be taken to be/include the guides, the slider, the locking lever, etc.
It is noted that Applicant argues that the claim language does not read on the structure of Tong, but the Tong structure has similar traction cables and guides to fulfill a similar function of straight-line expansion movement of a case, and it is unclear how broadly or narrowly the means plus function language should be interpreted to do so. It is further unclear noting that Applicant’s arguments indicate Applicant believes that an active movement via cables like that of Tong is not equivalent to the passive movement of the inventive structure, which raises further questions as to what constitute equivalents.
The remainder of this office action is based on the invention as best understood by Examiner.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 7, and 18-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent #4,630,717 to Tong (Tong). Tong discloses:
With Respect to Claim 1
A case for vehicles (inasmuch as it is usable with a vehicle, e.g. it can be placed in a trunk or tied to a vehicle roof rack), comprising: a first casing part (19); and a second casing part (18), the first casing part being movable relative to the second casing part between an extended and a reduced position (see, e.g. FIGS. 1-4 and description)); wherein the case also comprises traction cables (43-45), which, when the first casing part is moved, cause the first casing part to move in a straight line relative to the second casing part (see, e.g. FIGS. 1-4 and description).
With Respect to Claim 2
The case for vehicles according to claim 1, wherein the first and second casing parts are connected to each other by means of a movable element (22-24).
With Respect to Claim 3
The case for vehicles according to claim 2, wherein the movable element comprises guides (bores 23 are guides to the extent broadly claimed).
With Respect to Claim 4
The case for vehicles according to claim 2, wherein the traction cables are mounted on the movable element or on the second casing part (one end of the cables is mounted on the movable element and the other is mounted on the second casing part, so this limitation is clearly met).
With Respect to Claim 7
The case for vehicles according to claim 1, wherein each traction cable comprises a first section, an inclined section and a second section (see FIG. 4 showing a first horizontal second, curved/inclined section at the corner, and second vertical section).
With Respect to Claim 18
A case for vehicles (inasmuch as it is usable with a vehicle, e.g. it can be placed in a trunk or tied to a vehicle roof rack), comprising: a first casing part (19); a second casing part (18), wherein the first casing part is movable relative to the second casing part between an extended and a reduced position (see, e.g. FIGS. 1-4 and description); and straight-line movement means (20-24, 44-45, and related structure) for parallel displacement of the whole first casing part in a straight line relative to the second casing part (see, e.g. FIGS. 1-4 and description), wherein the straight-line movement means includes traction cables (43-45).
With Respect to Claim 19
The case for vehicles according to claim 18, wherein the first and second casing parts are connected to each other via guides (noting bosses 22 with bores 23 and plunger pins 24).
Allowable Subject Matter
Claims 11-15 and 17 are allowed.
Claims 5-6 and 8-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Tong does not disclose the subject matter of claims 5-6, 8-15, or 17 (or the subject matter of claim 20 to the best of Examiner’s understanding of the unclear scope of the means plus function limitation, see the 112 2nd paragraph rejection above for details), and there is insufficient motivation based on the current prior art of record to modify Tong to arrive at the subject matter of these claims, and additionally none of the other prior art of record discloses or renders obvious the claimed subject matter. It is noted that U.S. Patent #9,560,902 discloses a similar locking lever and slider as part of a ratcheting mechanism for a similar expandable luggage, but as Tong already has a locking mechanism there is insufficient motivation to add this structure to Tong or to add the cable structure of Tong to the ‘902 structure.
Response to Arguments
Applicant’s arguments filed 5/6/25 have been fully considered, but are either not persuasive or are moot in view of the new ground(s) of rejection.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the inventive traction cables are part of a passive guidance system while the Tong cables are an active drive system, the Tong cables the user does not directly move the casing part) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to Applicant’s arguments that the Tong structure does not teach that when the first casing part is moved “by a user’s direct action on the casing” the cables cause the straight-line motion of the casing part as current claimed, while Tong’s turning of the rotary operator moves the cable and the cables then move the casing, and the motion of Tong is part of the overall telescopic structure, not the cable functioning as a parallel guidance mechanism, Examiner maintains that the Tong structure meets the limitations of the claim. When the first casing part is moved (e.g. via the traction cables), the traction cables cause the first casing part to move in a straight line relative to the second casing part (due to the distribution of force equally to all four cables simultaneously combined with the guidance of the plungers and bosses with bores for the plungers).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
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, Nathan Newhouse can be reached at (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734
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