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
Claims 1-22 objected to because of the following informalities: the claims are replete with inconsistent use of grammatical tenses. Notably, the present continuous grammatical tense (“being”) is used throughout the claims in limitations describing structural features. For example, in claim 1, “the brace being configured to restore the operating lever…”, in claim 2, “the spring element and the operating lever being spaced apart from one another…” and in claim 5 line 3, “a magnet being arranged on the second axial end…” The present continuous tense is used to express a temporary, changing action. In the pending claims, its use makes it unclear whether any feature claimed as “being” a particular way is intended to be interpreted as a permanent part of the invention. It is recommended to replace every instance of “being” with “is” or to otherwise redraft any limitation including “being” to clarify that claimed mechanical feature is a permanent part of the invention. Appropriate correction is required. For example, in claim 5 line 3, it is suggested to replace “a magnet being arranged on the second axial end portion” with “a magnet is arranged on the second axial end portion” or “a magnet is located on the second axial end portion” or “the second axial end portion comprises a magnet”.
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 1-22 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.
In claim 1, the phrase "a plate-like actuating element" renders the claim and its dependents indefinite because the claim includes elements not actually disclosed (those encompassed by "-like"), thereby rendering the scope of the claim and its dependents unascertainable. It is impossible to ascertain from the limitation “plate-like” whether an actuating element needs to be flat, rectangular, circular, below some threshold thickness, within a certain size range, some combination thereof, or some other characteristic that one having ordinary skill in the art might attribute to a plate. See MPEP § 2173.05(d). Additionally, In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970) establishes that claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350, 75 USPQ2d 1801, 1807 (Fed. Cir. 2005)); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373, 112 USPQ2d 1188 (Fed. Cir. 2014) (holding the claim phrase "unobtrusive manner" indefinite because the specification did not "provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary").
For example, in Datamize, the invention was directed to a computer interface screen with an "aesthetically pleasing look and feel." Datamize, 417 F.3d at 1344-45, 75 USPQ2d at 1802-03. The meaning of the term "aesthetically pleasing" depended solely on the subjective opinion of the person selecting features to be included on the interface screen. Nothing in the intrinsic evidence (e.g., the specification) provided any guidance as to what design choices would result in an "aesthetically pleasing" look and feel. 417 F.3d at 1352, 75 USPQ2d at 1808. The claims were held indefinite because the interface screen may be "aesthetically pleasing" to one user but not to another. 417 F.3d at 1350, 75 USPQ2d at 1806. See also Ex parte Anderson, 21 USPQ2d 1241 (Bd. Pat. App. & Inter. 1991) (the terms "comparable" and "superior" were held to be indefinite in the context of a limitation relating the characteristics of the claimed material to other materials).
In pending claim 1, interpreting “plate-like” would require a subjective opinion wherein different people would likely have different opinions on what physical form(s) would be considered to be like some plate that is not defined in the claim.
In claim 1, the limitation “its zero position”, see lines 13-14, renders the claim indefinite because this limitation lacks antecedent basis. There is no prior definition in the claim for a zero position to which the possessive “its zero position” could refer. It is recommended to either define a zero position of the operating lever prior in the claim or to amend “its zero position” in lines 13-14 to “a zero position”.
In claim 1, the limitation of “as seen in an extent direction of the brace” renders the claim indefinite because “extent direction” is not a concept that has a plain meaning that would be understood in the field of the invention. The term “extent” defines a size, area or degree to which something extends. It is unclear how the noun “extent” is intended to describe a direction. It appears Applicant may be intending to claim something akin to “as seen in a lengthwise direction of the brace” or “as seen in a direction extending along the brace” or “as seen in a direction along an extension of the brace”. Appropriate correction is required.
In claim 20, the term “substantially an egg shape” renders the claim indefinite. “Substantially” is a relative term that is 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. As noted prior, In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970) establishes that claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Absent any claimed metric or tolerances for measuring or judging an egg-shape, different readers of the claim would likely have different opinions on what constituted substantially an egg shape.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/STEVEN J HYLINSKI/ Primary Examiner, Art Unit 3715
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