Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 9/30/24 is noted. The submission is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the examiner is considering the information disclosure statement.
Drawings
3. 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 coaxial sleeve sliding over the base component, as recite in claim 4, must be shown or the feature(s) canceled from the claim(s). Figure 3 clearly shows the base component 108 having top and bottom ends 200,202 that are wider than the coaxial sleeve 206 such that they are incapable of sliding within the coaxial sleeve 206 and being adjusted in position using the spring-loaded button 208 within apertures 210. No new matter should be entered.
4. 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 second spring, as recited in claim 5, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Looking at Figure 3, it is not even clear how such a second spring as claimed can even exist. Figure 3 clearly shows the handle 204, which is attached to a bottom end 202 of the base component 108 (see paragraph [0046]) being beneath the coaxial sleeve 206. How can a spring be inside of the coaxial sleeve 206 and exert an upward pressure on the base component 202/204 which is clearly located beneath the coaxial sleeve?
5. 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, expansion button being located on the coaxial sleeve near the handle, as recited in claim 6, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Figure 3 clearly shows the expansion button 214 being on the handle 204 itself and not on the coaxial sleeve 206.
6. 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 securing member, as recited in claims 10 and 13, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Figure 4 includes reference number 406 and the Specification identifies number 406 as the securing member in paragraphs [0054] and [0055]. However, the Specification seems clear that the securing member serves to attach the base component 108 to the transverse member(s) 404/408, as discussed in paragraphs [0019], [0020], and [0054]. Figure 4 does not show reference number 406 attaching the base member to the transverse members. It seems that number 406 in Figure 4 should actually be number 110 - the shoulder straps. The drawings never actually show a securing member between the base component 108 and the transverse members 404/408.
7. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 500.
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.
Admitted Prior Art
8. Applicant has disclosed in paragraphs [0016] and [0048] of the Specification that the spring-loaded button and coaxial sleeve adjustment means, as set recited in claim 4, as well as the expansion button, as recited in claim 6, are well known in the art.
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.
9. Claims 1-20 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.
Regarding claims 1-20, claims 1, 13, and 20 all recite the limitation “conventional umbrella” of which the scope is unclear. What features must an umbrella have to be considered “conventional”? What features would exclude one from being “conventional”? The specification does not make this clear. For the purpose of examination, any umbrella having the claimed structure will be considered “conventional”.
Regarding claims 4-12, the scope of claim 4 is unclear given that it describes structure that does not seem physically possible given what is shown in the drawings (see Paragraph 3 above), despite Applicant disclosing the structure as being well known in the art (see Paragraph 8 above). For the purpose of examination, this structure is either assumed to be well known, as disclosed by Applicant, or any prior art that shows some form of coaxial telescoping members utilizing a spring-loaded button and apertures will be considered sufficient to satisfy this limitation.
Regarding claims 6-12, the scope of claim 6 is unclear given that it describes structure that contradicts what is shown in the drawings (see Paragraph 5 above), despite Applicant disclosing the structure as being well known in the art (see Paragraph 8 above). For the purpose of examination, this structure is either assumed to be well known, as disclosed by Applicant, or any prior art that shows an expansion button in proximity to a handle or coaxial sleeve will be considered sufficient to satisfy this limitation.
Regarding claims 13-19, the scope of “the plurality of straps comprise a second transverse member” in claim 13 is unclear. The specification seems clear that the straps can be connected by a transverse member, but the transverse member is never disclosed as being a strap or any other specific structure. See Paragraphs [0017], [0019], [0020], [0052], [0054], and [0055]. It is unclear if this claim language requires the transverse member to be a strap or not. For the purpose of examination, any transverse member, strap or otherwise, connecting some shoulder straps will be considered sufficient to satisfy this limitation. This seems to be in line with the originally filed specification.
Regarding claim 16, the scope of “’are available in a wide variety of colors and designs” is unclear. Applicant has not claimed a plurality of umbrella devices - only one. This claim limitation reads almost as a method claim of providing a plurality of colors and designs down the road for a user to choose from. This doesn’t make sense embedded in a product claim. It also seems functional, given that only one umbrella device is being claimed - where a manufacturer could simply choose to make it with any color or design. For the purpose of examination, Examiner assumes the latter, that this limitation is purely functional as any physical product can be made in a variety of colors and designs by known methods.
Claim Rejections - 35 USC § 102
10. 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.
11. 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.
12. Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McAdoo (US 2020/0397102 A1).
Regarding claim 1, McAdoo discloses a hands-free umbrella device that provides a user with a hands-free means for holding an umbrella while spending time outdoors in the sun or rain, the hands-free umbrella device comprising: a body component with a canopy (62) and a plurality of supports (64); a base component (58); and a plurality of straps (34); wherein the body component is configured as a conventional umbrella with the canopy and the plurality of supports (see Figures); wherein the canopy and the plurality of supports are secured to the base component (see Figures); wherein the base component is secured to the plurality of straps (see Figures); and further wherein the plurality of straps are secured around a user’s shoulders for hands-free use (see Figure 5).
Regarding claim 2, McAdoo discloses the hands-free umbrella device of claim 1, wherein the plurality of supports (64) are positioned on an underside of the canopy (see Figure 1), and a water-resistant material is attached to the plurality of supports to form the canopy. The canopy of McAdoo must inherently be water-resistant or it simply would not function as an umbrella. No matter the specific material, it would help divert the rain to at least some extent, and could be considered “water-resistant” as so broadly claimed.
Claim Rejections - 35 USC § 103
13. 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.
14. Claims 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over McAdoo (US 2020/0397102 A1) in view of Perry (US 5,887,771 A).
Regarding claim 3, McAdoo discloses the hands-free umbrella device of claim 2, wherein the base component (58) comprises opposing first and second ends, with the first end (upper end) being secured to the canopy and the plurality of supports (see Figures), but fails to disclose the second end (lower end) being secured to a handle. Perry teaches that it was already known for the lower end of an umbrella base component (16) to be secured to a handle (18). A person of ordinary skill in the art would have realized through their own available knowledge and reasoning that the handle of Perry makes the lower end of the base component more ergonomic and comfortable in the hand and would have found it obvious to have provided the lower end of the McAdoo base component (58) with a handle for this reason should a user decide to remove the umbrella from the backpack for individual use.
Regarding claim 4, to the degree the claim is understood, McAdoo as modified above would include the hands-free umbrella device of claim 3, wherein McAdoo discloses the base component is telescoping (58 within 46) to allow for height adjustment, and comprises a coaxial sleeve (46) that slides over the base component (58) and a spring-loaded button (68) extends through one of a plurality of linearly arranged adjustment apertures (70) spaced along the coaxial sleeve (see Figure 2).
Regarding claim 5, McAdoo as modified above would include the hands-free umbrella device of claim 4, but fails to disclose wherein a second spring, within the coaxial sleeve and located below a bottom of the base component, exerts a constant and steady upward pressure on the base component, resulting in the base component being additionally secured in a fixed position relative to the coaxial sleeve. Perry teaches that it was already known in the art for an umbrella device like that of McAdoo to include a spring (54), within a coaxial sleeve (23) and located below a bottom of a base component (16/18), exerting a constant and steady upward pressure on the base component, resulting in the base component being additionally secured in a fixed position relative to the coaxial sleeve as well as serving to eject the base member as needed (see col. 3 lines 40-47). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the McAdoo umbrella device with a second spring, within the coaxial sleeve and located below a bottom of the base component, exerts a constant and steady upward pressure on the base component, the motivation being to additional secure the base component in a fixed position relative to the coaxial sleeve as well as serving to eject the base member as needed, as taught by Perry.
Regarding claim 6, to the degree the claim is understood, McAdoo as modified above would include the hands-free umbrella device of claim 5, wherein McAdoo discloses the base component comprises an expansion button (66), located on the coaxial sleeve (48/60) near the handle to open the canopy (see Figure 2).
Regarding claim 7, McAdoo as modified above would include the hands-free umbrella device of claim 6, wherein McAdoo discloses the body component is secured to a backpack (12) that comprises adjustable (via 38) backpack straps (34) for securing the backpack to a user’s shoulders.
15. Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over McAdoo (US 2020/0397102 A1) in view of Perry (US 5,887,771 A) as applied above, further in view of Allen (US 5,823,212 A).
Regarding claim 8, McAdoo as modified above would include the hands-free umbrella device of claim 7, but so far fails to include wherein a front panel of the canopy is transparent, to facilitate visibility during use. Allen teaches that it was already known in the art for an umbrella canopy like that of McAdoo to be transparent (see “transparent” in Abstract). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have made the canopy of the modified McAdoo device out of any known and suitable material, in this case a transparent material, where Allen teaches that transparent material was already known to be suitable for such canopy use. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 9, McAdoo as modified above would include the hands-free umbrella device of claim 8, wherein McAdoo discloses the plurality of straps comprise a pair of shoulder loops (34) and a transverse member (12) that secures the pair of shoulder loops together.
Regarding claim 10, McAdoo as modified above would include the hands-free umbrella device of claim 9, wherein McAdoo discloses a securing member (46) releasably attaches the base component to the transverse member.
16. Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over McAdoo (US 2020/0397102 A1) in view of Perry (US 5,887,771 A) and Allen (US 5,823,212 A) as applied above, further in view of Verret (US 10,986,904 B1).
Regarding claim 11, McAdoo as modified above would include the hands-free umbrella device of claim 10, but so far fails to disclose wherein the plurality of straps comprise a waist strap for extra support. Verret teaches that it was already known in the art to provide an umbrella device like that of McAdoo with a waist strap (26A) in order to aid the user in securing and adjusting the umbrella device on their body (see col. 3 lines 42-43). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the modified McAdoo device with a waist strap, the motivation being to aid the user in securing and adjusting the umbrella device on their body, as taught by Verret.
Regarding claim 12, McAdoo as modified above would include the hands-free umbrella device of claim 10, wherein McAdoo discloses the plurality of straps comprise a second transverse member (40) positioned along a front of a user to add stability to the securing member.
17. Claims 13-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over McAdoo (US 2020/0397102 A1) in view of Perry (US 5,887,771 A) and Verret (US 10,986,904 B1).
Regarding claim 13, McAdoo discloses a hands-free umbrella device that provides a user with a hands-free means for holding an umbrella while spending time outdoors in the sun or rain, the hands-free umbrella device comprising: a body component with a canopy (62) and a plurality of supports (64); a telescoping base component (58) comprising opposing first and second ends (upper and lower), with the first end (upper) being secured to the canopy and the plurality of supports (see Figures); and a plurality of straps comprising a pair of shoulder loops (34) and a transverse member (12) that secures the pair of shoulder loops together; and wherein the body component is configured as a conventional umbrella with the plurality of supports positioned on an underside of the canopy (see Figures), and a water-resistant material attached to the plurality of supports to form the canopy (The canopy of McAdoo must inherently be water-resistant or it simply would not function as an umbrella. No matter the specific material, it would help divert the rain to at least some extent, and could be considered “water-resistant” as so broadly claimed.); wherein a securing member (46) releasably attaches the telescoping base component to the transverse member; wherein the plurality of straps comprise a second transverse member (40) positioned along a front of a user to add stability to the securing member; and further wherein the plurality of straps are secured around a user’s shoulders for hands-free use (see Figures).
McAdoo fails to disclose the second end of the base component being secured to a handle and also fails to disclose the plurality of straps comprising a waist strap for extra support.
Regarding the handle, Perry teaches that it was already known for the lower end of an umbrella base component (16) to be secured to a handle (18). A person of ordinary skill in the art would have realized through their own available knowledge and reasoning that the handle of Perry makes the lower end of the base component more ergonomic and comfortable in the hand and would have found it obvious to have provided the lower end of the McAdoo base component (58) with a handle for this reason should a user decide to remove the umbrella from the backpack for individual use.
Regarding the waist strap, Verret teaches that it was already known in the art to provide an umbrella device like that of McAdoo with a waist strap (26A) in order to aid the user in securing and adjusting the umbrella device on their body (see col. 3 lines 42-43). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the modified McAdoo device with a waist strap, the motivation being to aid the user in securing and adjusting the umbrella device on their body, as taught by Verret.
Regarding claim 14, McAdoo as modified above would include the hands-free umbrella device of claim 13, wherein McAdoo discloses the plurality of straps are adjustable (via 38).
Regarding claim 15, McAdoo as modified above would include the hands-free umbrella device of claim 13, wherein McAdoo discloses the body component and the base component can be removed without removing the plurality of straps (58 can be removed from 46 while the user wears the backpack).
Regarding claim 16, to the degree the claim is understood, McAdoo as modified above would include the hands-free umbrella device of claim 13, wherein the plurality of straps, the body component, and the base component of McAdoo are capable of being manufactured in a wide variety of colors and designs.
Regarding claim 18, McAdoo as modified above would include the hands-free umbrella device of claim 13, wherein McAdoo discloses the body component is secured to a backpack (see Figures) that comprises adjustable (via 38) backpack straps (34) for securing the backpack to a user’s shoulders.
18. Claims 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over McAdoo (US 2020/0397102 A1) in view of Perry (US 5,887,771 A) and Verret (US 10,986,904 B1) as applied above, further in view of Allen (US 5,823,212 A).
Regarding claim 17, McAdoo as applied above would include the hands-free umbrella device of claim 13 but so far fails to further comprise a plurality of indicia. Allen teaches that it was already known in the art for an umbrella to include corporate or organizational logos (see col. 5 lines 54-65). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the modified McAdoo device with a plurality of indicia, the motivation being to promote a corporation or organization, as taught by Allen.
Regarding claim 19, McAdoo as applied above would include the hands-free umbrella device of claim 13, but so far fails to include wherein a front panel of the canopy is transparent, to facilitate visibility during use. Allen teaches that it was already known in the art for an umbrella canopy like that of McAdoo to be transparent in over to afford a user unrestricted view (see col. 1 lines 6-10). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have made the canopy of the modified McAdoo device out of any known and suitable material, in this case a transparent material, where Allen teaches that transparent material was already known to be suitable for such canopy use, specifically to afford a user visibility. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
19. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over McAdoo (US 2020/0397102 A1).
Regarding claim 20, McAdoo discloses a method of providing hands-free protection from the elements, the method comprising the following steps: providing a hands-free umbrella device comprising a body component configured as a conventional umbrella with a canopy (62) and supports (64) secured to a rod-like base component (56); securing the base component to shoulder straps (34); securing the base component to a small backpack (12); positioning the shoulder straps or the backpack onto a user’s shoulders for use (see Figure 5); opening the umbrella canopy (see Figures). While McAdoo discloses hands-free use (see Abstract), McAdoo doesn’t explicitly disclose the method step of performing a variety of outdoor tasks hands-free while still being protected from outdoor elements. Clearly a user would most likely be outdoors if using an umbrella. It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have simply lived life and carried out a series of activities, including maybe walking, or simply looking around, while wearing the McAdoo umbrella backpack.
Conclusion
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN MATTHEW LARSON whose telephone number is (571)272-8649. The examiner can normally be reached Monday-Friday, 7am-3pm. 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. 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.
/JUSTIN M LARSON/Primary Examiner, Art Unit 3734 2/26/26