DETAILED ACTION
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 with respect to claim(s) 1-4, 8 and 10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Interpretation
Applicant’s preamble to the independent claim and body of the claim set forth multiple limitations directed toward the broader mechanical context of “the device”, as claimed, which are not considered limiting. Applicant has claimed “a device” which is not required to be a single mechanical element, but is defined as “a thing made for a particular purpose; an invention or contrivance, especially a mechanical or electrical one” and the device, as claimed and disclosed, appears to simply be a “snap ring” or “retaining ring”. Therefore, the limitation “device” will be interpreted to mean a single element or component as “snap rings” or “retaining rings” are widely known in the mechanical arts. It appears Applicant wishes to ascribe limitations that are beyond the immediate structure of the retaining ring itself. However, as currently claimed the intended use limitations, functional limitations and limitations directed toward structures other than the retaining ring will be considered non-limiting. Examiner notes that the limitations must be read in light of the specification, but limitations cannot be imported from the specification into the limitations. Since the device appears to simply be a “snap ring” or “retaining ring” there are few limitations which the interpretation thereof will be significantly influenced by the specification.
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) 1-4 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jaskowiak, U.S. Patent 5,308,207.
Regarding Claim 1, Jaskowiak teaches:
A clip (10)..
wherein the clip comprises resilient retaining means (15-16) means…
wherein the clip includes a locking beak (14-15) passing through an opening (25)
extending radially inwards relative to the cylindrical part,
wherein the locking beak is arranged to cooperate with a slot (25a) in the shaft to hold the moving part axially in place
wherein the clip has a ring body (12) that has two arms with open ends (16), and
wherein the ring body has two circular arcs per arm (see below).
**Examiner’s Note: Examiner notes that the above claim contains the claim language “configured to be…the moving part“ and “configured to cooperate…of its periphery”, 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].
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Regarding Claim 2, see Claim Interpretation above, Examiner notes that this claim does not set forth any structural limitations directed toward the clip and is therefore non-limiting. All structural limitations are directed to a structure which is unclaimed. However, The Examiner notes that the prior art meets these limitations (see below).
Jaskowiak shows an embodiment that teaches:
Wherein the cylindrical part comprises a formed around all or part of its periphery (see element 27) in addition to an opening (25) and a slot (29).
Regarding Claim 3, Jaskowiak is silent with regard to the apparatus being explicitly resilient, flexible, deformable, elastic or sprung. However, the disclosure clearly cites these characteristics in the snap or lock ring technology, see Col 2, Lns 23-30 (U.S. Patent 3,923,408) and Col 2, Lns 41-50 (U.S. Patent 4,818,166). As such, this limitation is considered inherent to the prior art of Jaskowiak.
**Examiner’s Note: Examiner further notes that the cited references can be considered extrinsic evidence, but this does not disqualify the Jaskowiak reference under 102(a)(1), see MPEP 2131.01, "To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill." Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991).
Regarding Claim 4, Jaskowiak teaches:
Wherein the clip has an inner radius that is smaller than the radius of the cylindrical part (see embodiment of cylindrical part in Fig. 2A with elements 27 which retain elements 16 and the inner radius of 16 is therefore smaller than the radius of the cylindrical part).
**Examiner’s Note: Examiner notes that the above claim contains the claim language “in order to obtain…the cylindrical part“, 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].
Regarding Claim 10¸ the term foil is defined as “metal in the form of very thin sheets” (www.dictionary.com) and the prior art is therefore interpreted to mee the limitation “the clip comprises a metal foil”.
**Examiner’s Note: Examiner notes that the remaining limitations must be considered non-limiting as they are drawn to structure which are not positively recited as an element of the device and the Examiner cannot import limitations from the specification into the claims.
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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jaskowiak ‘207 as applied to claim 1 above, and further in view of Watanabe, U.S. patent 11,256,202.
Regarding Claim 8, Jaskowiak is silent with regard to the clip being made from a wire.
Watanabe teaches a snap ring or retaining ring made of wire (see 80, see Col 10, Lns 55-57).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide Jaskowiak as being made of wire because wire is a widely available stock material and can be quickly, cheaply and efficiently manipulated into the proper shape.
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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