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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 - 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 19 of U.S. Patent No. 12,144,406. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application read on the allowed claims of US 12,144,406. For example, the claimed jewelry clasp of the instant application is broader on the slider attachment not requiring it to be attached “atop” and “along a longitudinal axis of the housing” in claim 1.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitations recite sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitations are: “by means of at least one tongue sliding in at least one groove” in claim 6, and “by means of the circular surface” in claim 11.
Because these claim limitations are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitations do not recite sufficient structure, materials, or acts to perform the claimed function.
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)(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.
(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, 6, 13-15, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bauer, US 6,295,702.
Regarding claim 1, Bauer (‘702) discloses a clasp (10, see at least Figs. 1-5) capable for securing a first end of an elongated member of a bracelet or a necklace to a second end of the elongated member (e.g., via attachment means 35 and 55), the clasp comprising:
a first clasp part (20) and a second clasp part (40), wherein at least part (32) of the first clasp part (20) in an attached position thereof is positioned received in a housing (within housing 42) of the second clasp part (40), at least one of the first and second clasp parts (40) comprising a magnet (50) and the other of the first (20) and second parts comprising a part (forward end 28) magnetically attractable by the magnet (50) so that the first clasp part (20) in its attached position (depicted in Fig. 2) is held to the second clasp part (40) by magnetic attraction (as described in at least col. 9, line 59 to col. 10, line 7); and
a slider (60) attached to and slideable in relation to the housing (42) of the second clasp part (40), the slider (60) being slideable between a releasing state (depicted in Fig. 4) and a locking state (depicted in Fig. 2), the slider (60) in the releasing state (Fig. 4) allowing for the first clasp part (20) to be detached (as described in at least col. 9, lines 29-40) from the second clasp part (40), the slider (60) in the locking state (Fig. 2), preventing the first clasp part (20) from being detached from the second clasp part (40);
(concerning claim 6) the slider (60) slides between the releasing and locking states by means of at least one tongue (61) sliding in at least one groove (side wall opening 47, Fig. 2);
(concerning claim 13) a magnet (50) is positioned and held in a spacing (chamber 43; Fig. 2) in the housing (42);
(concerning claim 14) the magnet (50) is positioned so that, in the attached position (Fig. 2) of the first clasp part (20), the magnetic attraction works in an axial direction (as shown in the sequence from Fig. 4 to Fig. 5) of the clasp (10);
(concerning claim 15) the magnetic attraction assists in drawing the first clasp part into its attached position (as described in at least col. 9, line 59 to col. 10, line 7);
(concerning claim 17) a method of closing the clasp of claim 1, comprising:
inserting at least part (28) of the first clasp part (20) within the housing (42) so that the first clasp part is brought into its attached position (as depicted in Fig. 2 and described in at least col. 9, line 59 to col. 10, line 7); and sliding the slider (60) from its releasing state to its locking state preventing the first clasp part from being detached from the second clasp part (as described in at least col. 9, lines 29 to 40); and
(concerning claim 18) a method of opening the jewelry clasp of claim 1, comprising:
sliding (“by applying manual pressure to lock release means 70”, col. 9, lines 30-31) the slider (60) from its locking state to its releasing state to allow the first clasp part (20) positioned in its attached position to be detached (as depicted in Fig. 4) from the second clasp part (40); and
exerting a force on the first clasp part to overcome the magnetic attraction and extract at least part of the first clasp part from the housing (as described in col. 9, lines 51).
Allowable Subject Matter
Claims 2 - 5, 7 - 12 and 16 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for similar art cited.
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/R.D./ Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677