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 .
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 2, 3, 5, 7-9, 12, 15, 16 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3,7, 9, 11, 13-15, 17 and 19 of U.S. Patent No. 12,156,571. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed limitations required of claims 2, 3, 5, 7-9, 12, 15, 16 and 21 of the instant application are claimed in claims 1-3,7, 9, 11, 13-15, 17 and 19, respectively, of U.S. Patent No. 12,156,571.
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.
Claims 2, 5-15 and 18-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fiedler (US Patent No. 8,359,716 cited by applicant).
Regarding claim 2, Fiedler discloses a buckle system comprising:
an anchor comprising a housing with a first magnetic element, the housing comprising a channel (see annotated Fig. 1a); and
a buckle comprising a second magnetic element and a frame with two spaced apart portions, the second magnetic element spanning between the two spaced apart portions and configured to be received by the channel of the housing such that the housing is disposed between the two spaced apart portions (see annotated Fig. 1a).
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Regarding claim 5, Fiedler discloses, wherein the first magnetic element is configured to retain the second magnetic element in the channel with magnetic attraction force (see annotated Fig. 1a).
Regarding claim 6, Fiedler discloses, wherein the first magnetic element is a rod (see annotated Fig. 1a).
Regarding claim 7, Fiedler discloses, wherein the anchor comprises a base, and wherein the housing is configured to protrude vertically upward from the base (see annotated Fig. 1a).
Regarding claim 8, Fiedler discloses, wherein the base is configured to be coupled to a compression device configured to be wrapped around a body part (see annotated Fig. 1a, and Col. 1, lines 17-23).
Regarding claim 9, Fiedler discloses, wherein the first magnetic element is disposed within a cavity (occupied by the first magnetic element) of the housing (see annotated Fig. 1a).
Regarding claim 10, Fiedler discloses, wherein the housing separates the first magnetic element and the second magnetic element with the first magnetic element received by the channel (see annotated Fig. 1a).
Regarding claim 11, Fiedler discloses, wherein the first magnetic element is surrounded by the housing (see annotated Fig. 1a).
Regarding claim 12, Fiedler discloses, wherein the buckle comprises a crossbar spanning an interior portion of the frame, the crossbar configured to be coupled to a strap (see annotated Fig. 1a).
Regarding claim 13, Fiedler discloses, wherein the frame comprises two spaced apart lateral segments, and wherein the crossbar spans between the two spaced apart lateral segments (see annotated Fig. 1a).
Regarding claim 14, Fiedler discloses, wherein the two spaced apart portions are spaced apart from each other a first distance and the two spaced apart lateral segments are spaced apart from each other a second distance, the second distance being larger than the first distance (see annotated Fig. 1a).
Regarding claim 15, Fiedler discloses a buckle system comprising:
an anchor comprising a base and a housing protruding vertically from the base, the housing comprising a first magnetic element and a channel (see annotated Fig. 1a); and
a buckle comprising a second magnetic element and a frame with two spaced apart portions, the second magnetic element spanning between the two spaced apart portions and configured to be received by the channel of the housing such that the housing is disposed between the two spaced apart portions (see annotated Fig. 1a).
Regarding claim 18, Fiedler discloses, wherein the first magnetic element is configured to retain the second magnetic element in the channel with magnetic attraction force (see annotated Fig. 1a).
Regarding claim 19, Fiedler discloses, wherein the first magnetic element is disposed within a cavity (occupied by the first magnetic element) of the housing (see annotated Fig. 1a).
Regarding claim 20, Fiedler discloses, wherein the housing separates the first magnetic element and the second magnetic element with the first magnetic element received by the channel (see annotated Fig. 1a).
Regarding claim 21, Fiedler discloses, wherein the frame comprises two spaced apart lateral segments, wherein the buckle comprises a crossbar configured to be coupled to a strap that spans between the two spaced apart lateral segments, and wherein the two spaced apart portions are spaced apart from each other a first distance and the two spaced apart lateral segments are spaced apart from each other a second distance, the second distance being larger than the first distance (see annotated Fig. 1a).
Claim Rejections - 35 USC § 103
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 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.
Claims 3, 4, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Fiedler (US Patent No. 8,359,716 cited by applicant).
Regarding claim 3, Fiedler discloses the claimed invention except for the second magnetic element comprises a cylindrical shape. It would have been an obvious matter of design choice to have the second magnetic element comprises a cylindrical shape, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed buckle system was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). One skilled in the art of magnets will understand that magnets come in different shapes.
Regarding claim 4, Fiedler discloses the claimed invention except for the channel comprises a rounded shape. It would have been an obvious matter of design choice to have the channel comprises a rounded shape, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed buckle system was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). One skilled in the art of channels will understand that channel has different shapes as square or round.
Regarding claim 16, Fiedler discloses the claimed invention except for the second magnetic element comprises a cylindrical shape. It would have been an obvious matter of design choice to have the second magnetic element comprises a cylindrical shape, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed buckle system was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). One skilled in the art of magnets will understand that magnets come in different shapes.
Regarding claim 17, Fiedler discloses the claimed invention except for the channel comprises a rounded shape. It would have been an obvious matter of design choice to have the channel comprises a rounded shape, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed buckle system was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). One skilled in the art of channels will understand that channel has different shapes as square or round.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS A MERCADO whose telephone number is (571)270-5388. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason W. 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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/LOUIS A. MERCADO/
Examiner
Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677