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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/23/2026 has been entered.
Claim Interpretation - 35 USC § 112(f)
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.
It is unclear whether or not claims 1 and 5-13 invoke 35 U.S.C. 112(f).
The claims lack the phraseology “means for” that would normally be used to invoke 35 U.S.C. 112(f) in a product/apparatus claim. However, the claims comprise terms that could be interpreted to substitute for “means” (i.e., generic placeholders) and that are accompanied by functional language without sufficient structure to perform the functions, which can invoke 112(f) even without recitation of “means for” in accordance with MPEP 2181(I). The question of whether or not 35 U.S.C. 112(f) is invoked is obfuscated by the written description, which fails to precisely and clearly disclose what structures and equivalents are required to achieve the claimed functions, as is required by MPEP 2181(II). Note the following examples:
Claim 1 (line 10) recites “a base adapted to be mounted to aircraft structure”. The term “base” serves as a generic place holder which is followed by functional language. The claim fails to set forth the structural adaptation sufficient to perform the claimed function such that 35 USC 112(f) would appear to be invoked. However, the figures and written description fail to depict or describe the structure and equivalents necessary to achieve the claimed mounting function such that it is unclear what structure, if any, is to be imported into the claims from the specification.
Claim 1 (lines 12-19) recites “wherein the base is connected to the lower portion of the lower grip section to allow pivotal movement of the lower grip section about a first axis in forward/rearward directions and about a second axis in inboard/outboard directions relative to the pilot’s body to allow aircraft control about the pitch and roll axis, respectively, and to also allow twisting of the lower grip section about the elongate sidestick central axis in clockwise/counterclockwise directions about the yaw axis to allow aircraft control about the yaw axis”. Again, as above, the figures and written description fail to depict or describe the structures and equivalents necessary to achieve the claimed allowing/pivoting/controlling/twisting functions.
Claim 1 (lines 26-31) recites “a grip reference point (GRP) establishing a theoretical point of application of forces by a pilot’s hand onto the lower grip section of the sidestick grip to effect aircraft control about the pitch and roll axes, wherein the GRP is substantially coincident with the yaw axis and the sidestick central axis”. The figures and written description fail to depict or describe the structures and equivalents necessary to achieve the claimed GRP/establishing/effecting/controlling functions.
The remaining claims depend from claim 1 and thus contain the same issues.
The above-noted lack of disclosure raises serious written description and clarity issues regardless of whether or not the claims are intended to invoke 35 U.S.C. 112(f), as is detailed in the 35 U.S.C. 112(a) written description rejections and the 35 U.S.C. 112(b) clarity rejections elsewhere below.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 and 5-13 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Applicant’s claims require numerous functions (see numerous functions set forth in the “Claim Interpretation” section elsewhere above and incorporated herein by reference). Applicant’s claims and disclosure fail to clearly and precisely describe the structure and equivalents that are necessary for performing the claimed functions, much less sufficient details of a representative number of species required to establish possession of the full broad genus claimed. More particularly, applicant’s disclosure fails to set forth any detailed drawing depiction or written description of the structures necessary to perform the claim 1 functions, e.g., structures for mounting the base to an aircraft, structures for allowing base pivotal movement, structures for allowing the grip to control an aircraft, structures for allowing base twisting, structures for establishing a GRP at both a “point of application of forces by a pilot’s hand” and “coincident with the yaw axis and the sidestick central axis”, or structures to allow a GRP to effect aircraft control. The complete lack of any detailed depiction or description of any such structures in applicant’s application thus render the claimed functions non-possessed and unclear. If applicant’s grip novelty requires these functions then the examiner suggests pursuing the invention in a Continuation In Part (CIP), wherein applicant can include detailed disclosure of all of the structures necessary to establish possession of the claimed functions. Further regarding the GRP limitation, note that Applicant’s disclosure states “The point where roll and pitch forces are applied, also known as Grip Reference Point (GRP)” which would thus be some point of the grip outside surface where some point of the pilot’s hand can apply a force. Note that MIL-STD-1333B (January 9, 1987), paragraph 3.10, similarly defines the GRP to be on an outside surface of the grip albeit more specifically where the second/middle finger can apply a force. The prior art of Cowlings also defines (para. 0063) the GRP to be a point where the hand applies force on the outside of the grip, albeit by the index finger. However, applicant’s GRP location is claimed to be coincident with the yaw axis and central axis internal of the grip and thus away from the surface of the grip where force is applied by the pilot’s hand. Applicant’s drawings and written description fail to depict or describe the specific structure necessary for establishing an application of force by a pilot’s hand to any point on the yaw axis and central axis within the grip as claimed.
See MPEP 2163.03(V) which states in part:
“An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated… The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. ‘Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement.’…”
See MPEP 2163(II)(A)(3)(a)(ii), which states in various parts:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice… reduction to drawings… or by disclosure of relevant, identifying characteristics… sufficient to show the inventor was in possession of the claimed genus…”
“[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention…”
“[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification…”
“A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus…”
“A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when… Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss…”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 merely by clearly describing one embodiment of the thing claimed… The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed…”
Claim Rejections - 35 USC § 112(b)
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.
Claims 1 and 5-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Applicant’s claims set forth generic place holders accompanied by functional limitations (see numerous functions set forth in the “Claim Interpretation” section elsewhere above and incorporated herein by reference). Applicant’s disclosure fails to describe what structures and equivalents are necessary for performing the functions, much less sufficient details of a representative number of species required to clarify the meets and bounds of the claimed genus. Accordingly, it is unclear whether 35 USC 112(f) is being invoked, and further unclear what scope of structures are to be encompassed by the claims.
See MPEP 2163.03(VI) which states “If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b)… Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a)… because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
More particularly, note the following examples:
Claim 1 (line 10) recites “a base adapted to be mounted to aircraft structure”. Applicant’s disclosure fails to depict or describe the specific base structures and equivalents thereof that are necessary to perform the mounting function.
Claim 1 (lines 12-19) recites “wherein the base is connected to the lower portion of the lower grip section to allow pivotal movement of the lower grip section about a first axis in forward/rearward directions and about a second axis in inboard/outboard directions relative to the pilot’s body to allow aircraft control about the pitch and roll axis, respectively, and to also allow twisting of the lower grip section about the elongate sidestick central axis in clockwise/counterclockwise directions about the yaw axis to allow aircraft control about the yaw axis”. Applicant’s disclosure fails to depict or describe the specific base structures and equivalents thereof that are necessary to perform the pivotal movement allowing, aircraft control allowing, and twisting allowing functions.
Claim 1 (lines 14-15) recite “a first axis” and “a second axis” which are unclear as to whether these are to refer to the same axes as any of the previously recited pitch/roll/yaw axis or to additional axis.
Claim 1 (lines 26-31) recites “a grip reference point (GRP) establishing a theoretical point of application of forces by a pilot’s hand onto the lower grip section of the sidestick grip to effect aircraft control about the pitch and roll axes, wherein the GRP is substantially coincident with the yaw axis and the sidestick central axis”. Applicant’s disclosure states “The point where roll and pitch forces are applied, also known as Grip Reference Point (GRP)” which appears to be compatible with MIL-STD-1333B (January 9, 1987), paragraph 3.10, which states that the GRP is the point at which a crewmember’s second finger (middle digit) is in contact with the forward or downward face of any grip-type control. However, applicant’s GRP location is claimed to be coincident with the yaw axis and central axis and is thus away from the surface of the grip where force is applied by the pilot’s hand. Applicant’s drawings and written description fail to depict or describe the specific structures necessary for establishing an application of force by a pilot’s hand to any point on the yaw axis and central axis as claimed (i.e., the surface at the outside of the grip where force is appliable by a pilot’s hand is not coincident with the yaw axis or central axis inside the grip). Further, applicant’s disclosure lacks any aircraft control structure (i.e., a mere grip is insufficient to effect aircraft control).
In addition to the above functional clarity issues, the claims are otherwise unclear as follows:
Claim 1 (lines 1-3) recites “An elongate sidestick grip which is moveable about at least a pitch axis, a roll axis and a yaw axis to allow aircraft control about the pitch, roll and yaw axes, respectively” which is unclear as to whether whether the claimed pitch/roll/yaw axes are to define axes about which the grip moves, or axes about which the aircraft rotates, or both. Still further, the pitch, roll and yaw are set forth without reference frame such that it is unclear how they are to limit the claims (e.g., the grip is not claimed with any rotational joint that would constrain the grip to rotate only about one pitch/roll/yaw such that there appears to be an infinite number of possible axes reading on the claim. Note that the limitation “the lower grip section including upper and lower ends which define therebetween an elongate sidestick central axis” does not limit the central axis to only a single orientation through the grip since, even if one were to attempt to read applicant’s drawings into the claims note that applicant’s figure 5 shows axis CL and axis Z to extend somewhat arbitrarily with respect to the grip shape (e.g., axis CL is not in the radial center of the grip at all points of its extension nor does it extend to the highest or lowest points of the grip).
Claim 1 recites “twisting of the lower grip section … in clockwise/counterclockwise directions about the yaw axis to allow aircraft control about the yaw axis” which is unclear as to how both grip section and aircraft rotate about a common yaw axis or, if not, whether the yaw axis is to limit the grip or the aircraft.
Claim 1 (lines 15-16) recites “inboard/outboard directions relative to the pilots body” without clear reference frame. Note that the pilots body is not claimed in any specific structural location of the grip or aircraft such that the recitation of inboard/outboard of the pilots body cannot clearly limit the grip invention structure.
Claim 1 recites “the inboard cant” (lines 23-24) without proper antecedent basis such that it is unclear what element defines the inboard cant.
Claim 7 recites “an arcuate wheel segment… for thumb-actuated arcuate sliding movement within the recessed arcuate guide in forward and aft directions”, which is unclear as to how sliding movement can be both “arcuate” (i.e., curved) and “forward and aft directions” (i.e., straight directions).
The remaining claims depend from the above and are thus similarly unclear/rejected.
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.
(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 and 5-13 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Cowling US 20220326727.
The prior art structures bolded below appear to be inherently capable of meeting the claimed functions/properties italicized below in accordance with MPEP §2112.01(I) and MPEP §2114, which states that where the prior art structure is substantially identical to the claimed structure, the PTO may presume claimed functions/properties to be inherently capable thereto, thus presenting a prima facie case and properly shifting the burden to applicant to obtain/test the prior art and provide evidence to the contrary.
Claim 1 (as best understood, see 35 USC 112 rejections above). An elongate sidestick grip (310) which is moveable about at least a pitch axis, a roll axis and a yaw axis to allow aircraft control about the pitch, roll and yaw axes, respectively, the sidestick grip comprising: a lower grip section (lower section of 310) adapted to be gripped by a pilot’s hand, the lower grip section including upper and lower ends (any two opposite ends of lower section of 310) which define therebetween an elongate sidestick central axis (any axis of 310 defined between two opposite ends of lower section of 310); the lower grip section including contoured concavities (contoured concavities of lower section of 310) allowing a respective one of the third fourth and fifth digits of a pilot’s hand to rest thereagainst when the lower grip section is gripped; a base (base of 310, or 320, or 520) adapted to be mounted to aircraft structure, wherein the base is connected to the lower portion of the lower grip section to allow pivotal movement of the lower grip section about a first axis in forward/rearward directions and about a second axis in inboard/outboard directions relative to the pilot’s body to allow aircraft control about the pitch and roll axes, respectively, and to also allow twisting of the lower grip section about the elongate sidestick central axis in clockwise/counterclockwise directions about the yaw axis to allow aircraft control about the yaw axis, wherein the sidestick central axis is canted in the forward direction at an angle α of 10˚-17˚ relative to a latitudinal plane defined by the pitch and yaw axes (any imaginary latitudinal plane 10-17 degrees from any of the multiple possible central axes extending between two opposite ends, noting that applicant fails to claim or disclose the articulation structure necessary to define roll, pitch and yaw axis relative to any particular orientation of the grip), and is canted in the inboard cant at an angle β of 2˚-10˚ relative to a longitudinal plane defined by the roll and yaw axis (any imaginary longitudinal plane 2-10 degrees from the central axis since applicant fails to claim or disclose the articulation structure necessary to define the roll and yaw axis, see 35 USC 112 clarity rejections), and wherein the sidestick grip includes a grip reference point (GRP 1500, see fig.15 and written description thereof) establishing a theoretical point of application of forces by the pilot’s hand onto the lower grip section of the sidestick grip to effect aircraft control about the pitch and roll axes, wherein the GRP is substantially coincident with the yaw axis and the sidestick central axis (see fig.15 showing GRP coincident with center of grip, see para.0063 stating “The GRP can be located closer to the center of the hand force”, and see 35 USC 112 rejections).
Claim 5. The sidestick grip according to claim 1, further comprising a head section (upper section of 310 supporting 340) joined to an upper end of the lower grip section.
Claim 6. The sidestick grip according to claim 5, wherein the head section comprises: a transversely oriented semi-cylindrical first head portion (any curved portion near 340), and a truncated conical second head portion (any other curved portion truncated at another portion) protruding outwardly from the semi-cylindrical first head portion in the inboard direction.
Claim 7 (as best understood, see 35 USC 112 rejections). The sidestick grip according to claim 6, wherein the first head portion comprises: a recessed arcuate guide (arcuate portion guiding/receiving the “thumbwheel or rocker switch” 340 that is recessed relative thereto and/or relative to any other part); and an arcuate wheel segment (arcuate segment of “thumbwheel” 340) operatively mounted to the recessed arcuate guide for thumb-actuated arcuate sliding movement (“operator’s thumb would be placed on the grip 310”) within the recessed arcuate guide in forward and aft directions (see MPEP 2112.01 and 2114 regarding inherency of functions to prior art structure that reads on applicant’s claimed structure).
Claim 8. The sidestick grip according to claim 5, wherein the lower grip section includes contoured concavities (contoured concavities of 310) allowing respective digits of a pilot’s hand to rest thereagainst when the lower grip section is gripped.
Claims 9. The sidestick grip according to claim 5, further comprising a transition section (section transitioning between 310 and 340 joining the upper end of the lower grip section to the head section.
Claims 10. The sidestick grip according to claim 7, further comprising a first button (see written description of “The grip may include one or more input devices 340” each of which may be a “button”) which protrudes from the lower grip section in the inboard direction (outward toward the index finger, see written description of “sits at the front of the grip 310”, see 35 USC 101 and 112 rejections) and is adapted to being depressed by a digit (disclosed index finger reads on any numbered digit since no reference frame is given for counting first, second, third, fourth or fifth finger/digit; and/or any finger is inherently capable of touching any outer surface of the grip when the hand grips in some manner in a broad sense) of the pilot’s hand when gripping the lower grip section.
Claims 11. The sidestick grip according to claim 5, further comprising a second button (“push to talk trigger” meets definition of button within broadest reasonable interpretation since it is disclosed as being pushed and controlled by the index finger) protruding in a forward direction from the transition section (outward toward the index finger, see written description of “sits at the front of the grip 310”), and adapted to being depressed by the second digit of the pilot’s hand when gripping the lower grip section (see written description of “index finger may be used to control an input at the grip 310 [e.g., push to talk trigger]”).
Claims 12. The sidestick grip according to claim 11, wherein a forward surface (forward surface of upper 310) of the head section includes a contoured concavity (concavity at front of upper portion of 310) to allow the second digit of the pilot’s hand to rest thereagainst.
Claim 13. The sidestick grip according to claim 11, further comprising a third button positioned so as to be canted in the outboard direction (any direction since outboard is recited without reference frame, see 35 USC 101 and 112 rejections) at an outboard side of the head section (any outer side of the head section since outboard is recited without reference frame) and at an elevation that is lower than an elevation of the arcuate segment of the thumb wheel (noting that the multiple disclosed input device buttons 340 would inherently have one at an elevation lower than another since “lower” is recited without reference frame; also see Cowlings para.0064 which discloses multiple devices at multiple fingers which are necessarily one above the other in the direction of the stacked fingers of the hand, i.e., “Further, though the input device 340 of FIG. 3 is positioned under where an operator's thumb would be placed on the grip 310, in other embodiments, input device 340 may be placed at other positions on the grip 310 such that each input device 340 may be actuated by one or more other fingers of the operator.”
Response to Arguments
Regarding 35 USC 112(f), applicant argues that the claims have been amended such that they do not invoke 35 USC 112(f). This is not persuasive. The noted claim limitations each recite a generic place holder (e.g., “base”, “GRP”) followed by functional language without recitation of structure sufficient to perform the function, as would invoke 35 USC 112(f) in accordance with MPEP 2181. However, the written description fails to set forth the structures and equivalents necessary to perform the functions such that it is unclear what if anything is to be read into the claims and thus whether or not 112(f) is invoked.
Regarding the 35 USC 112(a) and 112(b) rejections, applicant argues that the claims have been amended to overcome. This is not persuasive. The claims remain non-possessed under 35 USC 112(a) and unclear under 35 USC 112(b) as is detailed in the reworded rejections elsewhere above.
Regarding the 35 USC 102 claim 1 rejection, applicant argues that Cowling lacks the claimed feature of the GRP being “substantially coincident” with the central and yaw axis that run through the interior of the grip. This is not persuasive. The claim limitations are non-possessed and unclear as detailed in the 35 USC 112 rejections elsewhere above. Applicant fails to disclose precisely what structure is necessary for the GRP (defined to be the point of application of force on the outside surface of the grip) to be considered to be relocated to the internal central axis and yaw axis within the grip. As best understood applicant’s outer grip surface where a pilot’s hand applies force defines the GRP by definition and is shown in applicant’s figures to be at some undisclosed distance from the central and yaw axis running through the interior of the grip. Accordingly, the limitation “substantially coincident” must be broadly interpreted to mean at an outer surface of the grip that overlaps central and yaw axis therein so as to be readable on applicant’s own invention, Cowling meeting such interpretation in as much as applicant’s own disclosed invention does as best understood.
Further regarding the 35 USC 102 claim 1 rejection, applicant argues the claimed canting angles to be lacking in Cowling. This is not persuasive. Applicant fails to recite any structural reference frame of the grip lacking in Cowling. This largely stems from the claim lacking any structural connection between the grip and any pivot joint to define a lever arm that could anchor the axes to a structural attribute of the grip. As currently claimed, any of the infinite number of axis going through a the grip at opposite ends can be the central axis. Similarly, any of the infinite number of axes about which disconnected grip can rotate can be any of the pitch, roll or yaw axis. Pitch, roll and yaw axes are perpendicular by convention, but the orientation of the three axes relative to the orientation of the grip is not currently claimed. For instance, the limitation “the lower grip section including upper and lower ends which define therebetween an elongate sidestick central axis” allows for any to opposite surface points of the lower grip to define the upper/lower ends of the central axis therebetween. Even if one were to attempt to read applicant’s drawings into the claims note that applicant’s figure 5 shows axis CL and axis Z to extend somewhat arbitrarily with respect to the grip shape (e.g., axis CL is not in the radial center of the grip at all points of its extension nor does it extend to the highest or lowest points of the grip). Again, it seems as though applicant’s arguments are with regard to some type of connecting pivot joint structure that would lock the grip to only specific axes of motion, but no such pivot joint structure is claimed.
Regarding the 35 USC 102 rejection of claim 6, applicant argues that the curved portions near 340 and truncated portions in Cowlings figures are not labeled by Cowling to match applicant’s claimed element labels. This is not persuasive. Where there is physical identity between the subject matter of the claim and the prior art, the label given to the claimed subject matter does not distinguish the invention over the prior art. In re Pearson, 494 F. 2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Lemin, 326 F. 2d 437, 140 USPQ 273 (CCPA 1964). The origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate the claimed invention as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). Pictures and drawings may be sufficiently enabling to put the public in the possession of the article pictured. Therefore, such an enabling picture may be used to reject claims to the article. Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928).
Regarding the 35 USC 102 rejection of claim 7, applicant argues Cowling 340 may be implemented as a thumbwheel but there is no disclosure of an arcuate wheel segment mounted to a recessed arcuate guide or thumb-actuated movement along the guide. This is not persuasive. Cowlings discloses a recessed arcuate guide (arcuate portion guiding/receiving the “thumbwheel or rocker switch” 340 that is recessed relative thereto and/or relative to any other part); and an arcuate wheel segment (arcuate segment of “thumbwheel” 340) operatively mounted to the recessed arcuate guide for thumb-actuated arcuate sliding movement (“operator’s thumb would be placed on the grip 310”) within the recessed arcuate guide in forward and aft directions (see MPEP 2112.01 and 2114 regarding inherency of functions to prior art structure that reads on applicant’s claimed structure).
Regarding the 35 USC 102 rejection of claim 10, 11 and 13, applicant argues that the Cowlings devices are not necessarily one above the other. This is not persuasive. the limitation “at an elevation that is lower than an elevation of the arcuate segment of the thumb wheel” is recited without reference frame such that any location not coincident with the wheel is lower within some reference frame. Further see Cowlings para.0064 which discloses multiple devices at multiple fingers which are necessarily one above the other in the direction of the stacked fingers of the hand, i.e., “Further, though the input device 340 of FIG. 3 is positioned under where an operator's thumb would be placed on the grip 310, in other embodiments, input device 340 may be placed at other positions on the grip 310 such that each input device 340 may be actuated by one or more other fingers of the operator.”
Applicant argues that MPEP 2112.01 and 2114 do not apply since the prior art does not have all of applicant’s disclosed particulars. This not persuasive. The noted sections require the prior art to suggest all claimed structures, as is the case here. More particularly, all of applicant’s claimed grip structures (bolded in 35 USC 102 rejections above) are present in the prior art, and all of the functional limitations (italicized in the 35 USC 102 rejections above) are presumed to be inherently capable to the prior art structures, thereby establishing a prima facie case of anticipation and shifting burden to applicant to obtain/test the prior art grip structure to prove otherwise in accordance with MPEP 2112.01 and 2114. Applicant has failed to submit any evidence of any such testing.
Note the following regarding presumption of inherency of functions/properties in product claims:
MPEP §2112.01 (I) states “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent… [and] a prima facie case of either anticipation or obviousness has been established… the applicant has the burden of showing that they are not…” (emphasis added).
MPEP §2112 (V) states “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].’ The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
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MPEP §2112 (IV) further states “In In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997), the court affirmed a finding that a prior patent to a conical spout used primarily to dispense oil from an oil can inherently performed the functions recited in applicant’s claim to a conical container top for dispensing popped popcorn. The examiner had asserted inherency based on the structural similarity between the patented spout and applicant’s disclosed top, i.e., both structures had the same general shape. The court stated: [N]othing in Schreiber’s [applicant’s] claim suggests that Schreiber’s container is of a ‘different shape’ than Harz’s [patent]. In fact, [ ] an embodiment according to Harz (Fig. 5) and the embodiment depicted in Fig. 1 of Schreiber’s application have the same general shape. For that reason, the examiner was justified in concluding that the opening of a conically shaped top as disclosed by Harz is inherently of a size sufficient to ‘allow [ ] several kernels of popped popcorn to pass through at the same time’ and that the taper of Harz’s conically shaped top is inherently of such a shape ‘as to by itself jam up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package when the top is mounted to the container.’ The examiner therefore correctly found that Harz established a prima facie case of anticipation. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.”
MPEP §2114(I) states “Apparatus claims must be structurally distinguishable from the prior art… While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).”
MPEP §2114(II) states “[the] Manner of operating the device does not differentiate apparatus claim from the prior art… 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material”. The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.)” (emphasis in original).
In In re Best the court relied upon In re Ludke and In re Brown to explain that “Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludke, supra. Whether the rejection is based on 'Inherency' under 35 USC 102, on 'prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972)" (emphasis added) In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977);
In re Schreiber found that "choosing to define an element functionally, i.e., by what it does, carries with it a risk... [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” (emphasis added) See In Re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
In re Schreiber held that “Apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78 44 USPQ2d 1429, 1431-32 (Fed.Cir.1997).
In re Swinehart and In re Ludtke held that “[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” (emphasis added) In re Swinehart, 58 CCPA --, --F.2d --, 169 USPQ 226 (1971), and In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA 1971).
In re Brown held that “[I]t is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” (emphasis added) In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
In re King held that "Contrary to appellant's reasoning, after the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to appellant to prove that the subject matter shown to be in the prior art does not posses the characteristic relied on… Here, appellant’s burden before the board was to prove that Donley’s structure does not perform the so-called method defined in the claims when placed in ambient light. Appellant did not satisfy that burden, it did not suffice merely to assert that Donley does not inherently achieve enhanced color through interference effects, challenging the PTO to prove the contrary by experiment or otherwise. The PTO is not equipped to perform such tasks.” In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986).
In re Spada held that “Spada was reasonably required to show that his polymer compositions are different from those described by Smith. This burden was not met by simply including the assertedly different properties in the claims. When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
See Hewlett-Packard Co. v. Bausch & Long Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) held that “Apparatus claims cover what a device is, not what a device does.”
Conclusion
All claims are patentably indistinct from claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 extension fee 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 VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
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