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 .
Claim Objections
Claim 1 is objected to because of the following informalities: the recitation “the body of the pen” (line 11) should be replaced with -- a body of the writing instrument --; and the recitation “the body of the pen” (line 12) should be replaced with -- the body of the writing instrument --. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: the recitation “the first clamping sections” (lines 6-7) should be replaced with -- the first clamping section --; the recitation “the body of the pen” (line 18) should be replaced with -- a body of the writing instrument --; and the recitation “the body of the pen” (line 19) should be replaced with -- the body of the writing instrument --. Appropriate correction is required.
Claims 23 and 24 are objected to because of the following informalities: the recitations “The elastic clip system” (line 1) should be replaced with -- The elastic clip assembly --. Appropriate correction is required.
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.
Claim 7 is 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.
Claim 7 depends from claim 2 which has been canceled. For examination, claim 7 is interpreted as depending from claim 1.
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) 9, 11, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fischer, US 4,172,543.
Regarding claim 9, Fischer discloses an elastic clip assembly [for a writing device], the assembly comprising: a connection member (housing wall of 1 having slots 4a, 4b and abutments 9a, 9b) comprising: a hanging wall (housing wall of 1); a blocking wall (9a; hook-shaped part 14, figure 4) arranged opposite the hanging wall; and a top socket (interior space including passage 15) located between the hanging wall (housing wall of 1) and the blocking wall (9a), the top socket (15) having a top (at hook-shaped part 14) and a bottom (at the inner surface of the housing wall); and an elastic clip (2) comprising: a clamping section (outer leg portion of loop 5a) having a proximal end (at 10a) and a distal end (at central portion 6); an assembly section (10a) having a first end and a second end, the first end connected to the proximal end (at 10a) of the clamping section (outer leg of 5a); and an elastic transfer section (inner leg portion 3, 5 of loop 5a) connected to the second end of the assembly section (10a), wherein the clamping section (outer leg of 5a), the assembly section (10a), and the elastic transfer section (3, 5) are formed of a single length of wire (clip 2 formed from a single bent spring wire), and wherein at least a portion of the assembly section (10a) is positioned within the top socket (15) and behind the hanging wall (housing wall of 1) such that an end portion (7a) of the elastic transfer section (3, 5) is retained below the blocking wall (9a; supported beneath hook-shaped part 14; figure 4) and configured to press against a bottom surface (lower surface of 14) of the blocking wall (9a; hook ends engaged in the abutments with a slight prestress).
Claim language set in brackets [] set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of the clip assembly, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the resilient attachment clip disclosed by Fischer, is indeed capable of the intended use statements. Note that it has been held that 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 satisfying the claimed structural limitations.
Regarding claim 11, Fischer discloses the elastic clip assembly of claim 9, wherein the hanging wall (housing wall of 1) and the blocking wall (9a) are connected by two opposite side walls (later housing walls from which hook-shaped parts 14 are cantilevered; figure 4).
Regarding claim 18, Fischer discloses an elastic clip, comprising: two clamping sections (outer legs of loops 5a, 5b) [configured to clamp an object against an outer surface of a writing instrument], the two clamping sections comprising a first clamping section (outer leg of 5a in groove 8a) and a second clamping section (outer leg of 5b in groove 8b), each clamping section (outer legs of 5a, 5b) having a proximal end (at 10a, 10b) and a distal end (at 6); two assembly sections (10a, 10b) comprising a first assembly section (10a) and a second assembly section (10b), the first assembly section (10a) having a first end attached to the proximal end (at 10a) of the first clamping sections, and the second assembly section (10b) having a first end attached to the proximal end (at 10b) of the second clamping section; two elastic transfer sections (inner legs of 5a, 5b) comprising a first elastic transfer section (inner leg of 5a) and a second elastic transfer section (inner leg of 5b), the first elastic transfer section (inner leg of 5a) attached to a second end of the first assembly section (10a) and the second elastic transfer section (inner leg of 5b) attached to a second end of the second assembly section (10b); wherein the two clamping sections (outer legs of 5a, 5b), the two assembly sections (10a, 10b), and the two elastic transfer sections (inner legs of 5a, 5b) are all formed from a single length of wire (2), wherein the first clamping section (outer leg of 5a) and the second clamping section (outer leg of 5b) are connected at their distal ends (by central portion 6; figure 1), [wherein, when a separation force is applied to move the distal ends of the two clamping sections away from the body of the pen, the two elastic transfer sections are configured to press against the body of the pen and bend, thereby providing an elastic force to counteract the separation force], and wherein the first assembly section (10a), the first elastic transfer section (inner leg of 5a), and at least the proximal end (at 10a) of the first clamping section (outer leg of 5a) are located in a first plane (plane of loop 5a), and the second assembly section(10b), the second elastic transfer section (inner leg of 5b), and at least the proximal end (at 10b) of the second clamping section (outer leg of 5b) are located in a second plane (plane of loop 5b) that is parallel to the first plane (plane of 5a).
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) 1, 5, 7, 8, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer, US 4,172,543.
Regarding claim 1, Fischer discloses an elastic clip (2), comprising: a clamping section (outer leg of loop 5a in groove 8a) [configured to clamp an object against an outer surface of a writing instrument], the clamping section (outer leg of 5a) having a proximal end (at 10a) and a distal end (at 6); an assembly section (10a) having a first end attached to the proximal end (at 10a) of the clamping section (outer leg of 5a); an elastic transfer section (inner legs 3, 5 of loop 5a) attached to a second end of the assembly section (10a); wherein the clamping section (outer leg of 5a), the assembly section (10a), and the elastic transfer section (3, 5) are formed from a single length of wire (2); [and wherein, when a separation force is applied to move the distal end of the clamping section away from the body of the pen, the elastic transfer section is configured to press against the body of the pen and bend, thereby providing an elastic force to counteract the separation force], and wherein the clamping section (outer leg of 5a), the assembly section (10a), and the elastic transfer section (3, 5) are located in a same plane (of 5a).
Fischer does not explicitly disclose wherein the single length of wire is steel wire. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the spring wire (2) of Fischer from steel to provide a durable and resilient clip, since it has been held to be within the general skill of a worker in the art to select a known (commercially available) 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 5, Fischer teaches the elastic clip of claim 1. Fischer further discloses wherein the assembly section (10a) and the elastic transfer section (3, 5) sequentially comprise a first elastic force section (wire portion joining the outer leg of 5a to 10a), a first joint section (10a), a second elastic force section (inner leg 3, 5), a second joint section (7a), and a third elastic force section (free tip of 7a; figure 3).
Regarding claim 7, as best understood, Fischer teaches the elastic clip of claim 1. Fischer further discloses an extension portion (7) at a distal end (at 7) of the elastic transfer section (3, 5), wherein the distal end (at 7) of the elastic transfer section (3, 5) extends further above the distal end (at 6) of the clamping section (outer leg in groove 8) than does any portion of the assembly section (10a).
Regarding claim 8, Fischer teaches the elastic clip of claim 1, wherein a vertical height of the elastic transfer section (3, 5) is h (vertical extend of 3, 5), a vertical height of the elastic clip (2) is H (vertical extent of 2), and wherein an outer diameter of the steel wire (2) is D (diameter dimension of the wire).
Fischer does not explicitly disclose a ratio of h/H ranges from ⅙ to ⅓, and a ratio of D/h ranges from 1/12 to ⅙. However, it is well known that selecting proportions for a known device through routine optimization, absent a showing of criticality or unexpected results, does not render a claim patentable. The ratios as claimed represent design choices and selective relative heights of the clip sections and wire gauge (for the diameter proportions) fall within a person having ordinary skill in the art before the effective filing date of the claimed invention. Further, applicant has disclosed that the claimed ranges ‘ensure that the elastic transfer section 3 can be deformed sufficiently’ (paragraph [0057]) which is a functional result achieved through routine testing and optimization of the Fischer’s clip. No unexpected results have been established for operation within the claimed ranges. It is noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 22, Fischer teaches the elastic clip of claim 1. Fischer further discloses wherein each of the clamping section (outer leg of 5a), the assembly section (10a), and the elastic transfer section (3, 5) have a constant thickness (uniform diameter of the wire 2) [in a direction perpendicular to a length of the writing instrument].
Claim(s) 1, 5, 6, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole, US 581,901.
Regarding claim 1, Cole discloses an elastic clip (wire clip in figure 1), comprising: a clamping section (1) [configured to clamp an object against an outer surface of a writing instrument], the clamping section (1) having a proximal end (at bend 6) and a distal end (free end of 1); an assembly section (6) having a first end attached to the proximal end (at 6) of the clamping section (1); an elastic transfer section (3, 5, 4) attached to a second end of the assembly section (6); wherein the clamping section (1), the assembly section (6), and the elastic transfer section (3, 5, 4) are formed from a single length of wire (“a single piece of wire”); [and wherein, when a separation force is applied to move the distal end of the clamping section away from the body of the pen, the elastic transfer section is configured to press against the body of the pen and bend, thereby providing an elastic force to counteract the separation force], and wherein the clamping section (1), the assembly section (6), and the elastic transfer section (3, 5, 4) are located in a same plane (figure 1).
Cole does not explicitly disclose wherein the single length of wire is steel wire. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the spring wire (2) of Fischer from steel to provide a durable and resilient clip, since it has been held to be within the general skill of a worker in the art to select a known (commercially available) 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 5, Cole teaches the elastic clip of claim 1. Cole further discloses wherein the assembly section (6) and the elastic transfer section (3, 5, 4) sequentially comprise a first elastic force section (wire portion adjoining leg 1 at bend 6), a first joint section (bend 6), a second elastic force section (strand 3), a second joint section (loop 5), and a third elastic force section (strand 4; figure 1).
Regarding claim 6, Cole teaches the elastic clip of claim 5. Cole further discloses wherein the first elastic force section (wire portion adjoining leg 1 at bend 6) engages with the clamping section (1), and wherein each of the first joint section (6) and the second joint section (5) are U-shaped structures facing opposite directions (figure 1).
Regarding claim 21, Cole teaches the elastic clip of claim 1, wherein the elastic clip forms a shape having only two dimensions aside from the thickness of the wire (see figure 1; all of said bends and legs lying in the same plane).
Claim(s) 12, 13, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer, US 4,172,543 in view of Kageyama et al., US 5,535,487.
Regarding claim 12, Fischer discloses the elastic clip assembly of claim 11. Fischer does not explicitly disclose wherein the hanging wall and the two opposite side walls define a limiting groove, and the limiting groove is configured to receive the clamping section.
Kageyama teaches a hanging wall (2) and two opposite side walls (of 5), wherein the hanging wall and the two opposite side walls define a limiting groove (see the annotated figure 2A), and the limiting groove (see the annotated figure 2A) is configured to receive the clamping section (see the annotated figure 2A).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the connection member of Fischer to include a limiting groove defined by the hanging wall and side walls as taught by Kageyama, in order to guide the clamping section and limits its lateral displacement relative to the connection member.
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Regarding claim 13, Fischer discloses the clip assembly of claim 9. Fischer does not explicitly disclose wherein a horizontal height of the hanging wall is less than a horizontal height of the two opposite side walls, and a height difference between the horizontal height of the hanging wall and the horizontal height of the two opposite side walls is greater than or equal to a diameter of the wire.
Kageyama teaches wherein a horizontal height of the hanging wall (2; see the annotated figure 2A) is less than a horizontal height of the two opposite side walls (of 5), and a height difference between the horizontal height of the hanging wall and the horizontal height of the two opposite side walls (of 5) is greater than or equal to a diameter of the steel wire (for the clip 3).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the connection member (of 1) of Fischer with the wall height relationship taught by Kageyama, in order to recess the clip within the side walls so that the clip is protected and does not project beyond the connection member.
Regarding claim 15, Fischer discloses the elastic clip assembly of claim 9. Fischer does not explicitly disclose wherein the distal end of the clamping section is formed into a mounting ring.
Kageyama teaches wherein the distal end (curled distal end piece) of the clamping section (of clip 3) is formed into a mounting ring (distal end piece of the clamping section that is abutting the writing instrument 1). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the distal end of the clamping section (outer leg of 5a) of Fischer to be formed into a mounting ring as taught by Kageyama, in order to provide a rounded distal end that eases passage of the clip over the edge of a fabric without snagging.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer, US 4,172,543 in view of Kageyama et al., US 5,535,487 and further in view of Heath, US 1,247,957.
Regarding claim 16, the combination of Fischer and Kageyama teaches the elastic clip assembly of claim 15. The combination does not expressly teach the clip assembly further comprising a rolling member positioned over the mounting ring. Heath teaches a clip for a pen comprising a rolling member (14).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the mounting ring of the combination of Fischer and Kageyama to include a rolling member as taught by Heath, in order to reduce friction when the clip is sliding over a fabric.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer, US 4,172,543 in view of Kageyama et al., US 5,535,487 and Heath, US 1,247,957 as applied to claim 16 above, and further in view of Prince, US 2,423,948.
Regarding claim 17, the combination of Fischer, Kageyama and Heath teaches the elastic clip assembly of claim 16. Kageyama further teaches wherein the connection member is attached to an outer surface of a writing instrument (1). The combination does not expressly teach wherein the rolling member is configured to fit within a limiting groove formed in the outer surface.
Prince teaches a connection member (2) attached to a writing instrument (1) and wherein the rolling member (11) is configured to fit within a limiting groove (14) formed in the outer surface (of the writing instrument 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to further modify the clip of the combination of Fischer, Kageyama and Heath to include a limiting groove on the writing instrument as taught by Prince in order to provide an improved engagement of the clip onto a fabric by pinching said fabric in the groove.
Claim(s) 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fischer, US 4,172,543 in view of McFadyen et al, US 3,176,951.
Regarding claim 19, Fischer discloses the elastic clip of claim 18, wherein each of the two assembly sections (10a, 10b) comprises a U-shaped structure (opening toward central portion 6; figure 3). Fischer does not explicitly disclose wherein each of the two assembly sections and the two elastic transfer sections sequentially comprise U-shaped structures facing opposite directions. The elastic transfer sections (inner legs 3, 5 of loops 5a, 5b) of Fischer terminate in right-angle hook-shaped ends (7a, 7b).
McFadyen teaches an elastic clip (4) formed from a single length of spring wire having two arms (16, 17) wherein each arm comprises a reverse bend (22, 23) forming a U-shaped structure, and an end of each arm (16, 17) is bent into a hook (24, 25) lying in the plane of the arm, the hook (24, 25) forming a U-shaped structure facing opposite the reverse bend (22, 23). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the hook-shaped ends (7a, 7b) of Fischer as semicircular hooks opening toward the bights (10a, 10b) as taught by McFadyen, in order to provide a rounded hook end for the free end of the spring wire.
Regarding claim 20, Fischer discloses the elastic clip assembly of claim 9, wherein the assembly section (10a) and the elastic transfer section (inner legs 3, 5 of loop 5a) sequentially comprise a first elastic force section (wire portion joining the outer leg of 5a to 10a), a first joint section (10a), a second elastic force section (inner legs 3, 5), a second joint section (bend at hook-shaped end 7a), and a third elastic force section (free tip of 7a) comprising the end portion (7a) of the elastic transfer section (3, 5), wherein the first elastic force section (wire portion joining the outer leg of 5a to 10a) engages with the clamping section (outer leg of 5a), and wherein the first joint section (10a) is a U-shaped structure (figure 3).
Fischer does not explicitly disclose wherein the second joint section is a U-shaped structure facing opposite the first joint section. The end (7a) of Fischer is a right-angle hook.
McFayden teaches the end of each arm (16, 17) of a single-wire spring clip (14) bent into a semicircular hook (24, 25) forming a U-shaped structure facing opposite a reverse bend (22, 23) of the arm. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the hook-shaped end (7a) of Fischer as a semicircular hook opening toward the bight (10a) as taught by McFadyen, in order to provide a rounded hook end for the free end of the spring wire, such that the second joint section (semicircular hook bend) and the first joint section (10a) are U-shaped structures facing opposite directions, with the tip of the hook (7a) remaining seated beneath hook-shaped part (14) of the abutment (9a), since such a modification is the simple substitution of one known wire-clip hook configuration for another to obtain predictable results.
Allowable Subject Matter
Claims 23 and 24 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 9, and 18 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.
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.
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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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/R.D./ Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677
