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 10 is objected to because of the following informalities: the recitation “wherein and the clamping section” (line 1) should be replaced with -- wherein the clamping section --. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the recitation “wherein the clamping section” (line 7) should be replaced with -- wherein the first clamping section --. 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 13 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 13 recites the limitation "the steel wire" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Summers, US 1,551,344.
Regarding claim 1, Summers discloses an elastic clip, comprising: at least one clamping section (4) [configured to clamp an object against an outer surface of a writing instrument (pencil)], the at least one clamping section (4) having a proximal end and a distal end; at least one assembly section (8) having a first end attached to the proximal end of the at least one clamping section (3); at least one elastic transfer section (3) attached to a second end of the at least one assembly section (8); wherein the at least one clamping section (4), the at least one assembly section (8), and the at least one elastic transfer section (3) are formed from a single length of steel wire(col. 1, ll. 17-18); [and wherein, when a separation force is applied to move the distal end of the at least one clamping section away from the body of the pen, the at least one elastic transfer section is configured to press against the body of the pen and bend, thereby providing an elastic force (the wire ‘is resilient to give a spring action to the clip’; col. 1, ll. 49-51) to counteract the separation force].
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 elastic clip, 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 pencil clip disclosed by Summers (US 1,551,344), 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 2, Summers discloses the elastic clip of claim 1, including only one clamping section (4; when the two wire members are combined and considered as one), one assembly section (8), and one elastic transfer section (3), wherein the clamping section, the assembly section, and the elastic transfer section are located in a same plane (figure 5).
Regarding claim 3, Summers discloses the elastic clip of claim 1, including two clamping sections (4; each wire is considered a section), two assembly sections (8; each wire member is considered a section), and two elastic transfer sections (3; each wire member is considered a section), wherein the two clamping sections (4) are connected to one another at their distal ends (see figures 2-5).
Regarding claim 4, Summers discloses the elastic clip of claim 3, wherein the two clamping sections (4), two assembly sections (8), and two elastic transfer sections (3) are all formed from the same length of wire (figure 4).
Regarding claim 5, Summers discloses the elastic clip of claim 2, wherein the assembly section (8) and the elastic transfer section (3) sequentially comprise a first elastic force section, a first joint section (at 9), a second elastic force section, a second joint section, and a third elastic force section as annotated in figure 5 below.
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Regarding claim 6, Summers discloses the elastic clip of claim 5, wherein the first elastic force section engages with the clamping section (4), and wherein the first joint section and the second joint section are both U-shaped structures (see the annotated figure 5 above).
Regarding claim 7, Summers discloses the elastic clip of claim 2, further comprising an extension portion (7) at a distal end of the elastic transfer section (3), wherein the distal end (see figure 5) of the elastic transfer section (3) extends further away (in a horizontal direction) from the distal end of the clamping section (4) than does any portion of the assembly section (8).
Claim(s) 9, 11-13 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kageyama et al., US 5,535,487.
Regarding claim 9, Kageyama discloses an elastic clip assembly for a writing device (1), comprising: a connection member comprising: a hanging wall (2); a blocking wall (see an annotated figure 2A) arranged opposite the hanging wall (see the annotated figure 2A); and a top socket (see the annotated figure 2A) located between the hanging wall and the blocking wall (see the annotated figure 2A); and an elastic clip (3) comprising: a clamping section (see the annotated figure 2A) having a proximal end and a distal end; an assembly section (4) having a first end and a second end, connected at the first end to the proximal end of the clamping section (see the annotated figure 2A); and an elastic transfer section (see the annotated figure 2A) connected to the second end of the assembly section (4); wherein at least a portion of the assembly section (4) is positioned within the top socket (see the annotated figure 2A) and behind the hanging wall (2) such that an end portion (see the annotated figure 2A) of the elastic transfer section (see the annotated figure 2A) is retained below the blocking wall (see the annotated figure 2A).
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Regarding claim 11, Kageyama discloses the elastic clip assembly of claim 9, wherein the hanging wall and the blocking wall are connected by two opposite side walls (of 5).
Regarding claim 12, Kageyama discloses the elastic clip assembly of claim 11, 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).
Regarding claim 13, as best understood, Kageyama discloses the elastic clip assembly of claim 9, wherein a horizontal height of the hanging wall (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).
Regarding claim 15, Kageyama discloses the elastic clip assembly of claim 9, wherein the distal end of the clamping section is formed into a mounting ring (distal end piece of the clamping section that is abutting the writing instrument 1).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Summers, US 1,551,344.
Regarding claim 8, Summers discloses the elastic clip of claim 1, wherein a vertical height of the elastic transfer section (3) is h (vertical distance), a vertical height of the elastic clip (figure 5) is H (vertical distance), and wherein an outer diameter of the steel wire is D (diameter dimension of the wire). Summers 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 Summers’ 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.
Claim(s) 10 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kageyama et al., US 5,535,487 in view of Summers, US 1,551,344.
Regarding claim 10, Kageyama discloses the elastic clip assembly of claim 9 except for wherein the clamping section, the assembly section, and the elastic transfer section are formed of a single wire. It is noted that applicant has disclosed ‘a thinly-cut steel sheet may be used in lieu of steel wire’ in paragraph [0051]. Summers teaches an elastic clip wherein the clamping section, the assembly section, and the elastic transfer section are formed of a single wire (as rejected in claim 1 above). 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 clip of Kageyama to be formed of a single wire as taught by Summers to provide a light, cheap and effective clip.
Regarding claim 14, Kageyama discloses the elastic clip assembly of claim 9. Kageyama does not explicitly disclose wherein the elastic clip further comprises: a second clamping section having a proximal end and a distal end; a second assembly section having a first end and a second end, the second assembly section connected at the first end to the proximal end of the second clamping section; and a second elastic transfer section connected to the second end of the second assembly section; wherein the clamping section and the second clamping section are connected at their distal ends.
Summers teaches an elastic clip further comprising: a second clamping section (4; each wire is considered a section) having a proximal end and a distal end; a second assembly section (8; each wire member is considered a section) having a first end and a second end, the second assembly section connected at the first end to the proximal end of the second clamping section; and a second elastic transfer section (3; each wire member is considered a section) connected to the second end of the second assembly section; wherein the first clamping section (4) and the second clamping section (4) are connected at their distal ends (see figures 2-5). 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 clip of Kageyama to be formed of a single wire as taught by Summers to provide a light, cheap and effective clip.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kageyama et al., US 5,535,487 in view of Heath, US 1,247,957.
Regarding claim 16, Kageyama discloses the elastic clip assembly of claim 15. Kageyama does not explicitly disclose 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 of 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 Kageyama et al., US 5,535,487 in view of 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 Kageyama and Heath teaches the elastic clip assembly of claim 16. Kageyama further discloses wherein the connection member is attached to an outer surface of a writing instrument (1). The combination does not expressly teach and 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 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.
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. For example, Kageyama (US 2011/0123250) discloses a knock-type writing instrument with a connecting member inserted into a socket/wall and retained therein. Sacean (US 3,217,369) discloses a clip with double wires. Adolfson (US 1,401,124) teaches a mounting ring concept for a clip.
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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