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 .
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.
Claims 5 and 17 are 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. Specifically, the claim is confusing as it repeats the limitation from claim 1, almost verbatim “wherein at least one of the plurality of axle locating features comprise a slotted cutout in one of the first and second inline skate frame wall”. The one difference being the “wall” is not plural as it should be grammatically.
The term “substantially cylindrical” in claims 2-3, 5-6, 9-10, and 16-17 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination this term is being interpreted as “cylindrical”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masciocch et al. (CA 2,213,602) in view of Olson (US 4,909,523).
With regards to claim 1, Masciocch et al. discloses an inline skate frame (1) comprising: a first inline skate frame wall (2); a second inline skate frame wall (3) opposite the first inline skate frame wall with a channel (Figures 1 and 5) defined therebetween; a plurality of axle locating features, each axle locating feature comprising at least one through-hole for receiving an axle such that the corresponding axle extends across the channel (12 and 13), however, Masciocch et al. fails to disclose wherein at least one of the axle locating features comprises a slotted cutout in one of the first and second inline skate frame walls, however, Olson teaches the usage of slotted cutouts (40B) in the side of the inline skate frame. While the disclosed invention of Masciocch et al. provides an adjustable axle with a cam type member that is round to permit infinite adjustment to the axle height it would also have been obvious to reduce the amount of adjustment available so as to reduce the likelihood of misalignment of the wheels with one another with a more consistent type of a slot system as that used in Olson. Therefore, it would have obvious to one having ordinary skill in the art at the time the instant application was filed to have incorporated the teachings of Olson in to the invention of Masciocch et al..
With regards to claim 2, the combination of Masciocch et al. in view of Olson teaches the inline skate frame of claim 1, wherein the at least one axle locating feature comprises a substantially cylindrical through-hole (Masciocch et al., 13) opposite the channel from the slotted cutout (Olson, 40B) such that the slotted cutout defines an orientation of an axle received at the substantially cylindrical through-hole.
With regards to claim 3, the combination of Masciocch et al. in view of Olson teaches the inline skate frame of claim 1, wherein each of the plurality of axle locating features comprises a slotted cutout (Olson, 40B) in one of the first and second inline skate frame wall and a corresponding substantially cylindrical through-hole (Masciocch et al., 13) opposite the channel, and wherein at least one of the plurality of axle locating features provide the slotted cutout at an angle relative to a vertical orientation (Olson, 40A or 40D), and wherein at least one of the plurality of axle locating features orient the slotted cutout vertically (Olson, 40B). It would have been obvious to one having ordinary skill in the art at the effective filing date of the instant application to have made use of both the vertical and horizontal slotted cutouts, taught by Olson, in order to allow for both vertical adjustment and length adjustment of the skates to better facilitate different skating preferences with these rocker style skate frames when incorporated in to the invention of Masciocch et al..
Note: It is noted by the examiner that the slotted cutout at an angle relative to a vertical orientation is inclusive of 90 degrees, which would then make the slotted cutout horizontal.
With regards to claim 4, the combination of Masciocch et al. in view of Olson teaches the inline skate frame of claim 3, wherein the first and last of the plurality of axle locating features provide the slotted cutout at an angle relative to a vertical orientation and wherein the remaining of the plurality of axle locating features orient the slotted cutout vertically (Olson, Figure 7).
With regards to claim 5, the combination of Masciocch et al. in view of Olson teaches the inline skate frame of claim 1, wherein at least one of the plurality of axle locating features comprise a slotted cutout in one of the first and second inline skate frame wall (covered in the rejection of claim 1) and a corresponding substantially cylindrical through-hole opposite the channel (covered in the rejection of claim 2), and wherein at least one of the plurality of axle locating features comprise substantially cylindrical through-holes on both the first and second inline skate frame walls (Masciocch et al., 12 and 13).
With regards to claim 6, the combination of Masciocch et al. in view of Olson teaches the inline skate frame of claim 5, wherein the first and last of the plurality of axle locating features comprise a slotted cutout (Olson, 40A and 40D) in one of the first and second inline skate frame wall and a corresponding substantially cylindrical through-hole (Masciocch et al., 13) opposite the channel, while the remaining axle locating features comprise substantially cylindrical through-hole (Masciocch et al., 12 and 13) on both the first and second inline skate frame walls (The two middle axles could be those presented in Masciocch et al., and the front and rear can be the taught structure of Masciocch et al. and Olson in combination.).
With regards to claim 7, the combination of Masciocch et al. in view of Olson teaches the inline skate frame of claim 6, wherein the slotted cutout (Olson, 40A and 40D) in the first and last of the axle locating features is provided at an angle relative to a vertical orientation.
With regards to 8, the combination of Masciocch et al. in view of Olson teaches the inline skate frame of claim 1, wherein the slotted cutout is an obround cutout or an obround slot (Olson, Figure 7).
With regards to claim 9, the combination of Masciocch et al. in view of Olson teaches an adjustable inline skate system comprising: an inline skate frame of claim 1; at least one offset axle (modified axle of Masciocch et al., which would require the round cam like protrusion to be reshaped to be oblong like the slot insert used to align the axle in Olson) for mating with the at least one axle locating feature, the at least one offset axle comprising: an obround protrusion at a first end for mating with the slotted cutout; a substantially cylindrical protrusion at a second end opposite the first end for mating with a substantially cylindrical through-hole opposite the slotted cutout; and a shaft extending between the substantially cylindrical protrusion and the obround protrusion.
With regards to claim 10, the combination of Masciocch et al. in view of Olson teaches the adjustable inline skate system of claim 9, wherein the shaft is offset relative to a natural axis of the offset axle extending from a center of the obround protrusion to a center of the substantially cylindrical protrusion (Masciocch et al., Figure 2).
With regards to claim 11, the combination of Masciocch et al. in view of Olson teaches the adjustable inline skate system of claim 10 further comprising a plurality of interchangeable offset axles, each offset axle having a different offset relative to its corresponding natural axis, such that the at least one axle for mating with the at least one axle locating feature is selected from the plurality of offset axles. Masciocch et al. highlights the desire for more than two options for axle height in Figure 6, and in using a more definitive system for alignment of the axle as taught by Olson this would necessarily require the option of additional axles to provide the additional variability for the purposes of rider preference and performance needs. Therefore, it would have been obvious at the effective filing date of the instant application to have further combined the teachings of Olson in with the invention of Masciooch et al. to produce multiple axles of varying offsets in order to persist with the variability of the initial Masciooch et al. design.
With regards to claim 12, the combination of Masciocch et al. in view of Olson teaches the adjustable inline skate system of claim 10, wherein the obround protrusion is symmetric such that the at least one offset axle can be mounted in two distinct oppositely oriented configurations.
With regards to claim 13, the combination of Masciocch et al. in view of Olson teaches the adjustable inline skate system of claim 10, wherein a first of the two distinct oppositely oriented configurations is a raised configuration wherein a wheel mounted on the offset axle is raised within the frame when the offset axle is mated with the at least one axle locating feature, and wherein a second of the two distinct oppositely oriented configurations is a lowered configuration wherein a wheel mounted on the offset axle is lowered within the frame when the offset axle is mated with the at least one axle locating feature.
With regards to claim 16, the combination of Masciocch et al. in view of Olson teaches the adjustable inline skate system of claim 9 wherein the at least one offset axle is four offset axles for mating with corresponding axle locating features, and wherein each of the plurality of axle locating features comprises a slotted cutout in one of the first and second inline skate frame wall and a corresponding substantially cylindrical through-hole opposite the channel.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masciocch et al. (CA 2,213,602) in view of Olson (US 4,909,523) as applied to claim 13 above, and further in view of Gierveld (US 5,388,846).
With regards to claim 14, the combination of Masciocch et al. in view of Olson teaches the adjustable inline skate system of claim 13, however the combination does not teach, but Gierveld teaches further comprising a first wheel (6) having a first radial size for mounting on the offset axle and a second wheel (1) having a second radial size larger than the first size for mounting on the offset axle interchangeably with the first wheel, wherein the first wheel is mounted on the offset axle in the raised configuration and the second wheel is mounted on the offset axle in the lowered configuration. The combination of Masciocch et al., Olson, and Gierveld teach the usage of different size wheels to effectuate different effects on the alignment of the skate relative to a horizontal riding surface based on user preference, the usage of axles that allow the adjustment of wheels upwards or downwards and forwards and backwards relative to the perpendicular and longitudinal axes of the inline skate frame, respectively, this combination of features as taught by the combination allows for a user to mount different size wheels in the manner in which applicant has claimed. At the time of the effective filing date of the instant application it would have been obvious to make use of the different size wheels and adjustable axles to allow a user to arrange their inline skate wheels in a preferred manner based on their desired skating style.
With regards to claim 15, , the combination of Masciocch et al. in view of Olson, and further in view of Gierveld teaches the adjustable inline skate system of claim 14 wherein the at least one offset axle is a plurality of offset axles and wherein the first wheel is one of a first plurality of wheels and the second wheel is one of a second plurality of wheels, and wherein the plurality of offset axles are mounted in either the raised configuration with corresponding wheels of the first plurality of wheels or in the lowered configuration with corresponding wheels of the second plurality of wheels. As explained in the rejection of claim 14 above, the combination provides 4 wheels with adjustable offset axles as well as the usage of different size wheels, from there it is user preference that would dictate which wheels would be placed in different positions based on user preference.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable Masciocch et al. (CA 2,213,602) in view of Olson (US 4,909,523) as applied to claim 9 above, and further in view of Landers (US 5,253,884).
With regards to claim 17, the combination of Masciocch et al. in view of Olson teaches the adjustable inline skate system of claim 9 wherein at least one of the axle locating features comprises a slotted cutout in one of the first and second inline skate frame wall (covered in the rejection of claim 1) and a corresponding substantially cylindrical through-hole opposite the channel (covered in the rejection of claim 2), while the remaining axle locating features comprise substantially cylindrical through-hole on both the first and second inline skate frame walls, and wherein the at least one offset axle mates with the corresponding at least one axle locating feature, however, the combination of Masciocch et al. (CA 2,213,602) in view of Olson (US 4,909,523) does not teach, however, Landers teaches wherein the system further comprises at least one collinear axle (13 and 15) for mating with the remaining axle locating features. It would have been obvious to one having ordinary skill in the art at the effective filing date of the instant application to intermix conventional axles with offset axles, as taught by Landers, in order to allow the inline skate to be altered in to different skating modes with the usage of less components necessitating adjustment.
With regards to claim 18, the combination of Masciocch et al. in view of Olson and further in view of Landers teaches the adjustable inline skate system of claim 17 wherein the at least one of the axle locating features is a first (Olson, 40B) and last (Olson 40C) of the axle locating features.
Note: Examiner notes that the claim language is not so specific as to categorize “first” and “last” relative to what? It may be better to approach claiming the axles relationally, as in the foremost axle and rearmost axle relative to the longitudinal length of the skate frame.
Conclusion
Any inquiry concerning this communication or earlier communications from the Supervisory Patent Examiner should be directed to JOHN R. OLSZEWSKI whose telephone number is (571)272-2706. The Supervisory Patent Examiner can normally be reached Monday to Thursday 5:30am - 4:00pm.
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JOHN R. OLSZEWSKI
Supervisory Patent Examiner
Art Unit 3617
/JOHN OLSZEWSKI/Supervisory Patent Examiner, Art Unit 3617
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