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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Species 2, Figures 2A-2F, in the reply filed on 8/3/2026 is acknowledged. Claims 14 and 15 are withdrawn by Applicant, Claim 19 is withdrawn by Examiner as being drawn to non-elected subject matter and Claims 1-13, 16-18 and 20 are pending.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10 recites: “when the shimming device is inverted, at least one pair of the second plurality of pairs of coupled protrusions engages the first surface of the plurality of surfaces when at the first lower surface engaging portion engages the second surface of the plurality of surfaces. The phrase “when at the” appears to include a typo. 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.
Claims 5-9 and 12 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.
Claim 5 recites the limitation "a longitudinal axis of the shimming device" in the last line. Claim 5 depends from Claim 4 which already recites "a longitudinal axis of the shimming device.” Therefore it is unclear whether the axis of Claim 5 is the same or different than that of Claim 4. Appropriate correction is required.
Claim 12 recites the limitation "the second plurality of lower surface engaging portion” in lines 1-2. There is no antecedent basis for this limitation. Applicant should amend the claim to something like: "the second
The remaining dependent claims are rejected by virtue of their dependencies.
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.
Claim(s) 1-4, 10-13 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 4,830,320 to Bellows (Bellows).
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Regarding Claim 1: Bellows discloses a shimming device for engaging a plurality of surfaces, wherein the shimming device comprises: a first side (See Annotated Fig. A) comprising: a first plurality of pairs of coupled protrusions (See Annotated Fig. A); and a first lower surface engaging portion (See Annotated Fig. A), wherein the first lower surface engaging portion (See Annotated Fig. A) is disposed between at least one pair of coupled protrusions (See Annotated Fig. A) of the first plurality of pairs of coupled protrusions; and a second side (See Annotated Fig. A) opposite the first side comprising: a second plurality of pairs of coupled protrusions (See Annotated Fig. A); and a second lower surface engaging portion (See Annotated Fig. A), wherein the second lower surface engaging portion is disposed between at least one pair of coupled protrusions (See Annotated Fig. A) of the second plurality of pairs of coupled protrusions, and wherein at least one pair of the first plurality of pairs of coupled protrusions (See Annotated Fig. A) engages a first surface (See Annotated Fig. A) of the plurality of surfaces when the second lower surface engaging portion engages a second surface (See Annotated Fig. A) of the plurality of surfaces.
Regarding Claim 2: Bellows discloses a shimming device of claim 1, wherein each pair of coupled protrusions of the first plurality of pairs of coupled protrusions is aligned with (See Annotated Fig. A) a respective pair of coupled protrusions of the second plurality of pairs of coupled protrusions. Note that the claim does not recite the details of what “aligned with” means and therefore, Line A, from Figure 6 and shown in Annotated Fig. A, can be broadly interpreted to mean aligned with.
Regarding Claim 3: Bellows discloses a shimming device of claim 1, wherein the first lower surface engaging portion (See Annotated Fig. A) is disposed between all of the first plurality of pairs of coupled protrusions (See Annotated Fig. A), and wherein the second lower surface engaging portion (See Annotated Fig. A) is disposed between all of the second plurality of pairs of coupled protrusions (See Annotated Fig. A). Note that “a first plurality of pairs of coupled protrusions” is being interpreted as a smaller group of multiple pairs taken from a greater whole of the pairs shown in Bellows. That smaller group is interpreted as a first plurality of pairs of coupled protrusions. Moreover, the respective lower surface engaging portions are disposed between all of those pairs of coupled portions from that plurality.
Regarding Claim 4: Bellows discloses a shimming device of claim 1, wherein the first plurality of pairs of coupled protrusions comprises a first plurality of pairs of coupled steps (See Annotated Fig. A), and wherein each pair of coupled steps of the first plurality of pairs of coupled steps is a different height (See Annotated Fig. A) from a longitudinal axis (See Annotated Fig. A) of the shimming device.
Regarding Claim 10: Bellows discloses a shimming device of claim 1, wherein, when the shimming device is inverted (See Figure 10 of Bellows), at least one pair of the second plurality of pairs (See Annotated Fig. A) of coupled protrusions engages the first surface of the plurality of surfaces when at the first lower surface engaging portion (See Annotated Fig. A) engages the second surface of the plurality of surfaces. Note that Figure 10 shows the device inverted with an object pressing down on the shimming device.
Regarding Claim 11: Bellows discloses a shimming device of claim 1, wherein one or more surfaces of the at least one pair of the first plurality of pairs of coupled protrusions that engages the first surface of the plurality of surfaces is substantially flat (See Annotated Fig. A – See close-up figure (Their Figure 6)).
Regarding Claim 12: Bellows discloses a 1 shimming device of claim 1, wherein one or more surfaces of the second plurality of lower surface engaging portion that engages the second surface of the plurality of surfaces is substantially flat. (See Annotated Fig. A – See close-up figure (Their Figure 6))
Regarding Claim 13: Bellows discloses a shimming device of claim 1, wherein . . . the first lower surface engaging portion . . . comprises a single surface. (See Annotated Fig. A)
Regarding Claim 16: Bellows discloses a shimming device of claim 1, wherein the shimming device further comprises an indicator (56) of . . . the second side. Note that element 56 is only on the second side and therefore indicates the second side.
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.
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) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Bellows.
Regarding method Claim 20: In view of the structure disclosed and taught by Bellows, the method of operating the device would have been obvious and implicitly taught, since it is the normal and logical manner in which the device could be used. If a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be obvious to a person of ordinary skill and/or implicitly taught by the prior art reference at a time before the effective date of the claimed invention. When the prior art device is arguably the same as the claimed invention it can be assumed the device will implicitly perform the claimed process.
Allowable Subject Matter
Claims 6-9, 17 and 18 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.
Claim 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Reasons for Allowable Subject Matter
None of the cited prior art, considered alone or in combination, discloses or teaches the first lower surface engaging portion is disposed between the pairs of steps of the first plurality of steps and wherein the lower surface engaging portion is a same eight across a length of the first lower surface from a longitudinal axis of the shimming device. Additionally, Bellows teaches away from a stiff and incompressible material of stainless steel alloy.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In addition to the references used in this rejection and those cited in the PTO-892, the following references are very relevant to the claimed invention: GB 2404388 and EP 2078800.
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ERET C. MCNICHOLS
Primary Examiner
Art Unit 3632
/ERET C MCNICHOLS/Primary Examiner, Art Unit 3632
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