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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 59-83 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12161195. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent teaches in short, a shoe comprising a body portion with a sole, a molded rivet extending…polymer (see claim 1 of US 12161195) and wherein the head…frustoconical shape (see claims 2-18 of US 12161195). It is noted that applicant should compare claims 59-83 of current application to claims 1-18 of the patent 12161195.
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 78 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 78, “barb relief cuts parallel to the pull tab length”, unclear which part of the rivet has this structure? Applicant can see claim 79.
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) 59-83 are rejected under 35 U.S.C. 103 as being unpatentable over Fu (US.2022125156) in view of Grojean (US. 11959505).
Fu discloses a molded (e.g. this limitation is product by process and given little or no patentable weight in an apparatus claim, see MPEP 2113-2114 and it is noted that the rivet of Franey can be formed by molding since the rivet is a conductive polymeric material as claimed by applicant) conductive rivet for grounding a shoe (e.g. intended use, the rivet of Franey is capable of being used in a shoe, see MPEP 2113-2114) comprising a head (e.g. H, see figure below) having a top and bottom portion (e.g. TP and BP in figure below), wherein the bottom portion of the head is configured to be positioned on a top portion of a sole of the shoe (e.g. intended use, the rivet of Franey is capable of being used in the shoe, see MPEP 2113-2114), a barb (e.g. barb, figure below), wherein the barb is configured to be positioned on the bottom surface of the shoe (e.g. again intended use, the rivet of Franey is capable of being used in the shoe, see MPEP 2113-2114), a barrel (e.g. B, see figure below) connected to and having a narrower section than the head and the barb (see figures), the barrel extending between the head and the bard and having a barrel length (e.g. see figures) and the conductive rivet comprises a conductive polymer (e.g. 0039-0040 and 0103). Regarding claim 60: Wherein the head has a substantially flat, disc-like shape (e.g. see figures 3f). Regarding claim 61: Wherein said head has a geometric shape around the centerline of the rivet and the shape is selected from the group consisting of a circle, an oval, a rectangle, a triangle, a square, a pentagon, a hexagon, a heptagon, an octagon, a nonagon, a decagon and an n-gon (e.g. see figure). Regarding claim 62: Wherein the barrel is configured to entirely traverse the sole of the shoe after insertion into the sole (e.g. again intended use, the rivet of Franey is capable of being used in the shoe, see MPEP 2113-2114). Regarding claim 63: Wherein vertical edges of the barrel are substantially straight, concave or convex (see figure below). Regarding claim 64: Wherein the cross section of the barrel has a geometric shape around the centerline of the rivet and the shape is selected from the group consisting of a circle and an oval (e.g. see figures). Regarding claim 70: The conductive polymer having filler (e.g. paragraph 0040) is compression molded (e.g. this limitation is product by process and given little or no patentable weight in an apparatus claim, see MPEP 2113-2114 and it is noted that the rivet of Franey can be formed by molding since the rivet is a conductive polymeric material as claimed by applicant). Regarding claim 71: Wherein the conductive polymer has a volume resistivity. Regarding claim 72: The conductive polymer is carbon-filled silicone (e.g. paragraph 0039-0040). Regarding claim 73: The conductive polymer is silicone, hence having a hardness. Regarding claim 74: The head has a diameter. The pull tab has a pull tab length. Regarding claim 77: Wherein the rivet is configured to be manually threaded through the sole of the shoe (e.g. again intended use the rivet is capable of been threaded). Regarding claim 82-83: see rejection of claims above.
PNG
media_image1.png
416
464
media_image1.png
Greyscale
Fu discloses the invention as claimed above but fails to disclose a pull tab removably connected to a bottom of the barb and which the pull tab has a length greater than the barrel length. Grojean discloses a rivet (e.g. 1) having a head (e.g. 2), a barb (e.g. barb having 22 and 24), a barrel (e.g. barrel having 3 and 104) having a barrel length (e.g. length of section with 3 and 104) and the pull tab (e.g. 6) removably connected to a bottom portion of the barb increases in diameter in a direction from the pull tab to the barrel (e.g. taper or conical or frustoconical 24 of barb), the pull tab has a length greater than the barrel length (e.g. length of 6 relative to the barrel length) and the pull tab has a pointy tip (e.g. 14). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the rivet of Fu to have a pull tab attached to the barb with increasing diameter as taught by Grojean with reasonable expectation of success so one can provide insertion in a member via pull tab and the barb and disconnect of the pull tab (e.g. see description of 14 and 6 in Grojean).
PNG
media_image2.png
372
444
media_image2.png
Greyscale
The combination of Fu and Grojean teach that the pull tab is configured for removal after insertion (e.g. see removal shown in Grojean), the pull tab has a substantially conical shape with a pointy tip (e.g. 14 in Grojean), the pull tab cross section decreases in diameter in a direction travelling down the pull tab and away from the barb (e.g. see structure of Grojean), the pull tab having a pull tab length (e.g. see figures of Grojean), barb relief cuts parallel to the pull tab length (e.g. see section having corrugations 38, figure 5b-5e), the rivet further comprises a plurality of barb relief cuts extending from at least a portion of the barb (e.g. see 24 and 22), the rivet comprises a cut indicator on the barb (e.g. see tapered surfaces 22 or 24 of the barb in Grojean) and the cut indicator is generally perpendicular to the pull tab length (e.g. 22 or 24 is perpendicular to the pull tab length, see Grojean).
Regarding claim 70: Fu discloses the claimed invention except the conductive filler 1-30% by volume. Discovering an optimum range of a result effective variable involves only routine skill in the art. In re Kulling, 895 F.2d 1147, 14 USPQ 2d 1056. Without the showing of some unexpected result. Since applicant has not shown some unexpected result the inclusion of this limitation is considered to be a matter of choice in design. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have filler in the amount as stated in claim 70 with reasonable expectation of success as a matter of design choice. Furthermore, different amount of filler will result in predictable result of low or higher conductivity.
Regarding claim 71: Ref A discloses the claimed invention except the resistivity ranging form 101-1012 ohm cm3. Discovering an optimum range of a result effective variable involves only routine skill in the art. In re Kulling, 895 F.2d 1147, 14 USPQ 2d 1056. Without the showing of some unexpected result. Since applicant has not shown some unexpected result the inclusion of this limitation is considered to be a matter of choice in design. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the range of resistivity as stated in claim 71 with reasonable expectation of success as a matter of design choice. Furthermore, different amount of filler will result in predictable result of low or higher conductivity.
Regarding claim 73: Fu discloses the claimed invention except the hardness of 10-70 shore A. Discovering an optimum range of a result effective variable involves only routine skill in the art. In re Kulling, 895 F.2d 1147, 14 USPQ 2d 1056. Without the showing of some unexpected result. Since applicant has not shown some unexpected result the inclusion of this limitation is considered to be a matter of choice in design. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have hardness as stated in claim 73 with reasonable expectation of success as a matter of design choice. Providing materials that is too hard result in brittle element and that is too soft results in poor insertion property.
Regarding claim 74: Fu discloses the claimed invention except the diameter of about 9 to 15 mm. Discovering an optimum range of a result effective variable involves only routine skill in the art. In re Kulling, 895 F.2d 1147, 14 USPQ 2d 1056. Without the showing of some unexpected result. Since applicant has not shown some unexpected result the inclusion of this limitation is considered to be a matter of choice in design. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the range as stated in claim 74 with reasonable expectation of success as a matter of design choice.
Regarding claim 75: Fu discloses the claimed invention except the length of about 3 to 17 mm. Discovering an optimum range of a result effective variable involves only routine skill in the art. In re Kulling, 895 F.2d 1147, 14 USPQ 2d 1056. Without the showing of some unexpected result. Since applicant has not shown some unexpected result the inclusion of this limitation is considered to be a matter of choice in design. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the range as stated in claim 75 with reasonable expectation of success as a matter of design choice.
Regarding claim 76: Fu and Grojean disclose the claimed invention except the pull tab length of about 30 to 90mm. Discovering an optimum range of a result effective variable involves only routine skill in the art. In re Kulling, 895 F.2d 1147, 14 USPQ 2d 1056. Without the showing of some unexpected result. Since applicant has not shown some unexpected result the inclusion of this limitation is considered to be a matter of choice in design. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the range as stated in claim 76 with reasonable expectation of success as a matter of design choice.
Conclusion
To expedite prosecution: It is noted that examiner is using same structure for elements for claims 78-81. If applicant provides claim 59 with structure of all claims 78-81, the claim maybe allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL A PATEL whose telephone number is (571)272-7060. The examiner can normally be reached 7:00 am to 4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Mills can be reached at 571-272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VISHAL A PATEL/Primary Examiner, Art Unit 3675
Prosecution Insights