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 .
Information Disclosure Statement
All of the I.D.S.’s have been considered. One of the I.D.S.’s have NPL documents that have been lined through. It is unclear how the objection/rejection/allowance of claims with different combination of limitations is relevant to the instant application. Without any reasoning provided by Applicant, these NPL documents will not be considered.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
Reference characters “68”, “68A,B”, “69A,B”, and “69” have all been used to designate the coil springs in the Figures and the specification.
Reference characters “72” (specification and Fig. 35) and “72A,B” (Fig. 21) have all been used to designate the leg extensions in the Figures and the specification.
Reference characters “74” and “74A,B” have all been used to designate the coil axes in the Figures and the specification.
It is noted that the single number and the same single number with a letter (i.e. 72 and 72A) are not the same labels. The entire specification and all of the drawings need to be reviewed and all other occurrences corrected.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
In Figure 21, items 72A and 72B.
It is noted that if 72A and B are to be replaced with 72, adding 72A and 72B to the specification is not needed.
In light of all of the label issues, it is requested that the drawings be reviewed so that they incorporate all of the labels from the specification
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Before the “Field of Invention” section of the specification, a paragraph needs to be added explaining the instant application’s relationship with parent case 16/365,879 which is now U.S. Patent 12, 226,922.
Claims 2-4, 9, 10, 15, and 16 use the respective phrases “generally coaxial”, “generally parallel”, and “substantially parallel” that do not appear to be supported. For example, page 17 of the specification supports the phrases “coaxial” and “parallel”. Since the phrases are in the original claims, the specification needs to be amended to incorporate the terms.
Appropriate correction is required.
Claim Objections
Claims 1, 9, and 10 are objected to because of the following informalities:
In claim 1 lines 8-9, the phrase “channel bias” should be replaced with “channel to bias”.
In claims 9 and 10, the phrase “the coil spring” should be replaced with “the at least one coil spring”.
Appropriate correction is required.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-13 are rejected on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-13 of patent 12,226,922. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is clear that all elements of claims 1-13 of the instant invention 19/014,637 are found in claims 1-13 of patent 12,226,922. The differences between claims 1-13 of 19/014,637 and claims 1-13 of patent 12,226,922 lies in the fact that patent 12,226,922 claims include many more features and is thus much more specific (for example, claims 1 and 8 require a base member and a sliding pin). Thus claims 1-13 of 19/014,637 are in effect a “species” of the “generic” invention of claims 1-13 of patent 12,226,922. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-13 of 19/014,637 is anticipated by claims 1-13 of patent 12,226,922, it is not patentably distinct from claims 1-13.
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 1-20 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.
With regards to claim 1 line 3, the phrase “at a pivot axis” is unclear. What structures define the pivot axis? As written, the location of the pivotal coupling just has to be at this pivot axis which does not appear to be supported. The word “at” does not require engagement. For example, a person stops “at” a stop sign but never engages the stop sign. The phrase should be replaced with “to define a pivot axis”. Claim 8 has the same issue.
With regards to claim 1, the phrase “at least two mating parts defining an interior channel” is unclear. The channel is represented as 87 in base 42. It is unclear how the channel is defined by at least two mating parts when there is only support for one part 42 defining the channel 87. What is the second part that defines channel 87? The claim needs to disclose that one of the mating parts defines the channel. Claim 8 has the same issue.
With regards to claims 5, 6, and 11, the phrase “a first pivot axis” in each claim is unclear. Claims 1 and 8 disclose the pivoting head is coupled at “a pivot axis”. It is unclear if the first pivot axis of claims 5, 6, and 11 represents the same or a different axis than the pivot axis of claims 1 and 8. As written, there are two different pivot axes which does not appear to be supported.
Claims 5, 6, and 11 recite the limitation "the first position" on line 2. There is insufficient antecedent basis for this limitation in the claims.
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.
Claims 1-3, 8, 9, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bartram et al. (3,748,730). With regards to claims 14 and 15, please see Figure below for Examiner added reference labels.
With regards to claims 1-3, Bartram et al. disclose the same invention including a handle (10) having a main body (12), a pivoting head (20) being pivotally coupled with the main body at a pivot axis (34, Fig. 3), the pivoting head having at least two mating parts (30, 52) defining an interior channel (56), a pivot spring (36) having a first coil spring (60) and a second coil spring (60) and a main bar portion offset from the coil springs and couples the coil springs together in a spaced relationship (48), the main bar portion is at least partially disposed in the interior channel (48, 56, Fig. 3) to bias the pivoting head into a rest position (Fig. 2), the first coil spring defines a first coil axis (Fig. 3), the second coil spring defines a second coil axis (Fig. 3), the first coil axis is generally coaxial with the second coil axis (Fig. 3), and the pivot axis is generally parallel to first coil axis (Figs 2 and 3).
With regards to claims 8 and 9, Bartram et al. disclose the same invention including a handle (10) having a main body (12), a pivoting head (20) being pivotally coupled with the main body at a pivot axis (34, Fig. 3), the pivoting head having at least two mating parts (30, 52) defining an interior channel (56), a pivot spring (36) having at least one coil spring (60) coupled to a main bar portion (48), the main bar portion is at least partially disposed in the interior channel (48, 56, Fig. 3), the main bar portion defines a main bar axis (48, Fig. 3) that is parallel to and offset from the pivot axis (48, 34, Figs. 2 and 3), the at least one coil spring defines a coil axis (60, Fig. 3), the pivot axis is generally parallel to the coil axis (Figs 2 and 3),
With regards to claims 14 and 15, Bartram et al. disclose the same invention including a handle (10) having a main body (12), a first arm (fa) having a first proximal portion rigidly coupled to the main body at a first location (p1) and a first distal end (d1) that is pivotally coupled (34) with a first end (e1) of a pivoting head (20), a second arm (sa) having a second proximal portion rigidly coupled to the main body at a second location (p2) and a second distal end (d2) that is pivotally coupled (34) with a second end (e2) of a pivoting head (20), a pivot spring (36) having a first coil spring (60) and a second coil spring (60) and a main bar portion that couples the coil springs together in a spaced relationship (48), the pivot spring (36) is coupled with the pivoting head (52) and interacts with the pivoting head to bias the pivoting head into a first position relative to the arms (Figs. 2 and 3), the first coil spring defines a first coil axis (Fig. 3), the second coil spring defines a second coil axis (Fig. 3), the first coil axis is generally coaxial with the second coil axis (Fig. 3), the pivoting head is rotatable about a first pivot axis (34), and the first pivot axis is generally parallel to first and second coil axes (Figs 2 and 3).
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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.
Claims 4, 10, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Bartram et al. (3,748,730).
With regards to claims 4, 10, and 16, Bartram et al. disclose the invention including the first and second coil axes are each substantially parallel to and offset from the pivot axis a distance (60, 34, Figs 2 and 3).
However, with regards to claims 4, 10, and 16, Bartram et al. fail to disclose the distance range.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have made this distance any reasonable value including a value within the claimed range, since 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. Therefore, it would have been an obvious matter of design choice to modify the device of Bartram et al. to obtain the invention as specified in claims 4, 10, and 16. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense.
Claims 5, 6, 11, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bartram et al. (3,748,730).
With regards to claims 5, 6, 11, 17, and 18, Bartram et al. disclose the invention including the pivoting head is rotatable about a pivot axis from the first position through an angle of rotation to an angle (Fig. 2) and when rotated the pivot springs applies a biasing torque about the first pivot axis (Fig. 2).
However, with regards to claims 5, 6, 11, 17, and 18, Bartram et al. fail to disclose the angle ranges and the torque ranges.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have made this angle and torque of any reasonable value including a value within the claimed ranges, since 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. Therefore, it would have been an obvious matter of design choice to modify the device of Bartram et al. to obtain the invention as specified in claims 5, 6, 11, 17, and 18. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense.
Claims 7, 12, 13, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bartram et al. (3,748,730).
With regards to claims 13 and 20, Bartram et al. disclose the invention including the pivoting head having a face (20, Fig. 1).
However, with regards to claims 7, 12, 13, 19, and 20, Bartram et al. fail to spring material and the face material.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the spring out of any reasonable and known material with the claimed yield stress and to have made the face out of any reasonable and known material including one that is elastomeric to some extent, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Therefore, it would have been an obvious matter of design choice to modify the device of Bartram et al. to obtain the invention as specified in claims 7, 12, 13, 19, and 20. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached on Monday-Friday: 7:00 am-3:00 pm.
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23 July 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724
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