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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Examiner notes that applicant claims “ratchet mechanism”, which indicates the use of 112f. Examiner notes, however, that applicant does not disclose any structures later which create the ratchet mechanism. Claims 5 and 13 conflict on what defines the “ratchet mechanism”. Therefore, examiner assumes that “ratchet mechanism” is merely the recitation of intended function of the fingers and locking nut has on the stem. Please see 112b rejection below.
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 1-6, 8-22 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.
Regarding independent claims, the record is not clear as to the scope of “ratchet mechanism”. In claim 1, it is indicated as a 112f term, intending that it is a mechanism separate from the base and the locking nut. In claim 16, applicant asserts that the nut has the functionality of the “ratchet mechanism” of claim 1 (such as “adjust a height”, “stem is axially immovable”). In claim 21, the “fingers and the external ribs of the stem forming a ratchet mechanism”, which is not what is attributing the function of the ratchet mechanism in claim 16. Therefore, the scope of “ratchet mechanism” is unclear.
Examiner assumes that applicant intends to claim that when the nut is in the unlocked position, the stem is axially movable, and that when the nut is in the locked position, the stem is axially immovable. Should applicant agree, Examiner notes that “ratchet mechanism” is an unnecessary term in the claim language. Examiner suggests removing all recitations to the “ratchet mechanism”, and to attribute the effects as described above to the nut’s position. Examiner contends that there is no distinct “ratchet mechanism” separate from the base and the nut.
Regarding claims 1 and 21, applicant claims “rotatable relative to the base to lockout the ratchet mechanism”. Since the “ratchet mechanism” is unclear, as discussed above, the term “lockout the ratchet mechanism” is further unclear. If applicant intends to claim that the locking nut is configured to engage the fingers, or to move into the locking position, this would be clearer. However, there may be a different intended definition of “lockout”, and therefore, the claims are indefinite.
Regarding claim 1, applicant claims “a portion of the base forming the receptacle”. Examiner assumes that this portion is identical in scope to the “cylindrical portion 24”. If this is proper, then there is no difference in scope between claims 1 and 16, and are rejected under double patenting, as discussed below.
Regarding claim 10, applicant compares the “force required compress the bump stop” against the “force required to move the external threads”. Examiner notes that the “force required to compress the bump stop” seems to be a material requirement; applicant discloses the bump stop is made of “a rubber”. Examiner also notes that the “force required to move the external threads” of the stem is changeable on whether or not the locking nut is engaged or not. The record is not clear as to what structural limitation applicant intends to claim by this claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10 and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 10, applicant does not claim a structural limitation, but only compares the “force required” to move the nut. This does not have any particular structural limitation. The record is not sure how this further limits the device of claim 5.
Regarding claim 13, applicant claims “ratchet mechanism is formed by the base and the stem”. Examiner notes that therefore the “ratchet mechanism” is not a distinct part. Claim 1 already requires both the base and the stem, and the intended function. Therefore, claim 13 does not further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Objections
Claim 16 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 21 objected to under 37 CFR 1.75 as being a substantial duplicate of claims 6 and 20. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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) 1, 5-6, 9-16, 19-20, 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over 5035528 Thau in view of 5237724 Lee.
Examiner notes that claim 21 is identical in scope to claims 6 and 20, and therefore, by properly rejecting claim 21, this rejection simultaneously rejects claims 1, 5, 6, 16, 19, 20, and 21. Examiner also points out the indefiniteness of the term “ratchet mechanism”, as well as the term “lockout” above.
Regarding claims 1, 5, 6, 16, 19, 20, 21, Thau discloses an adjustable device (as shown below) comprising:
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a base 30 mountable to a body panel (panel 20, mountable with mechanism 32) adjacent to an opening for a closure panel (where ever the opening 38 is located, applicant does not positively claim the combination with closure panel or cabinet), the base including a plurality of fingers 28a/28b that define a receptacle 28, each finger 28a/28b having internal ribs 44;
a stem 22 insertable into the receptacle 28 in the base 30, the stem 22 having external ribs 52, wherein as the stem 22 is inserted into the receptacle 28, the fingers 28a/28b are configured to deflect radially outward and inward each time that one of the external ribs of the stem moves past one of the internal ribs of the fingers (with a gap in figure 3, abutting in figure 4), the fingers 28a/28b and the external ribs 50 of the stem forming a ratchet mechanism that allows the stem to move into the receptacle to adjust a height of the adjustable closure bumper while inhibiting movement of the stem out of the receptacle (adjusting how far into the receptacle the stem is placed, the locking not in figure 4 prevents axial movement of the stem 22, see also the 112b regarding “ratchet mechanism” above);
a locking nut 54 configured to fit over the fingers (as shown in figures 2 and 4) and rotatable relative to the base (possible to rotate the nut 54) to lockout the ratchet mechanism (please see 112b above, examiner assumes “to lock” or “to engage the fingers and the stem”) and thereby set the linear position of the stem, the locking nut 54 including a plurality of locking protrusions that project radially inward (as annotated in figure 3), wherein the locking protrusions and the fingers 28a/28b are radially spaced apart by a gap when the locking nut is in its unlocked position (as shown in figure 3, they have a gap), and the gap is eliminated when the locking nut is in its locked position (as shown in figure 4).
Thau does not disclose that the stem includes a bump stop on the stem to engage a closure panel.
Lee discloses an adjustable closure bumper having a base 11 mountable to a body panel (at the hinge), a stem 14 having ribs (internal threads) which allow the axial position to be “selectedly adjustable” (abstract), and a bump stop 16 at the end of the stem 14, and a locking nut 15.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the similar adjustable device of Thau in the similar purpose of Lee by including a bump stop 16 of Lee, in order for the device of Thau to be utilized in another well known and similar manner. Both Thau and Lee provide axial adjustment attachment of a stem to a body in old and well known manners.
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. MPEP 2114. Examiner notes the phrases in italics above, and throughout the action, are considered intended use. Examiner contends that the structure capable of performing the intended use is met in the prior art, and is described how the structure disclosed performs the claimed functions in the parentheses; therefore, all italicized language is considered and shown in the prior art. Further, examiner notes that the disclosed structure is capable of performing the intended use claimed by applicant.
Regarding claim 22, Thau as modified discloses the device of claim 21, wherein each finger 28a/28b includes a rotational stop 60 disposed on an outer radial surface thereof (radial outer surface of the cylindrical portion), the rotational stops 60 contacting the locking protrusions (as annotated above, the rotational stops 60 contacting the same continuous internal surface of the locking nut 54) to stop rotation of the locking nut when the locking nut is rotated from its unlocked position to its locked position (prevents the locking nut from being disengaged. Applicant does not require rotation of the locking nut with any structure claimed above).
Regarding claim 9, Thau as modified discloses the adjustable closure bumper of claim 5 wherein each finger 28a/b includes a retention flange 60, the retention flanges on the fingers engaging an axial end surface 66 of the locking nut and thereby retain the locking nut on the base when the locking nut is slid onto the base past the retention flanges (ridge 60 engaging groove 66 prevents the locking nut from being removed, column 3 line 15).
Regarding claim 10, please see 112b and 112d rejections above. As best understood, Thau as modified discloses the adjustable closure bumper of claim 5 wherein, when the locking nut is in its locked position (as shown in Thau figures 2 and 4), the force required to compress the bump stop is less than the force required to move the external threads of the stem past the internal threads of the fingers (the record is not clear what structure is being claimed; examiner assumes this is a material claim of the bump stop, Lee discloses rubber, column 1 line 53).
Regarding claim 11, Thau as modified discloses the adjustable closure bumper of claim 1 wherein the base 30 includes a cylindrical portion 28 defining a ledge 60, the locking nut 54 fits over the cylindrical portion 28 of the base, and as the locking nut 54 is slid onto the cylindrical portion 28, the ledge 60 of the cylindrical portion 28 engages an axial end surface 66 of the locking nut and thereby prevents the locking nut from being slid further onto the cylindrical portion (in the same manner as the retention flanges in claim 9, please see above).
Regarding claim 12, Thau as modified discloses the adjustable closure bumper of claim 11 wherein the base further includes an oblong portion 29 from which the cylindrical portion 28 projects, the oblong portion 29 having a pair of counterbores 32 configured to receive fasteners for securing the base to the body panel (fastener 36).
Regarding claim 13, Thau as modified discloses the adjustable closure bumper of claim 1 wherein the ratcheting ratchet mechanism is formed by the base and the stem (please see 112f and 112b above, this does not further limit the device of claim 1).
Regarding claim 14, Thau as modified discloses the adjustable closure bumper of claim 12 wherein the base and the stem are made from a plastic (base has flexible portions column 1 line 64, and Thau suggests plastic in column 3 line 18), the locking nut 54 is made from a thermoplastic (Thau discloses “deformable comprising plastics” column 3 line 18), and the bump stop (of Lee) is made from a rubber (Lee discloses rubber bumper, column 1 line 53).
Note that 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 engineering design choice. See MPEP 2144.07.
Regarding claim 15, Thau as modified discloses the adjustable closure bumper of claim 1 wherein the locking nut 54 has an annular body (figures 1 and 2) with an inner radial surface 56, and outer radial surface (in figures 1 and 2), and a plurality of knurls (figures 1 and 2) projecting from the outer radial surface for rotating the locking nut by hand (intended function of the existing knurls of Thau figures 1 and 2).
Claim(s) 1-4, 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over 2020/0040932 Zhou in view of 5735511 Stocker.
Regarding claims 1 and 16, claims 1 and 16 are assumed to have identical scope, as claim 1 requires “portion of the base forming the receptacle” and claim 16 requires “cylindrical portion having a receptacle”. Claim 16 omits the “ratchet mechanism” from claim 1 (please see 112 rejection above), but includes the functional language regarding the locking nut. Therefore, claims 1 and 16 are considered together, as they are identical scope, and all similar claims are considered together.
Regarding claims 1 and 16, Zhou discloses an adjustable closure bumper comprising:
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a base 2 mountable to a body panel adjacent to an opening for a closure panel (capable of being inserted), the base including a cylindrical portion (as annotated) having a receptacle (annotated), the cylindrical portion of the base defining a first groove (best seen in figure 5);
a stem 4 insertable into the receptacle in the base (figures 3 and 5);
a locking nut 1 that fits over the cylindrical portion (figures 3 and 5) of the base and is rotatable relative to the cylindrical portion between an unlocked position (figure 4) and a locked position (figure 5), wherein the stem 4 is axially moveable within the receptacle to adjust a height of the adjustable closure bumper when the locking nut is in its unlocked position (moves into and out of the hole 10), and the stem is axially immovable within the receptacle when the locking nut is in its locked position (figure 5, [0018] “limiting blocks to squeeze or not squeeze the moving blocks”) such that adjusting the locking nut from its unlocked position to its locked position sets the height of the adjustable closure bumper (engages the stem at the location whenever the locking nut is turned), the locking nut 1 including a positioning protrusion that projects radially inward, the positioning protrusion 11 engaging the first groove in the base 2 when the locking nut is in one of its unlocked position and its locked position.
Zhou does not disclose that the threaded stem 4 has a bump top attached to one end.
Stocker discloses a similar device having a stem 22 in a base 15 with locking nut 12, the stem having a bump stop 10 attached to one end of the stem so that it can be “means for cushioning”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize a bump stop of Stocker so that the similar device of Zhou to be utilized in another well-known and similar manner of Stocker. Both Zhou and Stocker provide axial adjustment attachment of a stem to a body in old and well known manners.
Regarding claims 2 and 17, Zhou as modified discloses the adjustable closure bumper of claims 1 and 16, wherein the base defines a second groove (as annotated) spaced apart from the first groove around a perimeter of the base, the positioning protrusion disengaging one of the first and second grooves and engaging the other one of the first and second grooves when the locking nut is rotated between its unlocked position and its locked position (as shown between figures 4 and 5).
Regarding claims 3 and 18, Zhou as modified discloses the adjustable closure bumper of claims 2 and 17, wherein the base 2 includes a retention protrusion 21 disposed between the first and second grooves about the perimeter of the base 2, and the locking nut 1 defines a slot 12 adjacent to the positioning protrusion (as shown in figures 4, 6), the slot enabling the positioning protrusion to deflect radially outward and move past the retention protrusion when the locking nut is rotated between its unlocked position and its locked position (figure 4 allows the positioning protrusions to disconnect from the stem, while in figure 6 the locking protrusions must abut the stem).
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Regarding claim 4, Zhou as modified discloses the adjustable closure bumper of claim 3 wherein a leading edge of the retention protrusion (angled in figure 6) has a lesser slope angle than a trailing edge of the retention protrusion (perpendicular in figure 6).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
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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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/EMILY M MORGAN/Primary Examiner, Art Unit 3677
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