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
The following is a Final Office Action on the merits.
Response to Amendment
Acknowledgement is made to the amendment received January 28, 2026, amending Claims 18-29 and 31.
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.
This application includes one or more claim limitations that use the word “means”, “step”, or a generic placeholder but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “collapsible apparatus” in Claims 18-29 and 31.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 23 and 25, and therefore dependent Claim 24, 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 pre-AIA the applicant regards as the invention.
Claim 23 recites the limitation "a scraper edge, the scraper edge forming an acute angle with the longitudinal axis of the handle when the snow removal paddle is extended substantially transverse to the longitudinal axis". The Applicant relies upon an interpretation for “a scraper edge” that is inconsistent with the broadest reasonable interpretation. He does NOT specifically provide a unique definition in the specification. Rather than identifying a sharpened working scraping edge, the Applicant confusingly identifies the “scraping edge” as a projecting body that is collectively formed by multiple edges and surfaces. Below is the Applicant’s device interpreted using the common interpretation of the edges being the intersection of two adjacent surfaces.
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As shown, using common interpretation, the scraping edge is always oriented transverse to the longitudinal axis of the handle regardless of the rotation angle. See attached figures below.
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Additionally confusing, the angle A1 in Figure 3 used to teach the acute angle of the scraping edge is not aligned with any specific edge or feature of the projecting body. For the above reasons the claim limitation “the scraper edge forming an acute angle with the longitudinal axis of the handle when the snow removal paddle is extended substantially transverse to the longitudinal axis” is indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention since the common interpretation of the scraper edge is not acute, but, always perpendicular to the longitudinal axis. Therefore, the scope of the claim is unclear. For the purpose of examination, the Examiner will identify a similar edge oriented in a similar direction in the prior art.
Claim 25 recites the limitation "the edge of the front surface … is opposite the scraper edge and is relatively softer than the scraper edge”. In Claim 23, “an edge of a front surface of the snow removal paddle is inclined to define a scraper edge.” It is unclear how the edge exists on an unlabeled front surface and concurrently defines a scraper edge, and, is opposite to the scraper edge and formed of a different material that is softer than the scraper edge. Review of the Applicant’s specification and figures does not present any features that meet both the Claim 23 and 25 claim limitations. Therefore, the scope of the claim is unclear since both claim limitations do not exist on any edge on the invention.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 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.
Claims 18-20 and 23-31 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen US 2017/0113660 (hereafter Cohen) in view of O’Shea US D824128 S (hereafter O’Shea), Examiner’s 35 U.S.C. 112(b) interpretation, and design choice.
Regarding Amended Claim 18, Cohen teaches:
18. (Currently Amended) A collapsible apparatus (device for removing snow with telescopic handle extension) comprising:
an elongated collapsible handle (telescopic handle 102) comprising a plurality of telescoping sections (first elongated portion 114 and second elongated portion 116), the elongated collapsible handle having a longitudinal axis (axis of cylindrical handle 102, Figure 2); and
a rotatable coupling (male/female threaded engagement - couples through rotational relative motion – comprising threaded male connection 188 and threaded female connection 176, Paragraph [0017] with modification to add pivot joint to threaded part of device as taught by O’Shea – see discussion below) affixed to a proximal extremity of the elongated collapsible handle (shown in Figure 6), wherein the rotatable coupling is rotatable transversely to the longitudinal axis (as a result of O’Shea combination, rotatable coupling rotates about pivot joint axis as shown in Modified Figure 2 below);
characterized in that the collapsible apparatus is a snow paddle (removal head 110) and further comprises a rigid, substantially planar snow removal paddle (assembly comprising first plate 128, head 130, and second plate 132) having a substantially planar rear surface (first plate 128), the rotatable coupling (specifically the threaded female connection 176 of previously cited “rotatable coupling”) affixed to the substantially planar rear surface (first plate 128) of the snow removal paddle (Figure 3); and
wherein the rigid, substantially planar snow removal paddle has a flexible, laterally extending and resilient plastic cap (head 130 – polyethylene foam is a foamed plastic) disposed along an edge (along outer edges of first plate 128 and second plate 132) of the snow removal paddle, the flexible, laterally extending, and resilient plastic cap (head 130 – polyethylene foam is a foamed plastic) being relatively softer than the snow removal paddle (Paragraphs [0029] and [0030]) and mounted to surround the edge in order to prevent the edge from scratching surfaces of a vehicle in use (Figures 2 and 4).
Cohen disclose a rectangular snow removal paddle as shown in Figure 4 below that is connected to a handle via a threaded connection. The reference O’Shea discloses a rectangular snow removal paddle as shown in Figure 6 below, with a shape similar to Cohen. Like Cohen, O’Shea discloses a collapsible handle that is connected to the back side of the snow removal paddle as shown in side by side figures below. O’Shea discloses the addition of a pivot joint in the handle that allows the snow removal paddle to rotate about a pivot axis transverse to the longitudinal axis as shown in the disclosed figures. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the Cohen device to include a pivot joint as taught by O’Shea with the motivation to allow the snow removal paddle to rotate transversely relative to the handle allowing the user to change the contact angle with the working surface during operation to make the operation more comfortable or effective. For clarity, the Examiner has provided an illustration of the modification to the Cohen device in view of O’Shea showing the cited “rotatable coupling” that includes both the new O’Shea pivot joint and the existing Cohen threaded connection structure that connects the handle 102 to the removal head 110.
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Regarding Amended Claim 19, Cohen teaches:
19. (Currently Amended) The collapsible apparatus of claim 18 wherein the rotatable coupling (male/female threaded engagement - couples through rotational relative motion – comprising threaded male connection 188 and threaded female connection 176, Paragraph [0017] with modification to add pivot joint to threaded part of device as taught by O’Shea – see discussion above) affixed to the rear surface (first plate 128) of the snow removal paddle (assembly comprising first plate 128, head 130, and second plate 132) enables the snow removal paddle to be collapsed with the rear surface approximately against the handle (telescopic handle 102) for storage (shown in Figure 6) and to be extended at an angle away from the handle substantially transverse to the longitudinal axis, for use (Figures 2 and 4).
Regarding Amended Claim 20, Cohen teaches:
20. (Currently Amended) The collapsible apparatus of claim 18 and further comprising a hand grip tube (first elongated portion 114 serves as a hand grip tube, Figure 5) disposed on the elongated collapsible handle intermediate the proximal and distal extremities thereof.
Regarding Amended Claim 23, Cohen teaches:
23. (Currently Amended) The collapsible apparatus of claim 18 wherein an edge (labeled in attached Figure 4 below) of a front surface (labeled in attached Figure 4 below) of the snow removal paddle (assembly comprising first plate 128, head 130, and second plate 132) is inclined to define a scraper edge (labeled in attached Figure 4 below), the scraper edge forming an acute angle with the longitudinal axis of the handle (telescopic handle 102)(as shown in attached figures below, both scraper edges form the same perpendicular angle with the longitudinal axis of the handle, therefore the prior art satisfies this limitation as interpreted. Note: in combination with the O’Shea reference as shown in the Modified Figure 2, the scraper edge is pivotable relative to the longitudinal axis of the handle in a manner consistent with the Applicant’s device) when the snow removal paddle is extended substantially transverse to the longitudinal axis (shown in attached Figure 4 below).
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Regarding Amended Claim 24, Cohen teaches:
24. (Currently Amended) The collapsible apparatus of claim 23 wherein the rotatable coupling (male/female threaded engagement - couples through rotational relative motion – comprising threaded male connection 188 and threaded female connection 176, Paragraph [0017] with modification to add pivot joint to threaded part of device as taught by O’Shea) is affixed to the rear surface (rear surface of first plate 128) of the snow removal paddle (assembly comprising first plate 128, head 130, and second plate 132) at a location offset from center toward the scraper edge (labeled in attached Figure 4 above).
Cohen discloses a threaded aperture 178 that appears to be in the middle of the outline of the removal head 110 based on review of the figures, however, the specification does not define the location. It would have been obvious that, if located in the center, the device will have a similar performance when rotated 180 degrees. It would have been obvious that if not centered, the device would be better suited for larger snow depth on one side over the other. That being said, it would have been an obvious matter of design choice to one having ordinary skill before the effective filing date of the claimed invention to locate the threaded aperture offset from the middle of the removal head with the motivation to allow the user to selectively rotate the device into an orientation that would be better suited for a larger snow depth.
Regarding Amended Claim 25, Cohen teaches:
25. (Currently Amended) The collapsible apparatus of claim 23 wherein the edge of the front surface of the snow removal paddle is opposite the scraper edge and is relatively softer than the scraper edge (see discussion below).
Cohen discloses the device of Claim 23 with the edge of the front surface identified in Figure 4 above. As previously discussed in the 35 U.S.C. 112(b), it is not possible for either the Applicant’s device or the Cohen device to include “an edge of a front surface of the snow removal paddle” that concurrently “is inclined to define a scraper edge” as presented in Claim 23 and “is opposite the scraper edge”.
Regarding Amended Claim 26, Cohen teaches:
26. (Currently Amended) The collapsible apparatus of claim 18 wherein the thickness of the snow removal paddle (assembly comprising first plate 128, head 130, and second plate 132) is approximately 0.0032m (1/8th of an inch).
Cohen discloses substantially all the limitations of the claim(s) except for providing dimensions for the thickness of the assembly comprising the first plate 128, head 130, and second plate 132). The claim does not specify the location of the thickness. Therefore, using the broadest reasonable interpretation, the Examiner will elect to measure the thickness at the thinnest point nearest the scraper edge. That being said, it would have been obvious matter of design choice to one having ordinary skill before the effective filing date of the claimed invention to size the thickness at the edge approximately 0.0032m or 1/8” which would be a reasonable thickness dimension for a snow removal device, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding Amended Claim 27, Cohen teaches:
27. (Currently Amended) The collapsible apparatus of claim 18 wherein the cap (head 130 – polyethylene foam is a foamed plastic) is removably mounted (shown in Figure 3) on the edge (along outer edges of first plate 128 and second plate 132) of the snow removal paddle (assembly comprising first plate 128, head 130, and second plate 132).
Regarding Amended Claim 28, Cohen teaches:
28. (Currently Amended) The collapsible apparatus of claim 18 wherein the snow removal paddle (assembly comprising first plate 128, head 130, and second plate 132) is somewhat rectangular (shown in Figures 1 and 2).
Regarding Amended Claim 29, Cohen teaches:
29. (Currently Amended) A method of removing snow from a vehicle comprising:
removing from storage the collapsible apparatus (device for removing snow with telescopic handle extension) according to any one of claims 18-28 (see previous rejections – Examiner selects Claim 18 for clarity);
rotating the snow removal paddle of the collapsible apparatus into a transverse orientation relative to the longitudinal axis of the handle of the snow paddle (starting from a storage position shown in Figure 6, remove removal head 110 from handle 114, orient removal head into a transverse orientation relative to the longitudinal axis of the handle, rotating the removal head to engage via threads, to secure the removal head to the handle as shown in Figures 1 and 2);
using the snow removal paddle to remove snow from the vehicle by pushing and pulling motions (intended operation as discussed in the Abstract); and
replacing the collapsible apparatus in storage (Figure 6).
Regarding Claim 30, Cohen teaches:
30. (Previously presented) A method according to claim 29, further comprising using a scraper edge (scraping edge of head 130 shown in Figures 1-4) of the snow removal paddle to remove ice from a window of a vehicle (Paragraph [0014]).
Regarding Amended Claim 31, Cohen teaches:
31. (Currently Amended) A method according claim 29, further comprising: rotating the snow removal paddle approximately against the handle after using the snow removal paddle to remove snow from the vehicle (rotating the removal head 110 relative to the handle 114 to unthread the coupling) and before replacing the collapsible apparatus in storage (Figure 6).
As necessitated by amendment, Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over in view of Cohen US 2017/0113660 (hereafter Cohen) in view of O’Shea US D824128 S (hereafter O’Shea), Examiner’s 35 U.S.C. 112(b) interpretation, and design choice as previously presented in Claim 18 in further view of Miller US 2006/0076203 (hereafter Miller).
Regarding Amended Claim 21, Cohen teaches:
21. (Currently Amended) The collapsible apparatus of claim 18 wherein at least a portion of the handle (telescopic handle 102) has an oblong-shaped cross section (see discussion below).
Cohen discloses a telescopic handle 102 that appears to have a circular cross section based on his figures. The reference Miller discloses a telescoping handle for luggage. In Paragraph [0050], Miller discloses “Notably, the shape of the telescoping members 110, can be rectangular, circular, oval, or the like. The shape of the telescoping members 110, however, is not intended to limit the scope of the present invention.” Therefore, the cross sectional shape of the telescoping elements appears to be a merely a design decision to achieve a desired cosmetic appearance. It would have been an obvious matter of design choice to one having ordinary skill before the effective filing date of the claimed invention to select an oval (or claimed oblong-shaped) cross section as taught by Miller with the motivation to achieve a desired cosmetic appearance.
Regarding Amended Claim 22, Cohen teaches:
22. (Currently Amended) The collapsible apparatus of claim 18 wherein the handle (telescopic handle 102) comprises three telescoping sections (see discussion below), each having an oblong, tubular cross-section (see discussion below).
Cohen discloses a telescopic handle 102 that comprises two telescoping sections that appear to have a circular cross section based on his figures. The reference Miller discloses a telescoping handle for luggage. In Paragraph [0050], Miller discloses “Notably, the shape of the telescoping members 110, can be rectangular, circular, oval, or the like. The shape of the telescoping members 110, however, is not intended to limit the scope of the present invention.” Therefore, the cross sectional shape of the telescoping elements appears to be a merely a design decision to achieve a desired cosmetic appearance. It would have been an obvious matter of design choice to one having ordinary skill before the effective filing date of the claimed invention to select an oval (or claimed oblong-shaped) cross section as taught by Miller with the motivation to achieve a desired cosmetic appearance.
Regarding three telescoping sections, Cohen discloses two telescoping sections. It would have been obvious that additional telescoping sections allows the designer to make the handle longer by adding additional sections of roughly the same length and/or allows the handle with the same final length to be stowed in a shorter overall length by making all the sections shorter. Therefore, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to employ three telescoping sections with the motivation to reduce overall storage length or create a longer extended handle length, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Response to Arguments
Specification
The Examiner has reviewed the Applicant’s amendments and found them satisfactory. Therefore, the Examiner withdraws the previous Specification Objection.
Claim Objection
The Examiner has reviewed the Applicant’s amendments and found them satisfactory. Therefore, the Examiner withdraws the previous Claim Objection.
Rejection Under 35 U.S.C. 112(b)
The Examiner has reviewed the Applicant’s amendments and found them unsatisfactory. Therefore, the Examiner maintains the previous rejections under 35 U.S.C. 112(b). The Specification provides evidence that the Applicant did not provide a unique definition of the scraping edge. The Examiner accidentally left off a “NOT” in the previous 112(b) rejection statement. Statement “He does specifically provide a unique definition” which should have read “He does not specifically provide a unique definition” which is consistent with the specification.
The Applicant does not provide evidence of the unique definition by stating the exact wording from the specification (since it doesn’t exist). Instead, the Applicant incorrectly relies on the Examiner’s statement that was accidentally missing the “NOT” as evidence of its existence.
Rejections Under 35 U.S.C. 102(a)(1)
Applicant’s arguments with amendments, filed January 28, 2026, with respect to the 35 U.S.C. 102(a)(1) rejection(s) of independent Claims 18-20 and 27-31 under Cohen US 2017/0113660 have been fully considered and are persuasive. Therefore, the 35 U.S.C. 102(a)(1) rejections are withdrawn. As necessitated by amendment, the rejections have been modified to include reference O’Shea US D824128 S as previously presented.
Rejections Under 35 U.S.C. 103
Applicant’s arguments with amendments, filed January 28, 2026, with respect to the 35 U.S.C. 103 rejection(s) of Claims 23-26 under Cohen US 2017/0113660 and Cohen US 2017/0113660 in view of Miller US 2006/0076203 have been fully considered and are not persuasive. However, as necessitated by amendment, the rejections have been modified to include new reference O’Shea US D824128 S to address the most recent claim language.
The claim limitations, argued as being missing in the Applicant’s arguments, are taught by the combination of Cohen US 2017/0113660 and O’Shea US D824128 S as described in the current rejections.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC CARLSON whose telephone number is (571)272-9963. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN KELLER can be reached on (571) 272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC CARLSON/Primary Examiner, Art Unit 3723