DETAILED ACTION1
REJECTIONS UNDER 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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.
Claims 1-6 are rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 lacks one of the recognized transitional phrases such as ‘comprising’ or ‘consisting of’ between the preamble and the main claim body. The lack of such a transitional phrase creates potential confusion as to where the preamble ends and whether the limitations recited thereafter constitute the entirety of the invention or if other non-enumerated elements may be present. For purposes of examination, the claim phrase wherein the removal tool includes: has been interpreted as reciting ‘the removal tool comprising.’
Additionally, claim 1 denotes numerous features as Presta <element>. This is acceptable for the Presta valve, which is a known term of art and refers to a specific type of tire valve (also known as a french valve or a sclaverand valve). It is also arguable acceptable for the Presta core, which is an element of the Presta valve. But the claim then refers to elements of the removal tool as being a Presta detachable head, a Presta cutout, and even a Presta flexible positioning means. The canons of claim construction require that each word in a claim further narrow the claim. Thus, a Presta cutout, must be distinct in some manner from a generic ‘cutout.’ Yet the term Presta is not a term of art in defining the various tool structures, nor does the specification define what the term Presta adds to these features. It is therefore unclear how the term Presta is further limiting the various features. As such, all of these terms are indefinite. For purposes of examination, the term Presta has simply been removed from all elements after the preamble. Claims 2-6 contain the same issues.
CLAIM INTERPRETATION UNDER 35 USC 112F
Claim 1 recites a Presta flexible positioning means. As noted in the 112b rejection, the term presta is being ignored for purposes of claim interpretation. The flexible positioning means is interpreted as a means-plus-function limitation.
The MPEP lays out a three-part test for determining if 112(f) should be invoked. See MPEP 2181. (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. While the 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.
In this case, the claim explicitly uses the nonce term means and defines the mean by its function of positioning. It does contain indicate it is flexible, but this is a property of the means, not a specific structure. Likewise, the intended use later recites intended use of the means abut[ing] against the fixing portion. Looking to the specification, the corresponding structures are defined in paragraph [0027] of the originally filed specification. It defines the positioning means as being element (30) and contains a clamp (31), a connector (32) mounted on an outer wall, and a retainer (33). These structures are deemed to constitute the flexible positioning means.
ALLOWABLE SUBJECT MATTER
Claims 1-6 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.
The prior art, specifically admitted prior art figures 14-15 of the specification show a removal tool (80) having a body (81) with a detachable head (82). This head has a cutout (821) with two actuation planes formed on [either] side. See Specification Fig. 14. Figure 15 of the specification further shows a through orifice (822) extending all the way to the cutout. The prior art does not, however, teach a flexible positioning means as recited by independent claim 1. Nor does the prior art suggest such a structure. As such, claim 1 is allowable as are its dependent claims 2-6.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.