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 Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant has not disclosed a device that is understood to have a sandwiching device which “is fixed” according to claim 1. As noted in the 112(b) discussion infra-- the disclosure of the present application specifically indicates the sandwiching member may be movable: “and the sandwiching member 21 to which the blade rubber 100 is fixed moves with respect to the cutting unit 30.” The nature of and meaning of the clause “is fixed” is therefore in question and is unclear. It is not clear that applicant has possession of the invention as embodied in claim 1, since the input of the wiper into a fixed (but movable) and apparently flush and blocked by mounting structures 15 is not disclosed in a manner demonstrating possession.
Additionally, applicant recites in claim 4 “ a process of fixing the blade rubber to the …device” but fails in the disclosure as a whole to indicate what process steps take place so the rubber is fixed in the sandwiching member. No steps are disclosed. No start position, no movement is discussed. Applicant apparently wishes for the result of wiper in a sandwiched position, but in no way discloses the operation which achieves that result. The claim is without written description.
Claim Rejections - 35 USC § 112(b)
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 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.
The claims are replete with indefiniteness.
Claim 1 is drawn to a regeneration device, but specifies details of the putative workpiece (“wiper blade comprises…”) It is manifestly unclear how these oblique references to the wiper blade itself structurally defines the scope of the tool being claimed (a ‘regeneration device’).
Further claim 1 require “The regeneration device cuts off a part…” which is indefinite. See MPEP 2173.05(p) II, in part: “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b)…. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).”). Here, it cannot be ascertained whether the preamble is wrong, or if the positive recitation of the step is wrong, and the inclusion of both method steps and device in a single claim is indefinite. Appropriate correction is required.
Similarly claim 1 requires “the sandwiching member sandwiches…” which is again a positive method step in an apparatus claim, and is clearly therefore indefinite. Claims to devices must claim what the devices are—and while functional claiming is permissible, the function must be clearly stating and defining the structure required by the device.
Claim 1 requires “a sandwiching member of sandwiching the lip portion….” This does not make sense. Did this intend to recite “for” rather than of? The phrasing is not grammatical and therefore is not understood.
Claim 1 requires the sandwiching member to be “fixed” but this is not understood. First—if the member is fixed, how does the wiped become mounted in the slot—as shown the ends of the slot are both closed by the mounting structures 15. Second, the disclosure of the present application specifically indicates the sandwiching member may be movable: “and the sandwiching member 21 to which the blade rubber 100 is fixed moves with respect to the cutting unit 30.” The nature of and meaning of the clause “is fixed” is therefore in question and is unclear.
Claim 2 requires “a whole region” which is indefinite. What are the defining characteristics of “a region” how is “a …region” distinguished from the surrounding regions? Is this an arbitrary or meaningful area? The claim and disclosure are ambiguous as to the regions boundary, therefore the scope is unclear.
Claim 3 is indefinite for the statement “assuming…length B, …length B is not more than .200mm.” This is strange phrasing—who is assuming ? Claims define the dimensions—no assumptions are necessary. Either the length B is a defined amount or not—the assumption is not necessary and confuses the issue of what the claim intends to define.
Claim 4 requires “a process of fixing…” and a “process of cutting off…” Both are indefinite as recited. The term process requires multiple steps, which by the nature of the claim being presented are wholly absent. It is believed this means “step.” However, the step itself is absent from the specification—so the step of fixing is additionally unknowable from the disclosure.
Claim 5 is indefinite for incorporation from claim 1—because claim 1 is indefinite as set forth above, and also because the clause “a process of fixing the blade to the regeneration device according to claim 1…” is imprecise—the preamble of claim 1 is to the regeneration device, but the claim as a whole incorporates (or apparently attempts to incorporate details about the blade rubber) so it cannot be determined which phrases, features, etc. from claim 1 are attempting to be incorporated herein.
Claim 5 “a process of obtaining…by cutting off…” is unnecessarily confusing. First—is there a process being claimed, or just a single step. Second, is the process just “cutting” and if so, the claim contains surplusage in the “obtaining ….by cutting” phrasing. If the only thing that is necessary to meet the claim is cutting, then the ‘obtaining’ step or limitation appears to be surplus and should be removed.
Regarding claim 6, The imprecise and improper incorporation of wiper components into a device with the “regeneration device” preamble (similar to claim 1 rejection above) is cause to reject claim 6. It is not clear what aspects of the rubber workpiece itself defines the regeneration tool.
Similar to claim 1 above, “that cuts off the tip” in claim 6 is a positive method step in a device claim and is therefore indefinite. Likewise “regeneration device causes the blade portion to enter….” And “and cuts off the tip end of the rubber” is method in a device claim as well.
Claim 6 is also indefinite for reciting “the blade rubber constitutes a contact part contacting with a wiping target object” because the claim is to the cutting/ regenerating device, which is working on a wiper blade (not a wiper blade itself, which is a different device). The claim does not make sense when the preamble is to a regeneration device and the body makes reference to elements which cannot be a part of a regeneration device. The blade when being cut is not disclosed as being in contact with a wiping target. Nothing about this clause makes sense.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-6 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Schekowski (US 2,973,577).
Regarding claim 1, Schekowski discloses A blade-rubber regeneration device (See title, figure 1, inter alia),
The clause “the blade rubber being provided on a wiper blade used for a wiper device of a windshield of a vehicle, wherein the wiper blade comprises the blade rubber and a blade stay that supports the blade rubber,the blade rubber comprises a base part, which is an attaching part of attaching the blade rubber to the blade stay, a lip portion, and a neck portion swingably connecting the lip portion to the base part, at least a part of a tip end of the lip portion constitutes a contact part contacting with the windshield,” is a statement of intended use, and does not define any structural aspect of the claimed regeneration device. Nonetheless; as seen in Schekowski figure 5, the wiper blade of Schekowski discloses all of those elements plainly.
Schekowski discloses the regeneration device comprises a blade portion (46).
The clause “for cutting off the tip end of the lip portion in a longitudinal direction of the blade rubber, the regeneration device cuts off a part of the tip end of the tip portion by causing the blade portion to enter the tip portion from a side portion of the tip end of the lip portion at an end part A, which is one of end parts in the longitudinal direction of the blade rubber, and to relatively move toward an end part B, which is the other end part in the longitudinal direction,” is again, a statement of intended use, met by a device capable of doing the function of the clause.
Here, see the Schekowski blade 46 in its disclosed path along the whole of the device from one side to another, and cutting the wiper blade thereby (Column 2 line 60+)—doing exactly the same thing as applicant alleges to be their invention.
Schekowski discloses the regeneration device comprises a sandwiching member of sandwiching the lip portion, (26, 28 figure 5 shows the wiper blade lip being sandwiched in a sandwich portion).
As noted above the clause “the sandwiching member sandwiches at least a part of the lip portion from both side portions of the lip portion on a sectional view in a direction orthogonal to the longitudinal direction of the blade rubber,” is indefinite, but is best understood to mean intended to / capable of sandwiching. As seen in figure 5 of Schekowski the sandwiching act itself is shown—because Schekowski is the same as the present application in all essential aspects.
Schekowski further discloses the sandwiching member (26, 28) is disposed at a position capable of sandwiching at least a part, into which the blade portion of the lip portion enters, and the position of the sandwiching member with respect to the blade rubber is fixed (when assembled the sandwich flats are fixed around the wiper and held in place by e.g. bolts shown locking the position of the device).
Regarding claim 2, Schekowski further discloses wherein the sandwiching member is a member that sandwiches a whole region in a longitudinal direction of the lip portion from the both side portions (see the several figures, including cross section in figure 5, inter alia).
Regarding claim 3, Schekowski does not disclose controlling or selecting a length from a sandwiched part of the lip portion by the sandwiching member to the tip end of the blade is not more than 0.200 mm. But the claim is to the tool itself, not a combination with a wiper blade mounted in the block. As such, the distance to an unclaimed wiper or a wiper positioned by the intended use of a user does not impact the structure of the device being claimed. Having a sandwiching part ipso facto results in anticipation of the claim as presented, since the positioning of the wiper itself is outside the scope of what the device being claimed is. IN other words—the claim does not require an ordered combination of wiper and cutter—it just requires the sandwiching part to be capable of being positioned .02mm away from a wiper; not even a wiper being prepared for cutting, or otherwise mounted--- the ability to hold a wiper near to the sandwiching part results in the anticipation of the claim, because of nature of what is actually being claimed—a sandwiching part of a regenerating device that is capable of having a blade placed near to it (within 0.02mm) with no other constraint---.See In re Schreiber 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) where a oil funnel was held capable of funneling popcorn even though there was no disclosure in the reference to popcorn, and the use as an oil funnel was wholly different to the alleged invention of popcorn dispensing.
Regarding claim 4, Schekowski further discloses a blade-rubber regeneration method, the blade rubber being provided in a wiper blade used for a wiper device of a windshield in a vehicle,the method comprising:a process of fixing the blade rubber to the regeneration device according to claim 1; anda process of cutting off a part of a tip end of a lip portion the blade rubber by the regeneration device.
Regarding claim 5, Schekowski further discloses a manufacturing method of a regenerated blade rubber for regenerating a blade rubber provided in a wiper blade used for a wiper device of a windshield in a vehicle, the method comprising: a process of fixing the blade rubber to the regeneration device according to claim 1 (See claim 1’s device supra, treated by Schekowski); and a process of obtaining the regenerated blade rubber by cutting off a part of a tip end of a lip portion of the blade rubber by the regeneration device (Column 2 line 60, inter alia).
Regarding claim 6, See the treatment of claim 1 above, with Schekowski , who discloses blade-rubber regeneration device, the blade rubber being for a wiper blade (See title) wherein at least a part of a tip end of the blade rubber constitutes a contact part contacting with (Capable of contacting—See 112(a) and 112(b) supra) a wiping target object,
the regeneration device comprises a blade portion (46) that cuts off the tip end of the blade rubber in a longitudinal direction of the blade rubber, the regeneration device causes the blade portion to enter the blade rubber from a side portion of the tip end of the blade rubber at an end part A, which is one of end parts in a longitudinal direction of the blade rubber, and to relatively move toward an end part B, (This is a positive method step, rending the claim indefinite, but treated properly as an intended use, which would be permissible, shows that Schekowski discloses these actions in particular—see sliding of 46 in the fixed 26, 28 sandwiching part) which is the other end part in the longitudinal direction, and cuts off the tip end of the blade rubber (Col 2 line 60 + inter alia), and the regeneration device further comprises: a sandwiching member (26, 28 figure 5) which sandwiches at least a part of the blade rubber from both side portions of the blade rubber on a sectional view of the blade rubber in a direction orthogonal to the longitudinal direction of the blade rubber.(See figure 5)
Claim(s) 1-2, 4-6 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being clearly anticipated by Fabian (US 3,886,657).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3 is is/are rejected under 35 U.S.C. 103 as being unpatentable over Schekowski as applied to claims 1-2, 4-6 above and as below official notice as to the size of wiper height.
Regarding claim 3, Schekowski does not disclose controlling or selecting a length from a sandwiched part of the lip portion by the sandwiching member to the tip end of the blade is not more than 0.200 mm.
Schekowski is silent as to the amount the tip of the mounted and cut wiper is to project, because it is clear that a person of ordinary skill can select how much to trim off. Examiner takes official notice that some wiper blades are known to be under 10 mm in height or even smaller.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to permit the workpiece to be mounted to project about .01 mm, .02mm, .03mm or a larger amount, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The user has to select some amount to trim, because that is the purpose of the device of Schekowski (trimming off worn wiper tip). The result is selecting a more or less trimming amount. It has been held that a motivation to try constitutes a motivation, unless it is shown that one of ordinary skill would have been unable to make the combination. See KSR International Co. v Teleflex Inc. et al. US Supreme Court, No. 04-1350, 550 U.S. ___ (2007), which states “a person of ordinary skill has good reason to pursue the known options within his of her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” Slip op. at 17. Here, there is motivation to try both very small amounts of trim (e.g. .0001mm or so—since that would essentially resurface the wiper with no loss of appreciable size) or to go as large as the wiper itself (a few millimeters) since that would cut away more of the worn materials that had degraded. In this context there is such a limited range of options of the size of trimming, that all of them are obvious to try, and therefore are obvious and cannot be patented since the difference between the cited reference and the present application is the selection of the size of a cut which must be made to effect the art’s desired outcome, and there is clearly a limited number of available options (a few millimeters of range at most).
Claim(s) 3 is is/are rejected under 35 U.S.C. 103 as being unpatentable over Fabian (US 3,886,657) as applied to claims 1-2, 4-6 above and as below official notice as to the size of wiper height.
Fabian is silent as to the amount the tip of the mounted and cut wiper is to project, because it is clear that a person of ordinary skill can select how much to trim off. Examiner takes official notice that some wiper blades are known to be under 10 mm in height or even smaller.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to permit the workpiece to be mounted to project about .01 mm, .02mm, .03mm or a larger amount, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The user has to select some amount to trim, because that is the purpose of the device of Schekowski (trimming off worn wiper tip). The result is selecting a more or less trimming amount. It has been held that a motivation to try constitutes a motivation, unless it is shown that one of ordinary skill would have been unable to make the combination. See KSR International Co. v Teleflex Inc. et al. US Supreme Court, No. 04-1350, 550 U.S. ___ (2007), which states “a person of ordinary skill has good reason to pursue the known options within his of her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” Slip op. at 17. Here, there is motivation to try both very small amounts of trim (e.g. .0001mm or so—since that would essentially resurface the wiper with no loss of appreciable size) or to go as large as the wiper itself (a few millimeters) since that would cut away more of the worn materials that had degraded. In this context there is such a limited range of options of the size of trimming, that all of them are obvious to try, and therefore are obvious and cannot be patented since the difference between the cited reference and the present application is the selection of the size of a cut which must be made to effect the art’s desired outcome, and there is clearly a limited number of available options (a few millimeters of range at most).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724
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