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 .
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application Numbers (17/314,725, 18/502,074, 18/316,655, 18/651,588), fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a), first paragraph for one or more claims of this application.
In regard to Claim 1 – Over-center mechanism is mentioned or described in Zero places in the relevant specifications.
In regards to Claim 3-12 – Over-center mechanism components required for the function of the claimed over-center mechanism are described in Zero places in the relevant specifications.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12059758 in view of Shimajiri (US 6655563 – hereafter referred to as Shimajiri).
US Patent 12089758 teaches all the limitations of the parent claim including:
A MAIN MEMBER, A TOP AND BOTTOM MEMBER, THAT PIVOTALLY MOVE BETWEEN THE OPEN AND CLOSED POSITION, AND A RACK AND PINION SYSTEM SHOWN IN Figure 8 (parts 122, 124 and 128 that are disposed in a central track on the main member.)
US Patent 12089758 does not teach an over center mechanism.
Shimajiri – in a similar disclosure within the foldable cupholder technical area – does teach the missing over center concept, including: an over center mechanism (Urge Open – Column 6, Line 53 to Column 7, Line 5 and Urge Close – Column 7, Lines 22-41 and Drawings 1-8d where the structures are taught that enable the mechanism.) (Motivation: to improve the operational characteristics of the cupholder assembly – Column 3, Lines 4-12.)
It would have been obvious to one having ordinary skill in the art at the time the application was filed to modify the opening and closing mechanism of 12089758 (Rack and Pinion Mechanism), providing the over-centering structure taught by Shimajiri, motivated by the benefit of improving the operational characteristics of the cupholder assembly – Column 3, Lines 4-12. Moreover, the combination of Prior Art Elements according to known methods to yield predicable results is rationale A of the rationales that supports a conclusion of obviousness issued by the Supreme Court in KSR v. Teleflex. See MPEP 2141(III).
In regards to Claim 2, 12089758 already teaches a channel on the main member that is clearly taught by 12089758 -Figure 8.
Claim Objections
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.
Regarding Claim 9, the metes and bounds of the claim limitation “stadium shaped” with respect to planar dowels cannot be determined by the examiner because it is unclear what is meant by the limitation “stadium shaped.” Since this configuration seems to be a key component to the over-centering mechanism, the shape-as described – is not further limiting, and that shape that describes the interaction of both components (see Paragraph 0026 and parts 150 and 152 with critical structural characteristic (flex modulus that results in a flexible structure without permeant deformation) interact with the mounting shape 136, 138 and 139 that have a specific structural characteristic (stiffer or more rigid). The Examiner is open to further defining the characteristics within the scope of the disclosure in order to fully disclose the structure and method of operation with respect to the potentially unique capabilities developed.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Shimajiri (US 6655563 – hereafter referred to as Shimajiri) in further view of Tong (US 9241554 – hereafter referred to as Tong). The Examiner’s Annotated Diagram A for Shimajiri follows:
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Examiner's Annotated Diagram A
In regard to Claim 1, Shimajiri teaches: a cupholder assembly (Shimajiri – Cupholder Assembly – 50), comprising:
a main member (Base Member – 2) having opposed first (Diagram A, Item A) and second end Diagram B, Item B) portions (See Annotated Diagram A, Figure 5 – where base member has 2 ends.).
a bottom member (Receiving Portion – 35 and Column 5, Line 40-55) pivotably attached to the first end portion (A) of the main member (2), the bottom member (35) having a container receiver (Diagram A, Item C) to receive a beverage container (Figure 1 shows a container in the container receiver that is formed by the opened assembly – 50);
a top member (Holding Member – 4) pivotably attached to the second end portion (Annotated Diagram A, Item B) of the main member (2), the top member (4) having an opening (Inner Side – 43) to receive the beverage container (See Figure 1 of Diagram A), wherein the bottom (35) and top members (4) are pivotable between an open position (Figure 1) in which the bottom (35) and top members (4) are generally perpendicular to the main member (See Figure 1 where this limitation is met) allowing the bottom (35) and top members (4) to receive the beverage container (In Figure 1), and a closed position (Figure 2) in which the bottom (35) and top members (4) are generally parallel to the main member (4) (SEE MODIFICATION BELOW FOR SHAPE MODIFICATION.); and
an over-centering mechanism (Inversion Spring – 5) that urges the bottom (35) and top members (4) toward the open position (Figure 1, Diagram A) when the bottom (35) and top members (4) are between the open position and an over-center position (Column 7, Lines 34-41), and that urges the bottom (35) and top members (4) toward the closed position (Figure 2, Diagram A) when the bottom (35) and top members (4) are between the closed position (Figure 2, Diagram A) and the over-center position (Column 7, Lines 22-32) (NOTE: The language – “the inversion spring – 5 shifts its urging direction to the closed position…” – Column 7, Lines 32 and “…the inversion spring shifts its urging direction so that the lid member – 3 is automatically rotated to the open position…” – Column 7, Lines 37-40 implies an inflection point of the force change that the instant application identifies as the “over-center position.”).
Shimajiri does not teach the “generally parallel” portion of the claimed folding mechanism as presented in the instant application.
Tong – in a similar disclosure on collapsible cup holder structures – does teach the missing limitations. See Examiner’s Annotated Diagram B as follows:
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Examiner's Annotated Diagram B
Tong teaches: a generally parallel surfaces for the assembly when in the closed position (See Figure 8 of Annotated Diagram B where this is true – The Bottom surface of the top member and the Top Member and the Top Surface of the Bottom Member meet this requirement.) (MOTIVATION: improve collapsible configuration that conceals internal mechanisms within the framework of the assembly – Column 1, Lines 36-40.)
It would have been obvious to one having ordinary skill in the art at the time the application was filed to modify the collapsible structure of Shimajiri, providing the generally parallel collapsed structure taught by Tong, motivated by the benefit of improving the collapsed configuration that conceals internal mechanisms within the framework of the assembly – Column 1, Lines 36-40. Moreover, simple substitution of a known element for another (Configuration changes with respect to geometric relationships incorporating the same structure.) with a predictable result (Securely collapsing to protect mechanisms.) is rationale (B) of the rationales supporting a conclusion of obviousness issued by the Supreme Court in KSR v. Teleflex. See MPEP 2141(III).
In regard to Claim 2, Shimajiri – as modified previously – teaches a cupholder assembly (Shimajiri – Cupholder Assembly – 50): wherein the main member (2) includes opposed front (Annotated Diagram A, Item D) and back walls (Back Surface Portion – 24 and Column 4, Liens 27-45) and opposed first (22 Left from Diagram A, Figure 5) and second internal side walls (22 Right from Diagram A, Figure 5) disposed between the front (D) and back walls (24) and generally perpendicular to the front and back walls (See Figure 5, Annotated Diagram A where the structure is generally rectangular), and wherein the first (22 Left) and second internal side walls (22 Right) define a channel (Between 22 Left and Right) therebetween.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art fails to teach the structures presented in Claim 3 – especially:
The combination of the slidable member disposed in the channel of the main member that is pinned to the top and bottom member that results in an eccentric motion to the slidable member that translates to a vertical motion of a pair of biasing members that are constrained by indentations in the main member that result in an over-centering mechanism for the cupholder assembly that changes between and urge open and urge close configuration while actuating either the top or bottom member.
For illustration purposes, Examiner’s Allowability Analysis Diagram AA shows the closest prior art that does not anticipate the over-centering mechanism as claimed in the instant application.
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Examiner's Allowability Analysis AA
Furthermore, it would not have been obvious to a skilled artisan to have modified the prior art in order to arrive at the claimed invention without resorting to impermissible hindsight.
Dependent Claims 4-12 are allowable as they depend from the allowed claim.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lerner (US 5342009) discloses Figures 1-4 and structure features required to synchronize movement of bottom and top members with respect to the main member as well as general features relevant to the scope and structure of the claimed invention.
Miklas (US 20130075562) discloses Figures 1-7 and force open mechanism to simplify the operation of a collapsible cup holder.
Gehring et al. (US 6427960) discloses Figures 1-4 with similar structural features with a centerline structure that has a ramp surface – 63 and Slots – 60/62 that provide resistance that indicate the midpoint between opening and closing as well as general features relevant to the scope and structure of the claimed invention.
Leopold et al. (US 20030062458) discloses Figures 1-5 and an over center mechanism for a container hold-down device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John M. Hoppmann whose telephone number is (571) 272-7344. The examiner can normally be reached from Monday - Thursday, 7:30 - 5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Jenness can be reached on (571) 270-5055. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/JOHN MARTIN HOPPMANN/Examiner, Art Unit 3733
/ANDREW T KIRSCH/Primary Examiner, Art Unit 3733
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