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 .
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.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over (JP 2015-13343), in view of (JP 2005-250924).
The current application is related to PCT/JP2023/004350 and the current claims are substantially similar in scope to the corresponding PCT claims. By adopting and incorporating herein by reference the explanations of the closest prior art as set forth in the Search Report, 1 the examiner meets the burdens of 35 U.S.C. 132(a)2 [e.g., insomuch as the reasons for rejection and references are stated and the Search Report provides such information as may be useful in judging the propriety of continuing the prosecution of this application] and 37 CFR 1.104(c)(2)3 [e.g., insomuch as the explanations of the Search Report are sufficient to make the pertinence of each reference apparent]. See the copy of the Search Report filed in this current application on the attached PTO Form 892.
Further regarding Claim 2, it has been held that the mere duplication of known parts has no patentable significance unless a new and unexpected result is produced.4 In the instant case, the claimed multiplicity of similar parts do not appear to change the function of the claimed device, and the device of the prior art having the number of similar parts, as claimed, would not change the function in any way. Therefore, since the only difference between the structure of the prior art and that of the claimed device is a recitation of duplicate parts, and since the claimed device having the number of parts would not function differently than the device of the prior art, the claimed device is not patentably distinct from the device of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to T. S. FIX whose telephone number is (571)272-8535. The examiner can normally be reached M-Th 10a-3p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at 5712707778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T. SCOTT FIX/Primary Examiner, Art Unit 3618
1 See MPEP 1893.03(e)(II) which permits the examiner to adopt any portion or all of any report on patentability of the IPEA or ISA that would be relevant to U.S. practice, e.g., explanations of prior art, etc.
235 U.S.C.132(a): Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be re-examined. No amendment shall introduce new matter into the disclosure of the invention. [emphasis added]
3 37 CFR 1.104(c)(2): In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. [emphasis added]
4 MPEP 2144.04(VI)(B): In reHarza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a “web” which lies in the joint, and a plurality of “ribs” projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
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