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 Objections
Claim 3 is objected to because of the following informalities: Claim 3, “the corner” should read “a corner”. Appropriate correction is required.
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 1 – 20 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.
In claim 1, it is unclear if the band is meant to be part of the claimed invention or functionally recited. In line 1 the band is functionally recited “A tensioner instrument for tensioning a band”, however further the band is positively recited “the band is pinched”. For purposes of examination the band is assumed to NOT be part of the claimed invention and claim 1 will be read as “the band is configured to be pinched”.
Claim 5 is dependent upon claim 3, but includes limitation directed towards the second hinge which is introduced in claim 4. Therefore, it is unclear if claim 5 should be dependent upon claim 4 or should be amended to introduce the second hinge. For purposes of examination claim 5 is assumed to depend from claim 4.
Claim 7 recites “the opposite end”. It is unclear what this end is opposite from. For purposes of examination the opposite end is assumed to be opposite the first end and claim 7 will be read as, “the ratchet has an opposite end opposite the first end”.
Claim 10 recites “the pawl slot”, but is not dependent upon claim 7 which introduces the pawl slot. It is unclear if claim 10 should depend from 7 or introduce the pawl slot. For purposes of examination claim 10 will be read as “wherein a pawl in a pawl slot of one of the first or second arms engages… and claim 10 is assumed to depend from claim 9.
Claim 11 recites “a closed through-opening”. It is unclear how this would function because a through-opening is known to have all ends open, thus the “through” opening name. If an opening is closed at one end, then it would not be a through-opening. The opening of claims 1 and 11 is assumed to be opening ref. 50 as shown in Figs. 3 and 7 which is shown as a through-opening. Therefore, for purposes of examination the “closed through-opening” is assumed to be a through-opening or through-bore and not closed at any end.
In claim 10, it is unclear if the band is meant to be part of the claimed invention or functionally recited. In line 1 the band is functionally recited “A tensioner instrument for tensioning a band”, however further the band is positively recited “the band is pinched”. For purposes of examination the band is assumed to NOT be part of the claimed invention and claim 10 will be read as “the band is configured to be pinched”.
Claim 17 is dependent upon claim 15, but also recites “the second hinge”. It is unclear if claim 17 should be dependent upon claim 16 which introduces the second hinge or if claim 17 should be amended to introduce the second hinge. For purposes of examination, claim 17 is assumed to depend from claim 16.
Claim 19 recites “the opposite end”. It is unclear what this end is opposite from. For purposes of examination the opposite end is assumed to be opposite the first end and claim 19 will be read as, “the ratchet has an opposite end opposite the first end”.
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 – 3, 6, 7, 11 – 15 and 18 - 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Natkins (US 4,321,952) in view of Gordon (US 2019/0262039 A1).
Regarding claim 1, Natkins discloses a tensioner instrument (Abstract) for tensioning a band (Abstract), comprising:
first and second arms extending from a proximal end to a distal end (Fig. 3, refs 2, 3) , the first and second arms having handles near the proximal ends (see remarked Fig. 3 below);
a base (refs. 28, 13, see remarked Fig. 3 below) pivotally coupled to the first arm (pin ref. 14 pivotally couples ref. 13 of the base to the first arm ref. 2) and coupled to the second arm (all components of the device are coupled to each other), the base defining a slot to receive the band (the slot is created by refs. 28 and ref. 16, best shown in Figs. 8 and 4 or the slot may be considered the opening in ref. 28 as shown in Figs. 1 - 2) and guide the distal end of the first arm (Fig. 4), the second arm defining an opening sized to receive the band (see remarked Fig. 3 below);
wherein when the handles are compressed together, the first arm pivots relative to the base such that the band is pinched in the slot between the distal end of the first arm and the base (due to the tensioning means ref. 9 – 11, when the handles are compressed together the arms are separated, thus creating tension on the band as shown in Figs. 7 and 8), and a distance between the distal ends of the first and second arms is increased, thereby applying a tension to the band (Figs. 7 and 8).
Natkins discloses a plier-like device for tensioning, but is silent regarding a ratchet positioned between the first and second arms.
Gordon teaches a plier-like device for tensioning (Abstract, ref. 200), comprising first and second arms (ref. 212, 214) and a ratchet positioned between the first and second arms (paragraph [0036], ref. 216). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the instrument of Natkins to include the ratchet positioned between the first and second arms, as taught by Gordon, for the purpose of maintaining a relative position of the first and second arms (paragraph [0036]).
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Regarding claim 2, Natkins in view of Gordon discloses the tensioner instrument of claim 1, wherein the base includes a first elongate portion and a second elongate portion angled relative to the first elongate portion at a corner (see remarked Fig. 2 below of Natkins).
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Regarding claim 3, Natkins in view of Gordon discloses the tensioner instrument of claim 2, wherein the corner of the first and second elongate portions couples with the first arm at a first hinge (Natkins, ref. 14).
Regarding claim 6, Natkins in view of Gordon discloses the tensioner instrument of claim 1, wherein a first end of the ratchet is coupled to one of the first and second arms via a pivot pin (Gordon, Fig. 6, ref. 220).
Regarding claim 7, Natkins in view of Gordon discloses the tensioner instrument of claim 6, wherein the opposite end of the ratchet is positionable through a pawl slot in the other of the first and second arms (Gordon, ref. 222).
Regarding claim 11, Natkins in view of Gordon discloses the tensioner instrument of claim 1, wherein the opening of the second arm is a closed through-opening (as best understood the opening is a through-opening as shown in Fig. 7 in Natkins).
Regarding claim 12, Natkins in view of Gordon discloses the tensioner instrument of claim 1, wherein a central axis of the opening is aligned with a longitudinal axis of the slot when the distal end of the second arm is in contact with the distal end of the base (Natkins, Fig. 3).
Regarding claim 13, Natkins discloses a tensioner instrument for tensioning a band (Abstract), comprising:
first and second pivoting arms extending from a proximal end to a distal end (Figs. 3, refs. 2, 3), the first and second pivoting arms having handles near the proximal ends (see remarked Fig. 3 below);
a base pivotally coupled to the first and second pivoting arms (refs. 28, 13, see remarked Fig. 3 below), and defining a slot to retain the band and guide the distal end of the first pivoting arm (the slot is created by refs. 28 and ref. 16, best shown in Figs. 8 and 4 or the slot may be considered the opening in ref. 28 as shown in Figs. 1 - 2), the second pivoting arm defining an opening sized to receive the band (Fig. 3, ref. 26);
wherein when the handles are compressed together, the band is pinched in the slot between the distal end of the first pivoting arm and the base, and a distance between the distal ends of the first and second pivoting arms is increased, thereby applying a tension to the band (due to the tensioning means ref. 9 – 11, when the handles are compressed together the arms are separated, thus creating tension on the band as shown in Figs. 7 and 8).
Natkins discloses a plier-like device for tensioning, but is silent regarding a ratchet positioned between the first and second arms.
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Gordon teaches a plier-like device for tensioning (Abstract, ref. 200), comprising first and second arms (ref. 212, 214) and a ratchet positioned between the first and second arms (paragraph [0036], ref. 216). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the instrument of Natkins to include the ratchet positioned between the first and second arms, as taught by Gordon, for the purpose of maintaining a relative position of the first and second arms (paragraph [0036]).
Regarding claim 14, Natkins in view of Gordon discloses the tensioner instrument of claim 13, wherein the base includes a first elongate portion and a second elongate portion angled relative to the first elongate portion at a corner (Natkins, see remarked Fig. 2 below).
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Regarding claim 15, Natkins in view of Gordon discloses the tensioner instrument of claim 14, wherein the corner of the first and second elongate portions couples with the first pivoting arm at a first hinge (Natkins, ref. 14).
Regarding claim 18, Natkins in view of Gordon discloses the tensioner instrument of claim 13, wherein a first end of the ratchet is coupled to one of the first and second pivoting arms via a pivot pin (Gordon, ref. 220).
Regarding claim 19, Natkins in view of Gordon discloses the tensioner instrument of claim 18, wherein the opposite end of the ratchet is positionable through a pawl slot in the other of the first and second pivoting arms (Gordon, ref. 222).
Regarding claim 20, Natkins in view of Gordon discloses the tensioner instrument of claim 19, wherein the ratchet:
is a linear ratchet (Gordon, Figs. 6 – 7);
includes a plurality of teeth along an interior of the ratchet, a pawl in the pawl slot engages the teeth to thereby incrementally maintain the position of the first and second pivoting arms and the amount of tension applied to the band (Gordon, paragraph [0036]).
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 – 10 and 13 – 20 (see Table 1 below) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 6 of U.S. Patent No. 11,534,222. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
U.S. App. 19/212,845 Claims
U.S. Pat. 11,534,222 Claims
U.S. App. 19/212,845 Claims
U.S. Pat. 11,534,222 Claims
1
1
11
-
2
2
12
-
3
2
13
1
4
3
14
2
5
4
15
2
6
5
16
3
7
5
17
4
8
6
18
5
9
6
19
5
10
6
20
6
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TESSA M MATTHEWS whose telephone number is (571)272-8817. The examiner can normally be reached M - F 8am - 1pm.
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, Eduardo Robert can be reached at (571) 272-4719. 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.
/TESSA M MATTHEWS/Examiner, Art Unit 3773
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