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 .
Examiner’s Note
Examiner notes that the instant claims were filed 5/28/2025, which are identical to applicant’s claims filed on 11/17/2023 in the parent case 18/512508. These claims were rejected on 2/28/2025 in the parent case, applicant did not respond to the rejection of 2/28/2025 in the parent case, nor did applicant amend or change the claims before filing the instant application. Therefore, this rejection is identical to the non-final of 2/28/2025 in the parent case, and this rejection is considered final, please see MPEP706.07b.
Drawings
The drawings are objected to because:
Base 11 and flange 14 are indicated as the same part in figure 3. This leads to indefiniteness in the scope between “base” and “Flange”.
None of applicant’s figures indicate “serrated”.
Figures 6a-6c seem to indicate the same device as is indicated by 21 in figures 3-5, but instead labels them 504. Similarly, cross sectional figure 6b seems to indicate the same parts as shown in figure 4, but with different part numbers. Please see 37 CFR1.84 (p) (4) “The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character”.
No figures seem to indicate an “inwardly” oriented flange, as required in claims 7 and 13.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Regarding all independent claims 1, 10, 17, applicant claims “hollow nail attachment component”. Examiner notes that applicant does not disclose the use of a nail. The record is not clear about how the term “nail” modifies “attachment component”.
Applicant claims “base”, which applicant indicates as part 11, and “flange 14”. Figure 3 indicates that “base” and “flange” are the same part. The record is not clear about the difference in scope between “base” and “flange”. Examiner assumes that because applicant claims “wall extending between the base and the upper edge”, examiner assumes that “base” is just the opposite edge of the wall from the upper edge with the protruding surfaces.
Regarding claims 3-4, 16, applicant claims “a serrated upper edge”. “Serrated” has a unique and definite shape of an edge, which is not shown in any of applicant’s drawings; the common definition provided by Oxford languages is “having or denoting a jagged edge; saw like”. Applicant’s figures 1, 2a, 3, 5, indicate a “wavy” structure [0047], which cannot also be “serrated”. Examiner notes that applicant may intend to be calling each projection a tooth, and each tooth may be wavy, jagged, sawtooth, crenated, or scalloped. Further, examiner suggests that claims 3 and 4 depend from claim 1, and that “serrated” be further defined by applicant, as examiner does not expect applicant’s intention matches the common definition. Further, based on the common definition of “crenated”, it seems that there is no difference in scope between the term “scalloped” and “crenated”. Examiner requests further definition by applicant. Since applicant’s claims seem to indicate that “wavy” is a type of “serrated”, and “serrated” is defined by the options of claim 4.
Regarding claims 6 and 7, applicant claims the flange extends “outwardly” or “inwardly” from the attachment component’s wall. Examiner notes that this is a relative term of closed shapes, however there is no shape of the attachment component, and therefore, “inward” or “outward” do not have any basis. Examiner notes that the component in claim 10 is “circular perimeter”, and therefore the flange extending “inwardly” makes sense; however, the component of claim 1 could be a straight line, which does not have an “inward” or “outward” orientation.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
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.
Claim(s) 17-20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by 2015/0210473 Sharratt.
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Regarding claim 17, Sharratt discloses a method of manufacturing a surface protector (figures 36-44), comprising:
(a) providing a hollow nail attachment component 860 comprising: (i) a base; (ii) an upper edge configured to attach to a piece of furniture (by having sawtooth projections); and (iii) a wall extending between the base and the upper edge (please see 112b above, and annotated figures);
(b) molding (“fixed or molded” [0166]) a surface protector base 809 over the hollow nail attachment component such that the upper edge of the hollow nail attachment component protrudes from the surface protector base (as shown in figures 41 and 39); and (c) securing the surface protector base 809 to a pad 806 (by an adhesive [0167]).
Regarding claim 18, Sharratt discloses the method of claim 17, wherein securing the surface protector base 809 to a pad 806 comprises adhering the surface protector base to a pad (“secured by an adhesive” [0167]).
Regarding claim 19, Sharratt discloses the method of claim 17, wherein the base of the hollow nail attachment component comprises a flange (as annotated above).
Regarding claim 20, Sharratt discloses the method of claim 19, wherein molding the surface protector base over the hollow nail attachment component comprises embedding (as is clearly shown in figure 41) the flange into the surface protector base.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over 2015/0210473 Sharrat, optionally in view of 2499277 Nalle.
Regarding claim 1, Sharrat discloses a surface protector, comprising:
(a) a surface protector base 809;
(b) a hollow nail (indefinite terms, see 112b rejection above; examiner assumes these are just names of the “attachment component”) attachment component 809 embedded (entirely within, see figure 41) within the surface protector base 809, the hollow nail attachment component 809 comprising:
(i) a base (indefinitely distinct from “flange”, examiner considers base 860 the flange, figure 41); (ii) an upper edge protruding from the surface protector base 809, the upper edge being configured to attach to a piece of furniture (by having pointed surfaces); and (iii) a wall 810 extending between the base (indefinite) and the upper edge (as shown); and
(c) a pad 806 adjacent (abutting the lower surface of) the surface protector base 809.
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Sharrat discloses the use of an attachment component shown in figure 35 in dotted lines. This is a three armed piece creating three protrusions 714 that engage with the “furniture or the bottom of a leg, chair, ottoman, dresser, and the like” [0152]. Sharrat discloses a hollow inner space at the center of the arms (best shown in figure 14). Therefore Sharrat is considered “hollow”. Sharrat has inwardly directed flanges 324 (best shown in figure 14) , three walls 322, having three serrated upper edges which are sawtooth in shape (triangular, as described by applicant’s specification).
Examiner notes that a 102/103 rejection is utilized based on the indefiniteness of the term “hollow” in this claim. If applicant intends that “hollow” means the attachment component has one wall, the singular wall has a circumference creating an empty inner space, applicant does not claim this in claim 1; applicant DOES claim this in claim 10. However, if that is applicant’s intention, please consider the following:
Sharrat does not disclose the use of a single wall having a circumference creating an empty inner space.
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Nalle discloses the use of a leg attachment device having serrated upper edges engaging the leg D of a piece of furniture, having a hollow inner space, a singular wall (as the attachment device is circular, see figure 3) with an upper edge with sawtooth structures (points, figure 1) and a lower edge having a flange (as annotated, below).
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the shape of the attachment mechanism of Sharrat, to that of having a single outer wall and an exterior projecting flange as taught by Nalle, as such shapes are known to those of ordinary skill in the art of furniture leg attachments. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”. A change of shape is considered a matter of choice. See MPEP 2144.04 (IV) (b). Please also note cited reference 3591210 Heise also teaches that it is old and well known in the art to desire serrated edges for attachment to be in circular shapes, rather than the use of only three serrated edges on arms, as shown in Sharratt. Similarly, please see 2015/0147135 Koch figure 2 for a hollow connector with “serrated” upper edge to attach to a piece of wood.
Regarding claim 2, Sharrat discloses the surface protector of claim 1, wherein the upper edge of the hollow nail attachment component 860 comprises a serrated upper edge (with points 810). Examiner notes that “serrated” cannot also be “wavy”, based on the common definition of “serrated”. Please see 112b regarding the term “serrated”.
Regarding claim 3, Sharrat discloses the surface protector of claim 2, wherein the upper edge engages the furniture leg. Sharrat discloses the use of triangular upper surfaces, which applicant has indicated in [0048] and figure 2b. Applicant’s claim language indicate that “serrated” can be either sawtooth or “scalloped” or “crenated”, “crenated” having the same structure as “wavy-shaped” and “scalloped”. Therefore, it is old and well known to use any known shape that functions in the same way as the triangular shapes as disclosed in Sharrat. A change of shape is considered a matter of choice. See MPEP 2144.04 (IV) (b). Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Regarding claim 4, Sharrat discloses the surface protector of claim 2 (please see 112b above), wherein the serrated upper edge comprises a structure selected from a group consisting of a sawtooth structure. Sharrat discloses the use of triangular upper surfaces, which is that which applicant discloses as “sawtooth” in [0048] and figure 2b.
Regarding claim 5, Sharrat discloses the surface protector of claim 1, wherein the base (lower end of the wall with upper points) of the hollow nail attachment component 860 comprises a flange (indicated in figure 41).
Regarding claim 6, Sharrat discloses the surface protector of claim 5, wherein the flange (required in Sharratt) is oriented inwardly, but the optional modification discloses that the flange is oriented outwardly from the wall of the hollow nail attachment component, when/if “hollow” requires one wall to create an empty inner space. Please see Nalle as indicated above.
Regarding claim 7, Sharrat discloses the surface protector of claim 5, wherein the flange (as indicated above) is oriented inwardly (towards the center of, see figures 35, 28, 14…) from the wall of the hollow nail attachment component.
Regarding claim 8, Sharrat discloses the surface protector of claim 1, wherein the pad 806 comprises felt [0170] “felt or material”.
Regarding claim 9, Sharrat discloses the surface protector of claim 1, wherein the upper edge (visible edge from the upper surface) of the hollow nail attachment component 860 comprises an upper edge footprint (where the protrusions are, best shown in figure 38) and the base (lower edge of the wall of the protrusions, as discussed above) of the hollow nail attachment component comprises a base footprint (best seen in figure 35), the base footprint being smaller than the upper edge footprint, since the flange is directed inwardly in Sharrat. The optional modification, however, discloses it is old and well known to have an outwardly extending flange, should applicant intend that the “hollow” part of the claim language intends that there is one wall, which encloses an empty inner space.
Claim(s) 10-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sharratt in view of Nalle.
Regarding claim 10, Sharrat discloses a surface protector, comprising:
(a) a surface protector base 809;
(b) a hollow nail (indefinite terms, see 112b rejection above; examiner assumes these are just names of the “attachment component”) attachment component 809 embedded (entirely within, see figure 41) within the surface protector base 809, the hollow nail attachment component 809 comprising:
(i) a base (see 112b) including a flange (as annotated figure 9); (ii) a serrated (having sawtooth shaped projections, see claim 1 above) upper edge protruding from the surface protector base 809, the serrated upper edge being configured to attach to a piece of furniture (by having pointed surfaces); and (iii) a wall (several walls 810) extending between the base (indefinite) and the serrated upper edge (as shown); and
(c) a pad 806 adjacent (abutting the lower surface of) the surface protector base 809.
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Sharrat discloses the use of an attachment component shown in figure 35 in dotted lines. This is a three armed piece creating three protrusions 714 that engage with the “furniture or the bottom of a leg, chair, ottoman, dresser, and the like” [0152]. Sharrat discloses a hollow inner space at the center of the arms (best shown in figure 14). Therefore Sharrat is considered “hollow”. Sharrat has inwardly directed flanges 324 (best shown in figure 14) , three walls 322, having three serrated upper edges which are sawtooth in shape (triangular, as described by applicant’s specification).
Sharrat does not disclose the use of a single wall forming a circular perimeter creating an empty inner space.
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Nalle discloses the use of a leg attachment device having serrated upper edges engaging the leg D of a piece of furniture, having a hollow inner space, a singular wall (as the attachment device is circular, see figure 3) with an upper edge with sawtooth structures (points, figure 1) and a lower edge having a flange (as annotated, below).
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the shape of the attachment mechanism of Sharrat, to that of having a single outer wall and an exterior projecting flange as taught by Nalle, as such shapes are known to those of ordinary skill in the art of furniture leg attachments. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”. A change of shape is considered a matter of choice. See MPEP 2144.04 (IV) (b). Please also note cited reference 3591210 Heise also teaches that it is old and well known in the art to desire serrated edges for attachment to be in circular shapes, rather than the use of only three serrated edges on arms, as shown in Sharratt. Similarly, please see 2015/0147135 Koch figure 2 for a hollow connector with “serrated” upper edge to attach to a piece of wood.
Regarding claim 11, Sharratt as modified discloses the surface protector of claim 10, wherein the flange (as taught in Nalle) is oriented outwardly from the wall of the hollow nail attachment component (as clearly indicated in Nalle figure 4 annotated above).
Regarding claim 12, Sharrat as modified discloses the surface protector of claim 11, wherein the outwardly oriented flange (of Nalle) comprises a flange footprint and the serrated upper edge comprises an upper edge footprint, the flange footprint being larger than the upper edge footprint (as taught in Nalle).
Regarding claim 13, Sharratt as modified discloses the surface protector of claim 10, wherein the flange (of Nalle) is oriented inwardly (outwardly suggested by Nalle, inwardly suggested by Sharratt) from the wall of the hollow nail attachment component.
Regarding claim 14, Sharratt as modified discloses the surface protector of claim 13, wherein the inwardly oriented flange (of Sharratt flange) comprises a flange footprint and the serrated upper edge comprises an upper edge footprint, the flange footprint being smaller than the upper edge footprint (because the flange is interior of the upper edge, as taught by Sharratt).
Regarding claim 15, Sharrat as modified discloses the surface protector of claim 10, wherein the pad 806 comprises felt [0170] “felt or material”.
Regarding claim 16, Sharrat as modified discloses the surface protector of claim 10, wherein the serrated upper edge (shown in figure 38) comprises a structure selected from a group consisting of a sawtooth structure, as previously discussed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
This is a continuation of applicant's earlier Application No. 18/512508. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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 EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
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, Jason San can be reached at (571)272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY M MORGAN/ Primary Examiner, Art Unit 3677
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