DETAILED ACTION
Receipt is acknowledged of Applicant’s Response, dated 13 January 2026, which papers have been made of record.
Claims 1-20 are currently presented for examination, of which claims 13-20 have been withdrawn from consideration.
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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The claim limitation “connection means” recited in claim 7. The connection means appear to be described at paragraph [00064] of the Specification as filed and in Figure 12.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-3 and 5-7
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent 6,763,563 to Shanahan (hereinafter “Shanahan”)
Regarding claim 1, Shanahan discloses an obround spacing ring (60) for use in the manufacture of an obround shell (intended use) formed of a plurality of rigid panels, the obround spacing ring comprising an obround rim (see Fig. 3; see profile view; rim body 62, 64) formed with an outer U-shaped channel (76, 88; channel surfaces are located at outermost region of opening 92) sized and shaped fittingly to receive an inflatable obround tube (intended use).
Examiner’s Note: the examiner notes that the MPEP instructs that “[a]pparatus claims cover what a device is, not what a device does.” (MPEP 2114(II)). “A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.” (MPEP 2114(II)). As best understood by the examiner, the inflatable obround tube is not positively required by the instant claim and is understood to reflect only intended use for the obround spacing ring.
Regarding claim 2, Shanahan discloses the limitations of claim 1, and further Shanahan discloses that the obround rim is formed of metal (see Col. 3, lines 56-58; apparatus formed of steel or stainless steel or the like).
Regarding claim 3, Shanahan discloses the limitations of claim 2, and further Shanahan discloses that the metal is steel (see Col. 3, lines 56-58; apparatus formed of steel or stainless steel or the like).
Regarding claim 5, Shanahan discloses the limitations of claim 1, and further Shanahan discloses that the inflatable obround tube is formed of rubber. To the best of the examiner’s understanding, the claimed device would accommodate an inflatable obround tube formed of plastic or rubber in the same manner without modification of the claimed obround spacing ring. Whether the inflatable obround tube can be fittingly received by the spacing ring is at least a function of the respective dimensions of the spacing ring, the inflatable tube, and the pressure present within the inflatable tube. (See MPEP 2114(II)). As best understood by the examiner, the inflatable obround tube is not positively required by the instant claim and is understood to reflect only intended use for the obround spacing ring.
Regarding claim 6, Shanahan discloses the limitations of claim 1, and further Shanahan discloses that the inflatable obround tube is formed of plastic. To the best of the examiner’s understanding, the claimed device would accommodate an inflatable obround tube formed of plastic or rubber in the same manner without modification of the claimed obround spacing ring. Whether the inflatable obround tube can be fittingly received by the spacing ring is at least a function of the respective dimensions of the spacing ring, the inflatable tube, and the pressure present within the inflatable tube. See MPEP 2114(II)). As best understood by the examiner, the inflatable obround tube is not positively required by the instant claim and is understood to reflect only intended use for the obround spacing ring.
Regarding claim 7, Shanahan discloses the limitations of claim 1, and further Shanahan discloses that the inflatable obround tube comprises connection means operative to connect the inflatable obround tube to a pressure source to pressurize the inflatable obround tube to expand an outer periphery of the inflatable obround tube. To the best of the examiner’s understanding, the claimed device would accommodate an inflatable obround tube regardless of the presence of connection means thereon to a pressure source. Because the inflatable tube is not understood to be positively required by claim 7, the device disclosed by Shanahan is understood to be capable of accommodating the recited inflatable tube including the connection means, which could be placed to not interfere with the spacing ring taught by Shanahan. See MPEP 2114(II)). As best understood by the examiner, the inflatable obround tube is not positively required by the instant claim and is understood to reflect only intended use for the obround spacing ring.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 4
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Shanahan as applied to claim 2 above, and further in view of
United States Patent 8,714,433 to Snead et al. (hereinafter “Snead”).
Regarding claim 4, Shanahan discloses the limitations of claim 2, however Shanahan does not explicitly disclose that the metal is aluminum. Shanahan teaches that the device (60) may be made of steel, stainless steel, or the like (see Col. 3, lines 56-58).
Snead teaches a clamping device (10) having a semi-circular rims (13, 16) which may be secured together (compare Figures 1A with 2E). The device of Snead may comprise a metal, such as steel, stainless steel, aluminum, or alloys (see Col. 2, lines 53-60). Snead teaches that the particular metal selected may depend on environmental factors and applications, such as high strength, corrosion resistance, and weight factors (Col. 2, lines 56-60).
It would have been obvious to one having ordinary skill in the art to modify the device taught by Shanahan to include a metal material such as aluminum, as taught by Snead. (See MPEP 2143(1)(A)). Because Shanahan appears to be flexible regarding the metal material (“or the like”; Col. 3, lines 56-58), it would have been within the level of ordinary skill in the art to modify the device to include an unlisted metal material without modification of the principles of operation of Shanahan. Further, because Snead teaches that different metal materials can be used based on environmental factors, it would have been obvious as a matter of design choice to select a material such as aluminum depending on the use environment of the device taught by the combination to advantageously provide that the device will function in the environment. (See MPEP 2143(1)(C)).
Thus, the combination of Shanahan and Snead teaches the limitations of claim 4.
Claims 11-12
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Shanahan as applied to claim 1 above.
Regarding claim 11, Shanahan discloses the limitations of claim 1. Shanahan does not explicitly disclose that semi-annular portions (62, 64) of the obround spacing ring (60) each have a common diameter of between 5’ and 12’.
However, the MPEP teaches that “where the only difference between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). There is nothing of record that suggests that the dimensions would cause the device taught by Shanahan to behave differently in use.
Thus, Shanahan teaches the limitations of claim 11.
Regarding claim 12, Shanahan discloses the limitations of claim 11. Shanahan does not explicitly disclose that opposite straight segments (66) of the obround spacing ring (60) which bridge opposing ends of the semi-annular portions of the obround spacing ring each have a common length of between 10” and 32”.
However, the MPEP teaches that “where the only difference between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). There is nothing of record that suggests that the claimed lengths of opposite straight segments would cause the device taught by Shanahan to behave differently in use.
Thus, Shanahan teaches the limitations of claim 12.
Allowable Subject Matter
Claims 8-10 are 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 following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 8, the prior art of record does not explicitly disclose or fairly teach “wherein the obround rim comprises at least one through hole for passage of a portion of the inflatable obround tube to facilitate connection of the connection means to the pressure source,” in combination with the remaining limitations of the claim. The examiner notes that Shanahan teaches a hole (74) however does not explicitly disclose that the hole is a through hole. Motivation to modify the disclosed hole to be a through hole does not appear to be fairly found in the prior art without relying improperly upon teachings in Applicant’s Specification. The examiner further notes that the inflatable obround tube is not understood to be positively required by the device of claim 1, from which claim 8 depends.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARRELL C. FORD whose telephone number is (313)446-6515. The examiner can normally be reached 8:30 AM to 5:15 PM, Monday to Friday.
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/DARRELL C FORD/Examiner, Art Unit 3726