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 .
DETAILED ACTION
Examiner’s Comments
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element T should be construed as inherently also reciting “and relevant disclosure thereto”.
Election/Restrictions
Applicant’s election without traverse of Species E (Figure 19) in the reply filed on 5/12/26 is acknowledged.
Applicant’s election of Species E in the reply filed on 5/12/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2-14 and 16-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/12/26.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/6/26 has been considered except with regard to the Non-Patent Literature Documents because none of the references cited include a date. These references have not been considered and are lined-through.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
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 No. 63/718,219, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The provisional application fails to include at least FIGS.11-23 and the subject matter contained therein. The provisional application does not include any disclosure to the elected embodiment of FIG.19 including the ring coupler recited.
For the purposes of examination on the merits, the effective filing date (EFD) of the current application is considered 12/30/24 and not 11/8/24.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the base mount of claim 1 with respect to the elected embodiment of FIG.19 (specifically it is unclear where or how the base mount coupled to the ring coupler as this is not shown); the base mount capable of being coupled to the ring coupler of claim 1 (though a PHOSITA could envision coupling these two components, the precise alignment and arrangement of the features is not shown); the ring of claim 1 with respect to the elected embodiment of FIG.19 (no ring is shown nor is any corresponding structure on which the ring is recited to be located); the structure of claim 1 with respect to the elected embodiment of FIG.19; the ring coupler becoming coupled to the ring and structure “by coupling the ring coupler to the base mount” of claim 1 with respect to FIG.19 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 15 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without a mechanism that allows for the recited function “by coupling sid ring coupler to said base mount, said ring coupler becomes coupled to said ring”, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). It is unclear in the current disclosure how coupling the ring coupler with the base mount allows for the ring coupler to couple to the ring itself as recited.
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 and 15 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 pre-AIA the applicant regards as the invention.
The Federal Circuit has held that applicants before the USPTO have the opportunity and the obligation to define their inventions precisely during proceedings before the USPTO. See In re Morris, 127 F.3d 1048, 1056–57, 44 USPQ2d 1023, 1029–30 (Fed. Cir. 1997) (35 U.S.C. 112, second paragraph places the burden of precise claim drafting on the applicant).
With regard to claim 1, line 3, the recitation that the base mount “can be coupled” to the ring coupler is unclear as to whether or not applicant intended for the “system” to include, as a positive limitation, the ring coupler as a component of the invention. This is not how the claim is currently recited or interpreted. Further, the particular coupling relationship of the base mount and ring coupler is unclear because though a PHOSITA could envision coupling these two components together, the precise placement/alignment and arrangement of the features is unclear. Where does the base mount couple to the ring coupler (on what side or surface thereof or how the components seat relative to one another)?
With regard to claim 1, line 4, the recitation that the ring coupler couples with “a ring located on a structure”, this is not shown with the elected embodiment and it is unclear how the ring coupler functions to accomplish the connection. Specifically, the void is shown (where presumably a ring is inserted) but is unclear if a friction/interference fit alone allows for the coupling or if additional components/structure are necessary. The particulars of the coupling are unclear from what is shown and disclosed in the specification.
With regard to claim 1, line 4, the recitation “couples” will be taken to mean “is capable of coupling” as the “ring” is not positively recited as a component of the system and therefore forms no part of the invention nor does the “structure” as recited.
With regard to claim 1, lines 5-6, the recitation that “by coupling” the ring coupler and base mount, the “ring coupler becomes coupled” to the ring and structure is unclear. The boundaries of the functional language are unclear because the claim does not provide a discernable boundary on what performs the function. The recited function does not follow from the structure recited in the claim, so it is unclear whether the function requires some other structure or is simply a result of operating the system in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information.
For the purposes of examination on the merits, the claim will be read as follows: “by coupling said ring coupler to said base mount, said base mount can be coupled to said ring and said structure without modifying said ring” such that it is clear that allowing the ring coupler and base mount to be coupled together allows the base mount to connect to the ring and structure.
The claims will be examined “as best understood”.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 15, as best understood, are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Kiernan et al. (6698983).
As best understood, Kiernan et al. disclose a system comprising: a base mount (30).
Further, said base mount “can be coupled” to a ring coupler (not numbered, FIG.1);
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The ring coupler is capable of coupling with a ring (not shown; not positively recited as a part of the invention; implicit) located on a structure (again not part of the invention; implicit) (with regard to Kiernan et al., the wheel of a wheelchair could broadly be interpreted as a ring and the wheelchair itself could be interpreted as a structure).
By coupling said ring coupler to said base mount (30) (as seen in FIG.1), said base mount becomes coupled to said ring and said structure without modifying said ring.
For claim 15, said ring coupler comprises a void (as seen in FIG.1 where the hook end is spaced apart from the remainder of the hook) to receive said ring (such as a wheelchair wheel).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HILARY L GUTMAN whose telephone number is 571.272.6662. 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, VIVEK KOPPIKAR can be reached on 571.272.5109. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the 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. Should you have questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HILARY L GUTMAN/Primary Examiner, Art Unit 3612B
Prosecution Insights