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
Claims 9 and 11-20 are objected to because of the following informalities:
In claim 9, line 4, “I/0” should read --I/O--, i.e. replace the zero with uppercase O;
In claim 9, line 6, “1/0” should read --I/O--;
In claim 9, last line, “being configured” should read --is configured--;
In claim 11, line 3, “having a position and configuration corresponding to each of the loop” should read --has a position and configuration corresponding to the at least one loop, on said base--;
In claim 13, “each of the catch on the housing extend through corresponding loops” should read --each of the at least one catch on the housing extends though a corresponding loop--.
In claim 14, “each of the catch configured to move in respective the at least one loop of the housing” should read --each of the at least one catch is configured to move in a respective one of the at least one loop of the housing--;
In claim 16, line 1, “recess track where the lug configured” should read --recessed track, wherein the lug is configured--;
Claim 17 should be reworded as “The apparatus of claim 9, wherein said base includes a recess for receiving said support rail, a groove on a first side of said recess accepts said flange, comprising a first flange, and said base further includes a channel on a second side of said recess for receiving a second flange of said support rail, wherein the channel includes one or more lips protruding into the recess from the second side.--;
In claim 18, line 1, “rail located” should read --rail is located--.
Appropriate correction is required.
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 9 and 11-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 9 includes the limitation “each loop having an opening projecting from its front edge, wherein the opening is configured to receive a pin that extends through the opening to engage a plate, the plate being adapted to cooperatively grip a flange on the support rail”. This limitation does not find support in the original disclosure. Referring to Fig. 6, the base 14 includes a loop 30 comprising an opening projecting from its front edge (see [0029]), i.e., from the front edge of the base projects at least one loop having an opening. Separately, the base 14 includes an opening 22 through which a pin 24 such as a bolt extends to engage a plate 26 (see [0031]). The opening f each of the two loops is not the same opening through which the pin extends. Moreover, the loops, each having an opening, project from the front edge of the base, whereas claim 9 requires the opening to project from the front edge of the loop, for each loop.
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 4, 5, 7, 9, 11 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-7 of U.S. Patent No. 11,445,623. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent claims 3-7 anticipate application claims 4, 5 and 9. Patent claims 4-7 anticipate application claims 7, 11 and 12. Note that the previous rejection included a typographical error, “4, 6” instead of “4-6”. However, the statement of rejection properly identified claims 4-6 as being rejected.
Allowable Subject Matter
Claims 1-3 are allowable over the prior art.
Claims 8 is 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.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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.
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/LIVIUS R. CAZAN/Primary Examiner, Art Unit 3729