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 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.
Claim(s) 1-16 and 31 is/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 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.
MPEP 2163.06 recites in part: “Lack of written description is an issue that generally arises with respect to the subject matter of a claim. If an applicant amends or attempts to amend the abstract, specification or drawings of an application, an issue of new matter will arise if the content of the amendment is not described in the application as filed. Stated another way, information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter. There are two statutory provisions that prohibit the introduction of new matter. The first provision is 35 U.S.C. 132, which provides that no amendment shall introduce new matter into the disclosure of the invention. The second provision is 35 U.S.C. 251, which provides that no new matter shall be introduced into the application for reissue….. If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). The examiner should still consider the subject matter added to the claim in making rejections based on prior art since the new matter rejection may be overcome by applicant. ………………………….. When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not “new matter” is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure.”
Regarding claim 1, last 2 lines recites the following: “wherein the back panel has a ridge at the top of the back panel that engages with the top of the clamp”.
However, according to specification of instant application at least in paragraph [0033], which recites in part as follow: “the carriage 106 has an elevated ridge 140 that cooperates with and couples to an elevated section 142 of clamp 104”. However, no mention about the back panel 122 itself and the structural relationship to “a ridge” thereof, and no description is found in entire instant disclosure to describe which specific portions of the back panel 122 belongs to “top of the back panel”, and no description is found to describe which specific portions of the clamp 104 belongs to “top of the clamp”, and no mention of the back panel having a ridge at the top of the back panel that engages with the top of the clamp.
As a result, based on the totality of above, “wherein the back panel has a ridge at the top of the back panel that engages with the top of the clamp” in last 2 lines of claim 1 is deemed new matter, and failing to comply with the written description requirement.
By virtue of dependency upon base claim 1, dependent claims 2-16 and 31 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.
Claim(s) 9, 10 and 20-25 is/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 Claims 9 and 10, lines 1-2 as follow: “wherein the carriage further comprises the elevated ridge”, respectively. However, “the elevated ridge” lacks antecedence basis thereof. As a result, claim amendment(s) to claims 9 and 10 is required to overcome the above issue.
Regarding claim 20, which recites in lines 12-17 the following: “a removable saddle comprising: a first flange comprising a first orifice adapted to support the crossbar and align with the first aperture; a second flange comprising a second orifice adapted to support the crossbar and align with the second aperture; and a stem interposed between the first flange and the second flange.”
Referring to particular limitations directing to a removable saddle as recited in amended claim 20, reproduced herein as follow: “a removable saddle comprising: a first flange comprising a first orifice adapted to support the crossbar and align with the first aperture; a second flange comprising a second orifice adapted to support the crossbar and align with the second aperture; and a stem interposed between the first flange and the second flange.”
As best understood by examiner, the above limitations defined of having specific elements as follow: a first flange with a first orifice, a second flange with a second orifice, and a stem interposed between the first flange and the second flange. However, there is no express limitations in claim 20 that enable the “saddle” to become a “removable saddle”. Meanwhile, upon diligently search of entire disclosure as originally filed, no structural feature or limitation is found to disclose “a removable saddle” or even “a saddle that is removable”. The specification, including such as in [0027], [0036] and [0037] only appear to recite “a saddle 108”, but the specification does not describe of any essential elements and limitations that makes the saddle 108 to become a removable saddle, and no description is found in instant disclosure to describe how and what structural elements that the saddle 108 is being removable or removed from. As a result, essential elements, features and limitations are missing in the claim to facilitate or enable “removable saddle” as recited in claim 20. As a result, claim 20 fails to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
By virtue of dependency upon base claim 20, dependent claims 21-25 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Oh (US 8109482B2) discloses a sprinkler mounting device with a support unit having a vertical body. Choi (US 6554231B2) discloses a sprinkler mounting device. Oh (US 6811130B1) discloses a sprinkler mounting device with a support unit having a vertical body. Lim (US 8833719B2) disclose a sprinkler clamp. Hickle (US 9068689B2) discloses sprinkler mounting apparatus. Feenstra (US9004422B2) discloses a fire protection sprinkler support system. Feenstra (US9004421B2) discloses a fire protection sprinkler support system. Jung (US 9526934B2) discloses a side bracket for fixing sprinkler joint.
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 DING Y TAN whose telephone number is (303)297-4271. The examiner can normally be reached on Monday-Friday, 8:00 am MT--5:00 pm MT. 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, Terrell McKinnon can be reached on 571-272-4797. 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 Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, 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.
/DING Y TAN/Examiner, Art Unit 3632
/TERRELL L MCKINNON/Supervisory Patent Examiner, Art Unit 3632