DETAILED ACTION
The Examiner acknowledges Claim 1 has been amended, Claims 11-15 have been cancelled and Claims 16-17 have been added.
Response to Arguments
Applicant's arguments and amendments have been fully considered but they are not persuasive:
The Applicant argues that Kronenberg’s stop or stop lugs are not a continuous indentation. However, the language of the claim is that the wedge “corresponds to an indentation protruding from a first wall”. In Kronenberg, the stops correspond to indentations made in the wall to flex the stops out of the wall. Since they are flexed out from the wall, they are continuous with the wall. Kronenberg’s invention reads on the claims, further language would be needed to overcome the interpretation.
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.
Claim 17 is 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. It is unclear how the cross-sectional thickness of the wedge can be compared to the material thickness of the first wall if the claims had not set forth the first wall has a material thickness.
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)(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 1-7, 9-10 and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent # 5,560,731 to Kronenberg [also published as EP 0,698,172].
Regarding claim 1, Kronenberg teaches in Figures 1 and 2, a substantially u-shaped (Column, Line 46) splice (1) [plug connector (Column 2, Line 32)] comprising: a first outward projecting wedge (5) [stop (Column 3, Line 40)] corresponding to an indentation protruding from [when on the interior of the splice, the wedge or stop are flexed out from the wall (Column 3, Line 44)] a first wall (2) [center web (Column 2, Line 48)] of the splice (1), the first wedge (5) located substantially at a mid-point [as seen] between first and second distal ends (13) [end faces (Column 3, Line 52)] of the splice (1), wherein the indentation is continuous [flexed out from (Column 3, Line 44)] with the first wall (2); and at least one outward projecting barb (11) [retaining element (Column 2, Line 48)] to engage with a first rail (9) [hollow section (Column 2, Lines 32-33)], wherein the first wedge (5) creates an interference fit [disappear (Column 3, Line 42)] between the splice (1) and the first rail (9), when the splice (1) is inserted [slipped into (Column 2, Lines 50-51)] into the first rail (9). The Examiner finds “for connecting a first solar mounting rail to a second solar mounting rail” to be a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 2, Kronenberg teaches in Figures 1 and 2, a second outward projecting wedge (10) [stop lug (Column 3, Line 44)] formed in a second wall [side web (Column 3, Line 47)] of the splice (1), the second wedge (10) located substantially at the mid-point [as seen] between the first and the second distal ends (13) [end faces (Column 3, Line 52)] of the splice (1).
Regarding claim 3, Kronenberg teaches in Figures 1 and 2, the at least one outward projecting barb (11) is located in the first wall (2) between the first wedge (5) and the first distal end (13) of the splice (1).
Regarding claim 4, Kronenberg teaches in Figures 1 and 2, the first wedge (5) includes a surface [end (Column 3, Line 45)] to engage with an inner edge of the first rail (9) [the stop disappears as the rail is slipped on (Column 3, Lines 41-43)].
Regarding claim 5, Kronenberg teaches in Figures 1 and 2, a first force [the splice is just slipped on for installation (Column 2, Line 51)] required to insert the splice (1) into the first rail (9) is less than a second force [the retaining element claws into the rail to remove (Column 2, Lines 49-52)] required to remove the splice (1) from the first rail (9), based at least on an interaction [bent out lugs which claw into the inside walls (Column 2, Lines 49-52)] between the at least one outward projecting barb (11) and the first rail (9).
Regarding claim 6, Kronenberg teaches in Figure 4, the splice (1) has a substantially uniform wall thickness.
Regarding claim 7, Kronenberg teaches the splice is made of a material [sheet steel (Column 2, Lines 57-58)] that is harder than a surface of the rail [light-metal (Column 2, Lines 38-41).
Regarding claim 9, Kronenberg teaches in Figure 1, a plurality of apertures [created by the barbs 11] in a wall (3) of the splice (1) between the first and second distal ends (13) of the splice (1).
Regarding claim 10, Kronenberg teaches in Figure 1, an aperture [holes on both sides of plate 6] between the at least one outward projecting barb (11) and a wall (3) of the splice (1). The Examiner finds “for insertion of a tool to deflect the at least one outward projecting barb away from the first rail” to be a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 16, Kronenberg teaches in Figure 1, the wedge (5) includes a rounded outer surface [between where the wedge if flexed out of the wall (Column 3, Line 44) and where it meets an opposing wedge (10)].
Regarding claim 17, Kronenberg teaches in Figure 1, the wedge (5) has a substantially similar cross-sectional thickness of material as the first wall (2) [since it is of the same material as the wall (Column 3, Line 44)].
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 5,560,731 to Kronenberg in view of US Patent # 8,806,813 to Plaisted.
Regarding claim 8, Kronenberg teaches a U-shaped splice with an outward projecting barb but does not teach the barb is configured to pierce a coating on the first rail. However, Plaisted teaches in Figure 2A, an outward projecting barb (205) (Column 4, Lines 53-57) configured pierce a coating (Column 4, Line 62) on a mating surface (Column 4, Line 63), creating an electrical bond path (Column 4, Lines 62-64). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the plug connector of Kronenberg with bonding technique of Plaisted with a reasonable expectation of success because Plaisted teaches penetrating the coating provides a good electrical contact (Column 4, Lines 61-64).
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW J TRIGGS whose telephone number is (571)270-3657. The examiner can normally be reached Mon-Thurs 6am-2pm EST.
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/ANDREW J TRIGGS/Primary Examiner, Art Unit 3635