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
Claim 3 is objected to because of the following informalities:
Claim 3 should end with a period.
Claim 3 line 2 should read “one of the second and/or one of the third apertures” for the purpose of consistency and grammatical clarity.
Appropriate correction is required.
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 vertical facing of the mounting system must be shown or the feature canceled from the claims. No new matter should be entered. Examiner notes that the only “Mounting system” in the figures is described as reference 12 which does not have a vertical facing or the fastener and aperture arrangement described in claim 1. There is no other reference number or structure in the drawings referred to as a mounting system. Figures 3A and 3B show a vertical facing of the leg assembly described in Paragraph 0026 of the specification. Additionally, engagement plate 151 has a vertical facing. However, it is not clear what structure is considered the vertical facing of the mounting system as the only structure described as a mounting system is reference 12 in Figures 1A and 1B referencing prior art.
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.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11554820. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the patent contains each element recited in claim 1 of the instant application. The only difference is the language used for the structure containing the vertical facing. The instant application recites the vertical facing of the mounting system and the issued patent recites the vertical facing of an engagement plate. Examiner notes that functionally engagement and mounting could be considered the same thing. Furthermore, there is nothing else in the claim of either the instant application or the issued to patent to suggest that an engagement plate cannot be or is not a mounting system or part of one, or that a vertical facing on a mounting system cannot be or is not considered an engagement plate.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11554820. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the patent recites all of the elements of claim 2 of the instant application.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11554820. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the patent recites all of the elements of claim 3 of the instant application.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11554820. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of the patent recites all of the elements of claim 4 of the instant application.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11554820. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the patent recites all of the elements of claim 7 of the instant application.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11554820. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the patent recites all of the elements of claim 8 of the instant application.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11554820. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of the patent recites all of the elements of claim 9 of the instant application.
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.
Claims 5, 6, 15, and 17 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.
In regards to claim 5: The claim recites “the third aperture” which renders the claim indefinite because a pair of third apertures have previously been recited in claim 1 from which claim 5 depends and it is unclear which of the pair of third apertures is being referred to. Additionally, claim 5 recites “the first and second flanged apertures” which renders the claim indefinite because claim 1 has previously recited a first flanged aperture and a second pair of apertures, but not a second flanged aperture. It is unclear which aperture is being referred to as the “second flanged aperture”. Claim 6 is rejected due to its dependency from claim 5.
In regards to claim 15: Claim 14, from which claim 15 depends, recites a plurality of interlocking flanges. Claim 15 further recites “wherein there are three interlocking flanges” which renders the claim indefinite because it is unclear if the three interlocking flanges are newly recited in addition to the previously recited plurality of interlocking flanges or if they are part of the plurality of interlocking flanges. For the purpose of examination, examiner interprets it to mean: “wherein the plurality of interlocking flanges comprises three interlocking flanges”. Additionally, claim 15 recites “one of the interlocking flanges” and “two horizontally aligned interlocking flanges” which renders the claim indefinite because it is unclear if the one is part of the plurality, the three interlocking flanges, or both. It is unclear if “two horizontally aligned interlocking flanges” is referring to the plurality, the three interlocking flanges, both, or newly reciting two additional flanges. For the purpose of examination, examiner interprets it to mean: “where one of the three interlocking flanges is positioned vertically offset at a midpoint between the other two of the three interlocking flanges, and wherein the other two of the three interlocking flanges are horizontally aligned with each other.”
In regards to claim 17: Line 2 recites “each flanged aperture” which renders the claim indefinite because claim 10 only recites a flanged aperture so it is unclear how many flanged apertures are required by “each flanged aperture” or if “each flanged aperture” refers only to the one recited in claim 10.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 10-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Janeway (US Pat 3241860).
In regards to claim 10: Janeway teaches a system (generally shown in Figure 1) for connecting vehicle components along a single shear surface (surface where 24 and 26 are connected to 22), the system comprising: a leg assembly (24 and 26) attachable to a component facing (22) by way of an interlocking flange (30) having a port (28) receiving a flanged aperture (36) and wherein the flanged aperture receives a fastener (42).
In regards to claim 11: The system according to claim 10 is taught by Janeway. Janeway further teaches wherein the interlocking flange includes a friction member (32 and 34) fitted around the flanged aperture (See Figure 4).
In regards to claim 12: The system according to claim 10 is taught by Janeway. Janeway further teaches wherein a distal end of the fastener has threads which engage corresponding threads positioned with the flanged aperture (Seen in Figure 4 at end of 42, not labeled).
In regards to claim 13: The system according to claim 10 is taught by Janeway. Janeway further teaches wherein the port is a through-aperture or a recess (See 28 in Figure 1).
In regards to claim 14: The system according to claim 10 is taught by Janeway. Janeway further teaches a plurality of interlocking flanges (30, 30, and 20).
In regards to claim 15: The system according to claim 14 is taught by Janeway. Janeway further teaches wherein there are three interlocking flanges (30, 30, and 20) and where one of the interlocking flanges (20) is positioned vertically offset at a midpoint between two horizontally aligned interlocking flanges (30s, See Figure 1).
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.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Janeway in view of Colibert (US 2011/0169247 A1). Claims 10 and 14 are taught by Janeway respectively. Janeway fails to teach a series of ports or paired ports provided at different elevations along the single shear surface so that each flanged aperture may be received by any one of the series of ports or paired ports in order to adjust an elevation of the connected vehicle component. However, Colibert teaches a series of ports (58) on a shear surface for connecting a fifth wheel hitch to a vehicle component in a way that allows for the height to be adjusted to allow the fifth wheel hitch “to adapt to a variety of truck/fifth-wheel trailer configurations” (Paragraph 0036). Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to provide a series of paired ports as in Colibert of the ports 28 of Janeway to allow for additional height adjustment of the fifth-wheel hitch to adapt to a variety of truck/fifth-wheel trailer configurations as stated by Colibert thereby creating a more versatile and user friendly fifth-wheel hitch connection system.
Allowable Subject Matter
Claims 1-4 and 7-9 include allowable subject matter. The prior art fails to teach the limitations regarding three fasteners with pairs of apertures, specifically at least one flanged aperture, on the vertical facings of the mounting system and component facing of the hitch and wherein two of the fasteners are on a horizontal line and the third fastener is positioned above the line, all three fastener and aperture pairings being located on the same two vertical facings.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABIGAIL R HYMEL whose telephone number is (571)272-0389. The examiner can normally be reached Generally M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at (571)272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.R.H./Examiner, Art Unit 3611 /VALENTIN NEACSU/Supervisory Patent Examiner, Art Unit 3611