DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The disclosure is objected to because of the following informalities:
Paragraph 0040 – line 7, “182” should be –120--.
Appropriate correction is required.
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 1-8 and 18-20 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.
Claim 1, “the at least one roller rotatably attached to the first side bar of the bottom frame assembly” near the end of the claim lacks clear antecedent basis and should apparently be --the first roller rotatably attached to the first side bar of the bottom frame assembly--. Additionally, “the at least one roller rotatably attached to the second side bar of the bottom frame assembly” near the end of the claim lacks clear antecedent basis and should apparently be --the second roller rotatably attached to the second side bar of the bottom frame assembly--. Finally, “the first side bar” in line 11 and “the second side bar” in line 12 lack clear antecedent basis and could be written as –the first side bar of the top frame assembly—and –the second side bar of the top frame assembly—respectively for added clarity – note “first and second side bars” are introduced at both lines 4-5 and line 10.
Claim 18, “the first side bar” in line 11 and “the second side bar” in line 12 lack clear antecedent basis and could be written as –the first side bar of the top frame assembly—and –the second side bar of the top frame assembly—respectively for added clarity – note “first and second side bars” are introduced at both lines 4-5 and line 10.
Claim 20, “the at least one roller rotatably attached to the first side bar of the bottom frame assembly” near the end of the claim lacks clear antecedent basis and should apparently be --the first roller rotatably attached to the first side bar of the bottom frame assembly--. Additionally, “the at least one roller rotatably attached to the second side bar of the bottom frame assembly” near the end of the claim lacks clear antecedent basis and should apparently be --the second roller rotatably attached to the second side bar of the bottom frame assembly--.
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 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 18, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 1, 1, 1, 1, 1, 1, 9, 9, 9, 9, 9, 9, 9, 9, 1, 1, and 1 respectively of U.S. Patent No. 11,560,183. Although the claims at issue are not identical, they are not patentably distinct from each other because the noted patent claims include all of the features of the respective application claims and therefore anticipate the apparatus claims.
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.
Claim(s) 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brockhaus 5,052,878.
Brockhaus ‘878 teaches a bedslide assembly (figure 2 embodiment) for use on a bed (at 2) of a pickup truck (5) comprising a bottom frame assembly (i.e. the frame assembly including rails 9) configured to be attached to the pickup truck (column 2, lines 62-64), a middle frame assembly (i.e. frame including rails 11) that is engageable with and movable along the bottom frame assembly (column 3, lines 17-27 and figure 5), and a top frame assembly (i.e. the frame including rails 13) that includes a deck (77) located thereon (column 4, lines 10-12). The top frame assembly is engageable with and movable along the middle frame assembly (column 3, lines 31-37).
Claim(s) 9, 14, 15, 16, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brockhaus 4,950,123.
Claims 9 and 18, Brockhaus ‘123 teaches a bedslide assembly (at 1) for use on a bed of a pickup truck (5) comprising a bottom frame assembly (7) configured to be attached to the pickup truck (column 3, lines 15-18), a middle frame assembly (9) that is engageable with and movable along the bottom frame assembly, and a top frame assembly (11) that includes a deck (55) located thereon (column 4, lines 9-10) wherein the top frame assembly is engageable with and movable along the middle frame assembly (column 3, line 66 through column 3, line 6; figure 10).
Claim 14, at least web (29) of the bottom frame defines a stop arm as broadly claimed and includes spaced holes 67 therethrough – see figure 6.
Claim 15, see stop pin 63 configured and operable as broadly claimed – column 4, lines 31-51.15.
Claim 16, the top frame pin 63 serves to lock the top frame in place and defines a top frame stop member as broadly claimed. Additionally, web 29 of the middle frame member which includes locking holes 67 for engagement with the lock pin 63 to secure the middle frame defines a middle frame stop member as broadly claimed.
With additional regard to claim 18, the bottom frame assembly includes spaced apart opposing first and second side bars (15) and a plurality of rollers (47) wherein a first roller of the plurality of rollers is rotatably attached to the first side bar and a second of the plurality of rollers is rotatably attached to the second side bar (figures 5, 6, and 9). The middle frame assembly includes opposing spaced apart first and second rail sets (23, figure 7, wherein each of the first and second rail sets includes an upper rail and a lower rai as shown below.
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Finally, the top frame assembly includes spaced apart opposing first and second side bars (33) with at least one roller (41) rotatably attached to the first side bar and at least one roller (41) rotatably attached to the second side bar – see figure 5.
Claim 17 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Alexander et al. and Topolovec et al. teach additional examples of extendable pickup truck cargo bed assemblies.
Additionally, the following should be noted. Patent 4,950,123 is the closest prior art to claim 1. The reference lacks teaching of a middle frame defining members with upper and lower rails wherein top frame rollers move on the upper rails and bottom frame rollers move on the lower rails. No prior art was identified that would teach or fairly suggest modification to include such features. It appears the Canadian search report cited by applicant on the IDS of 3/7/25 considers the ‘123 patent to be readable on the language of claim 1. The examiner strongly disagrees with this interpretation for the reasons discussed immediately above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen Gordon whose telephone number is (571)272-6661. The examiner can normally be reached Mondays 8am-4pm and Thursdays 8am-4pm.
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/STEPHEN T GORDON/Primary Examiner, Art Unit 3612
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