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 .
Drawings
The drawings were received on 12/17/2025. These drawings are acceptable.
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 1 & 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/161077. Although the claims at issue are not identical, they are not patentably distinct from each other because the both recite similar features such as a fixing member comprising an engagement part, an attachment part, a connection part and a load receiving part.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamuro (US patent application publication 2005/0150194) in view of Prevot et al. (US patent 5,842,424) (hereinafter Prevot) and Adams et al. (US patent 9,163,842) (hereinafter Adams).
Regarding claim 1, Okamuro discloses a fixing member that fixes a lower surface of an apparatus having a caster to an upper surface of a base, the fixing member comprising: an engagement part (23) that is inserted through a through hole (22) provided in the lower surface of the apparatus, extends along an upper side of the lower surface of the apparatus, and is engaged with the lower surface of the apparatus; an attachment part (27) that extends along an upper side of the upper surface of the base so as to face the engagement part and is attached to the upper surface of the base; a connection part (24) that connects the engagement part and the attachment part by passing through the through hole; and a load receiving part (15) that is provided on a side opposite to the engagement part relative to the connection part and receives a load by making contact with a lower side of the lower surface of the apparatus.
Okamuro does not disclose a fixing member wherein the load receiving part and the connection part are made of a common plate member; wherein the load receiving part is a curved surface formed from the plate member; and the load receiving part is formed by hemming-bending the plate member.
Prevot teaches a fixing member (20) wherein the load receiving part (24) and the connection part (20b) are made of a common plate member (Fig. 6); and the load receiving part is a curved surface formed from the plate member (Fig. 6). As such, it would have been obvious to one of ordinary skill in the art at the time of the filing to replace the load receiving part of Okamuro with the load receiving part of Prevot, because this arrangement would have replaced one known part with another known part yielding a predictable result.
Adams teaches a fixing member wherein a load receiving part is formed by hemming-bending a plate member (at 50, see Fig. 6). As such, it would have been obvious to one of ordinary skill in the art at the time of the filing to modify Okamuro, as previously modified, wherein the load receiving part is formed by hemming-bending the plate member in view of Adams teaching, because this arrangement would have replaced one known configuration with another known configuration yielding a predictable result.
Claim(s) 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamuro in view of Tsukada et al. (US patent 11,999,527) (hereinafter Tsukada).
Regarding claim 5, Okamuro discloses a fixing member that fixes a lower surface of an apparatus having a caster to an upper surface of a base, the fixing member comprising: an engagement part (23) that is inserted through a through hole (22) provided in the lower surface of the apparatus, extends along an upper side of the lower surface of the apparatus, and is engaged with the lower surface of the apparatus; an attachment part (27) that extends along an upper side of the upper surface of the base so as to face the engagement part and is attached to the upper surface of the base; a connection part (24) that connects the engagement part and the attachment part by passing through the through hole; and a load receiving part (15) that is provided on a side opposite to the engagement part relative to the connection part and receives a load by making contact with a lower side of the lower surface of the apparatus.
Okamuro does not disclose wherein the connection part has a bent part, a lower part that extends obliquely from the bent part, and an upper part that extends obliquely from the bent part.
Tsukada teaches a connection part (50) with a bent part (521), a lower part (52) that extends obliquely from the bent part, and an upper part (53) that extends obliquely from the bent part (Fig. 3). As such, it would have been obvious to one of ordinary skill in the art at the time of the filing to modify Okamuro wherein the connection part has a bent part, a lower part that extends obliquely from the bent part, and an upper part that extends obliquely from the bent part in view of Tsukada’s teaching, because this arrangement would have replaced one known part with another known part yielding a predictable result.
Regarding claim 6, Okamuro, as modified, teaches a fixing member herein the bent part is bent in a direction away from the engagement part (Tsukada: Figs. 3 & 4).
Regarding claim 7, Okamuro, as modified, teaches a fixing member wherein the bent part is provided closer to the attachment part than to the engagement part (Tsukada: Fig. 3).
Regarding claim 8, Okamuro, as modified, teaches a fixing member wherein an upper end of the upper part connects to the engagement part and a lower end of the lower part connects to the attachment part (Tsukada: Fig. 3).
Regarding claim 9, Okamuro, as modified, teaches a fixing member wherein the upper end and the lower end are positioned on a same side relative to the connection part in a direction perpendicular to a load receiving direction and perpendicular to a boundary line between the upper part and the lower part (Tsukada: Figs. 3 & 4).
Response to Arguments
Applicant’s arguments, filed 12/17/2025, with respect to the drawings have been fully considered and are persuasive. The objection of drawings has been withdrawn.
Applicant's arguments filed 12/17/2025 with respect to the double patenting rejection have been fully considered but they are not persuasive. Both the instant claims and the co-pending claims still recite similar features such as a fixing member comprising an engagement part, an attachment part, a connection part and a load receiving part, thus the double patenting rejection remains.
Applicant's arguments filed 12/17/2025 with respect to new claim 1
Applicant’s arguments with respect to new claim(s) 1 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.
Applicant’s arguments, filed 12/17/2025, with respect to the rejection(s) of claim(s) 1-4 because Prevot does not teach hemming-bending because Prevot does not teach tab 24 to be folded by 180 degrees have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Okamuro, Prevot and Adams.
Applicant’s arguments, filed 12/17/2025, with respect to the rejection(s) of claim(s) 5 in view of Fork have been fully considered and are persuasive because Fork does not teach a bent part, a lower part and an upper part that both extend obliquely from the bent part. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Okamuro and Tsukada.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J ROHRHOFF whose telephone number is (571)270-7624. The examiner can normally be reached M-F 7:30-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dan Troy can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL J ROHRHOFF/Primary Examiner, Art Unit 3637