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 .
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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
The “connecting rod mounted bearings 168”, as described in paragraph [0168] of the corresponding US published application, US 2023/0303005;
The ”rails 108”, as described in paragraph [0168] (Note: While the “rails 108 appear is other figures, it is important to show the rails 108 in new figures 43- 56 in order to understand these new embodiments. In addition, it is noted that in Fig. 56 and paragraph [0170], a different reference character is used to describe the rails, i.e., “rails 253”);
The “side access door 251b”, as described in paragraph [0181];
The “enclosure 251a”, as described in paragraph [0181].
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Several of the reference characters in Fig. 47 are so blurry to be illegible. As such, it is unclear whether the reference characters shown in Fig. 47 are described in the Specification. For example, the reference character between “164” and what appears to be “162” in Fig. 47 cannot be read.
Reference character “165”, as shown in Figs. 46-47, is not described in the Specification;
Fig. 47 appears to show the reference character “155” between reference characters “167” and “165”, however, the reference character “155” is not described in the Specification.
Reference character “252”, as shown in Figs. 49 and 51, is not described in the Specification.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because, in Fig. 52, reference character “255” has been used to designate both the “multiple trays” and what appears to be the “drawer slides 258”, as described in paragraph [0180].
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 following features must be shown or the feature(s) canceled from the claim(s):
The “the at least one actuator adapted to extend and retract the one or more deployable trays, is further adapted to move the enclosure over at least a portion of an airfoil of the vehicle”, as recited in Claim 2 (Note: None of the newly added Figs. 43-56 show the same actuator as being capable of performing both of these functions);
The “enclosure is coupled to a translating hinge adapted to facilitate movement of the enclosure over the airfoil of the vehicle”, as recited in Claim 3 (Note: None of the newly added Figs. 43-56 show the enclosure being coupled to the hinge nor the enclosure being positioned over the airfoil of the vehicle);
The “enclosure is coupled to one or more rollers”, as recited in Claims 5 and 14;
The “fixed angle” of the one or more actuators with respect to the enclosure, as recited in Claim 8;
The “variable angle” of the one or more actuators with respect to the enclosure, as recited in Claim 9;
The “at least one actuator adapted to move the enclosure over an airfoil of the vehicle and extend and retract the deployable tray outside and inside the enclosure, respectively”, as recited in Claim 11 (Note: None of the newly added Figs. 43-56 show the same actuator as being capable of performing both of these functions);
The “the at least one actuator is adapted to lift or tilt at least a portion of the enclosure” (Note: The use of “the at least one actuator” requires this actuator to be the same actuator that also moves the enclosure over the airfoil and extends/retracts the tray; None of the newly added Figs. 43-56 show the same actuator as being capable of performing all three of these functions. In fact, Figs 51-. 52 shows that actuator (254), which tilts the enclosure (251), is a different actuator from actuators (257) that slide the trays (255));
The “actuators for each deployable tray is coupled to lateral supports oriented laterally across the vehicle roof (Note: Noe of the newly added Figs. 43-56 show the tray actuators being coupled to the lateral supports; While Fig. 52 shows multiple actuators (257) for the multiple trays (255), these actuators are not shown coupled to the lateral supports. And the only place where the lateral supports (253 is shown is in Fig. 50).
No new matter should be entered.
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.
Specification
The disclosure is objected to because of the following informalities:
In paragraph [0181], “one or more deployable trays 252” is recited, however, in paragraph [0180], the reference character “255” was used to denote the multiple trays.
In paragraph [0182], “each deployable tray is coupled to lateral supports 253”, however, in paragraph [0179], the reference character “253” was used to describe laterally oriented rails.
In view of the many objections to the Drawings, Applicant should review the entire Specification and make the appropriate corrections in view of changes made to the Drawings.
Appropriate correction is required.
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.
Claims 2-6 and 11-20 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 2 recites, “The cargo carrier of claim 1, wherein the at least one actuator adapted to extend and retract the one or more deployable trays, is further adapted to move the enclosure over at least a portion of an airfoil of the vehicle.” None of the figures show how the same actuator can both extend/retract the deployable trays and move the entire enclosure over an airfoil since there is no figure that shows the tray connected to either the translating hinge or the actuator. Moreover, the actuator that is described in the Specification as functioning to extend and retract the tray in paragraph [0169], i.e. actuator “161” is shown at an angle in Fig. 45 and this actuator does not seem capable of being able to move the translating hinge because of this angle. While the direction of the movements of the tray and enclosure would appear to be in the same direction, it would seem that another intervening structure would be required to allow the same actuator to be able to both slide the tray in and out of the enclosure and move the translating hinge. Because these structures are not adequately shown and described in the figures and Specification, the scope of Claim 2 is unclear.
Claim 11 recites, “one or more actuators, including: at least one actuator adapted to move the enclosure over an airfoil of the vehicle and extend and retract the deployable tray outside and inside the enclosure, respectively”. For the same indefinite concerns as described above for Claim 2, (i.e., none of the figures show how the same actuator can both extend/retract the deployable trays and move the entire enclosure over an airfoil), Claim 11 is also indefinite.
Claim 15 recites, “The cargo carrier of claim 11, wherein the at least one actuator is adapted to lift or tilt at least a portion of the enclosure. None of the newly added Figs. 43-56 show the same actuator as being capable of performing the three separate functions of 1) moving the enclosure over the airfoil, 2) extending/retracting the trays, and 3) lifting/tilting the enclosure, nor does it seem possible that the same actuator could perform all three of these functions. In fact, Figs 51-52 shows that actuator (254, which tilts the enclosure (251), is a different actuator from actuators (257) that slide the trays (255).
Claim 17 recites “one or more actuators adapted to extend and retract the one or more deployable trays outside and inside the enclosure, respectively; a controller in communication with the one or more actuators and configured to: activate at least one actuator adapted to lift or tilt at least a portion of the enclosure to facilitate access to the one or more deployable trays on a curbside of the vehicle; and activate at least one actuator adapted to slide the one or more deployable trays outside of the enclosure to the side of the vehicle.” Because only one function of the actuators was identified when introducing the actuators (i.e., to extend/retract the trays), and the controller is in communication with “the one or more actuators”, there is no antecedent basis for the controller to “activate at least one actuator adapted to lift or tilt”. In addition, in the limitations directed to what the controller is “configured to” do, by using the same name for the two recited actuators, i.e., “at least one actuator”, these limitations can be construed such that that it is the same actuator that performs both of these functions. However, it is unclear as to how the same actuator could both lift/tilt the enclosure and slide the trays.
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.
Claims 1-3, 7-12, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Fallis, III et al., US 2006/0175368, in view of Hamilton, US 8,322,580.
With regard to Claims 1-3 and 10-12, Fallis discloses a cargo carrier (10, Figs. 1-10, [0028]-[0043], comprising:
an enclosure (20, Figs. 1-8) adapted to couple to a vehicle roof (14, Figs. 1-2); and
one or more actuators (58, 60, Fig. 9), that are “adapted to move the enclosure over at least a portion of an airfoil of the vehicle” (Fig. 6, which shows the carrier extending out from behind the vehicle and above the height of the roof, such that if this vehicle had an airfoil, the enclosure would be located over the airfoil, and therefore, these actuators are “adapted to move” the enclosure over the airfoil), wherein the enclosure (20) is coupled to a translating hinge (26, 28, 30, 48, Figs. 3-10, wherein the translating occurs by pin (48) sliding in slots 46 of the vehicle rails to move the enclosure so that it extends beyond and above the vehicle roof, as shown in Fig. 6) to facilitate the movement of the enclosure (Figs. 3-6); and
a controller (56) in communication with the one or more actuators and configured to activate the one or more actuators to move the enclosure beyond and above the vehicle (Fig. 6, [0039]).
Fallis fails to teach a deployable tray and actuator for sliding the tray from and into the enclosure. Hamilton discloses a cargo carrier (20, Figs. 1-8, C2, L46 – C4, L18) that includes an enclosure (22, 26) that is tiltably coupled to a rear portion of the vehicle roof rack (28, Fig. 3) via a pair of fixed-angle actuators (46, Figs. 3-5), and a deployable tray (26b, 26c, Figs. 4-8), slidably housed within the enclosure (Fig. 7) and another actuator (56) coupled to the deployable tray to slide the tray from the rear of the vehicle. It would have been obvious to one of ordinary skill in the art, before the effective filing date of Applicant’s invention to modify Fallis to include a slidable tray and actuator/controller to move the slidable tray because it would allow the contents of the enclosure to be moved closer to the person using the cargo carrier, thereby facilitating loading of the enclosure as taught by Hamilton (Fig. 5, C1, L50 – C2, L14).
With regard to Claim 7 and 15, Fallis teaches an actuator (36) that is adapted to lift or tilt at least a portion of the enclosure (Figs. 4-6).
With regard to Claims 8 and 16, Hamilton teaches an actuator (46) that is at a fixed angle for tilting the enclosure (Fig3. 3-5). It would have been obvious to one of ordinary skill in the art, before the effective filing date of Applicant’s invention, to modify Fallis to provide a fixed angle tilting actuator because it would provide a condition where the deployable tray can be extended to its maximum length and provide easy access to the contents in the enclosure, as taught by Hamilton (C3, L43-61).
With regard to Claims 9 and 16, Fallis teaches that the actuator (36) is positioned at a variable angle with respect to the enclosure and lifts or tilts the enclosure at the variable angle (Figs. 4-6).
Claims 4-5 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fallis, in view of Hamilton, as applied to Claims 1 and 11, respectively, and further in view of Trueblood, US 6,077,024. While Fallis discloses a translating hinge adapted to move the enclosure beyond and above the height of the vehicle, and therefore is capable of moving the enclosure over an airfoil located at the rear of the vehicle, Fallis fails to teach that the translating hinge is adjustable and that the enclosure is coupled to rollers. Trueblood discloses a cargo carrier (9, Figs. 1-8, C4, L19 – C12, L43) that includes an enclosure (11, Figs. 1-4, C4, L19 – C5, L18) that is tiltably coupled to a vehicle by a translating hinge (15, 17, 19, 21, 23, 29, Figs. 4a-4c, 8a-8d), the translating hinge adapted to facilitate movement of the enclosure over an obstruction located at the rear of the vehicle, in this case the vehicle tailgate (25, Figs. 4a-4c, 8a-8d), the translating hinge being adapted to adjust a distance of the movement of the enclosure over the vehicle tailgate (Figs. 8a-8d), and the enclosure being couple to one or more rollers (37, Figs. 1-2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s invention, to modify the Fallis/Hamilton cargo carrier to include a translating hinge that is adjustable and to couple rollers to the enclosure because it would allow the translating hinge to position the enclosure in both a horizontal and vertical orientation, as taught by Trueblood (Figs. 4a-4c, 8a-8d) and the rollers coupled to the enclosure would allow the enclosure to easily move over the rear obstruction/tailgate, as taught by Trueblood, thereby facilitating the movement of the enclosure into and out of the vehicle.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Frank, US 5,348,207, in view of Harrell et al., US 2019/0126838, Golze, US 4,260,314, and Fallis.
Frank discloses a cargo carrier (10, Figs. 1-10, C4, L60 – C8, L11), comprising an enclosure (14, Fig. 1) adapted to couple to a vehicle roof (11, Figs. 1, 1b), the enclosure defined by a front wall, side walls, a top surface, a bottom surface and a side access door (the opening where drawer/tray (17) enters/exits the enclosure (14)) opposite to one of the side walls of the enclosure (Fig. 2); and a deployable tray (17) slidably housed within the enclosure (19, Figs. 1, 1b, 4, 6).
Frank fails to teach an enclosure that is tiltably coupled to the vehicle roof and the carrier multiple deployable trays with their won actuator. Harrell discloses a cargo carrier (100, Figs. 1-19, [0032]-[0049]) that has an enclosure (107, 109) that is tiltably coupled to the vehicle roof (Figs. 1-2) via a deployable tray (128, Figs. 6-19) that is supported by a frame (106) with lateral supports (Figs. 6-7), wherein the carrier can include two separate enclosures and deployable trays (128a, 128b, Fig. 5, [0034]). Golze discloses a cargo carrier (10, Figs. 1-7, C4, L58 – C7, L52) that has an enclosure (18) that is tiltably coupled to the vehicle roof (Figs. 1-4) via a deployable tray (20, 22, 24, 26, 30) that is translated by a fixed actuator (C7, L12-34). It would have been obvious to one of ordinary skill in the art, before the effective filing date of Applicant’s invention, to modify Frank to include an enclosure that it tiltably coupled to the vehicle roof because it would allow the contents of the enclosure to not be reoriented when moving the enclosure from on top of the vehicle to the side access position, as taught by Golze (C1, L46 – C3, L34). It would have been obvious to one of ordinary skill in the art, before the effective filing date of Applicant’s invention, to modify Frank to include multiple deployable trays with their own actuators that are coupled to lateral supports so as to provide independent access to different storage areas because it would allow the user to selectively choose a storage area, thereby allowing the other storage area to remain at the top of the vehicle for efficient storage and protection. Frank provides the motivation for having separate storage areas since his drawer/tray has different compartments to prevent mingling of the stored items (Abstract), and the ordinarily skilled artisan would be able to make these modifications using known methods and the modification would yield only predictable results.
The combination of Frank, Harrell and Golze fails to teach a controller in communication with one or more actuators. Fallis discloses a cargo carrier (10, Figs. 1-10, [0028]-[0043], that includes an enclosure (20, Figs. 1-8) adapted to couple to a vehicle roof (14, Figs. 1-2); one or more actuators (58, 60, Fig. 9) for moving the enclosure, and a controller (56) in communication with the one or more actuators and configured to activate the one or more actuators to move the enclosure beyond and above the vehicle (Fig. 6, [0039]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of Applicant’s invention, to modify the Frank/Harrell/Golze cargo carrier to include a controller that is in communication with the actuators used to tilt the enclosure and slide the tray because the use of controllers to selectively control multiple actuators is well known and often used in many fields (as evidenced by their use in Fallis; see also US 4,685,860, US 6,666,643, US 8,221,048, and US 2008/0044268) and the ordinarily skilled artisan would be able to make this modification using known methods and the modification would yield nothing more than predictable results.
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 at least Claim 1 and 20 of U.S. Patent No. 10,286,853 (“US ‘853”). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to cargo carriers that include an enclosure tiltably coupled to a vehicle roof rack, a deployable tray slidable housed in the enclosure, and a controller in communication with an actuator to slide the tray outside of the enclosure. The only difference between the present application and US ‘853 is that the latter identifies the actuator for sliding the deployable tray as being a motor.
Claim 2-5 and 7-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least Claims 1 and 20 of US ‘853 in view of Fallis and/or Trueblood. As noted above with regard to the nonstatutory double patenting rejection of Claim 1, US ‘853 discloses a cargo carrier that include an enclosure tiltably coupled to a vehicle roof rack, a deployable tray slidable housed in the enclosure, and a controller in communication with an actuator/motor to slide the tray outside of the enclosure. However, US ‘853 fails to teach an actuator/translating hinge that is adapted to move the enclosure over an airfoil of a vehicle.
Fallis discloses a cargo carrier (10, Figs. 1-10, [0028]-[0043], that includes an enclosure (20, Figs. 1-8) adapted to couple to a vehicle roof (14, Figs. 1-2); and one or more actuators (58, 60, Fig. 9), that are “adapted to move the enclosure over at least a portion of an airfoil of the vehicle” (Fig. 6, which shows the carrier extending out from behind the vehicle and above the height of the roof, such that if this vehicle had an airfoil, the enclosure would be located over the airfoil, and therefore, these actuators are “adapted to move” the enclosure over the airfoil), wherein the enclosure (20) is coupled to a translating hinge (26, 28, 30, 48, Figs. 3-10, wherein the translating occurs by pin (48) sliding in slots 46 of the vehicle rails to move the enclosure so that it extends beyond and above the vehicle roof, as shown in Fig. 6) to facilitate the movement of the enclosure (Figs. 3-6).
Trueblood discloses a cargo carrier (9, Figs. 1-8, C4, L19 – C12, L43) that includes an enclosure (11, Figs. 1-4, C4, L19 – C5, L18) that is tiltably coupled to a vehicle by a translating hinge (15, 17, 19, 21, 23, 29, Figs. 4a-4c, 8a-8d), the translating hinge adapted to facilitate movement of the enclosure over an obstruction located at the rear of the vehicle, in this case the vehicle tailgate (25, Figs. 4a-4c, 8a-8d), the translating hinge being adapted to adjust a distance of the movement of the enclosure over the vehicle tailgate (Figs. 8a-8d), and the enclosure being couple to one or more rollers (37, Figs. 1-2).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s invention, to modify the US ‘853 cargo carrier to include a translating hinge as shown by Fallis (Fig. 6), and to make the translating hinge adjustable and couple rollers to the enclosure because it would allow the translating hinge to position the enclosure in both a horizontal and vertical orientation, as taught by Trueblood (Figs. 4a-4c, 8a-8d) and the rollers coupled to the enclosure would allow the enclosure to easily move over the rear obstruction/tailgate, as taught by Trueblood, thereby facilitating the movement of the enclosure into and out of the vehicle.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references describe the use of controllers to control actuators used in vehicle cargo carriers: US 4,685,860, US 6,666,643, US 8,221,048, and US 2008/0044268).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNN E SCHWENNING whose telephone number is (313)446-4861. The examiner can normally be reached Monday - Friday, 8:30 am - 5 pm EST.
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/LYNN E SCHWENNING/Primary Examiner, Art Unit 3652