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 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 4 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.
With Respect to Claim 1
It recites the limitation "the sport equipment mounts" in line 12 and “the inwardly angled upwardly extending shafts”. There is insufficient antecedent basis for this limitation in the claim, noting that only one sport equipment mount having only one inwardly angled upwardly extending shaft is previously recited in the claim. It is unclear if the claim should be taken to require multiple sport equipment mounts having the recited features.
The remainder of this office action is based on the invention as best understood by Examiner.
With Respect to Claim 4
Regarding claim 4, the term “preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
With Respect to Claim 8
It is unclear whether the claim should be considered to structurally or only functionally recite multiple mounts, noting that “may be positioned in” is unclear whether it is a functional limitation (i.e. it would be sufficient to have a truck bed sidewall with additional post holes in which an additional mount “may be positioned in”), noting also that depending upon the length of the sport equipment being transported” seems to indicate a functional recitation. It is noted that the limitation would ordinarily be considered clearly functional, but Applicant’s arguments appear to indicate that Applicant intends it to be a structural recitation as Applicant argues that the rejection should require a teaching of additional mounts.
The remainder of this office action is based on the invention as best understood by Examiner.
With Respect to Claims 2-3 and 5-8
These claims are rejected as they depend from a rejected claim and so incorporate its indefinite scope.
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)(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.
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.
Claims 1, 4-6, and 8 are rejected under 35 U.S.C. 102(a)(2) as anticipated by U.S. Patent #4,527,827 to Maniscalco (Maniscalco), or in the alternative under 35 U.S.C. 103 as obvious over U.S. Patent #4,527,827 to Maniscalco (Maniscalco), alone or in view of U.S. Patent #2,731,292 to Cole (Cole) and/or in view of U.S. Patent #11,987,295 to Reyes (Reyes) and/or U.S. Patent #5,316,192 to Ng (Ng).
With Respect to Claim 1
Maniscalco discloses a sport equipment rack for mounting onto a vehicle load bed side wall comprising: a vehicle load bed side wall structurally including a plurality of mounting post holes (noting holes for 86) located within the side walls each said post hole having a vertically downward extending hollow shaft within the side walls (see Col. 3 lines 54-57, it is Examiner’s position that a person of ordinary skill in the art would understand such truck side walls to have vertically depending shafts forming the sockets, or to the degree that some might exist that lack such, the selection of one with such would be obvious to better secure the post in the stake hole); a sport equipment rack mount (see, e.g. FIGS. 1 and 7-8) having a support plate (82 or alternately only the top plate portion thereof) with a downwardly extending rectangular shaft (86, FIG. 8) dimensioned to fit within and be supported in a vertical orientation by a selected mounting post hole hollow shaft (see Col. 3 lines 54-57); said sport equipment mount also including an inwardly angled upwardly extending rectangular shaft (50’, FIG. 8, see FIG. 1 for inward angling) for supporting and retaining one or more sport equipment holders (noting 28 and related structure) with said shaft (48) angled inwardly from the vertical post hole hollow shaft when mounted (see, e.g. FIG. 1); said one or more sport equipment holders mounted to the sport equipment mounts by securing said sport equipment holders to the inwardly angled upwardly extending shafts providing one or more spaces for carrying sport equipment in a substantially vertical orientation (capable of this use, it is noted that although shown holding a surf board in a horizontal orientation, it could hold a plurality of skis rotated to a vertical orientation or various other sport equipment in a vertical orientation); one or more locking mechanisms (84, FIG. 8) paired with corresponding sport equipment mounts and hollow shafts of mounting post holes, whereby the sport equipment can be mounted to and removed from paired one or more adjacent sport equipment mounts by a sport equipment user standing at ground level (capable of this use with an appropriately sized user, i.e. one tall enough to reach the top of the rack).
Cole discloses a vehicle load bed side wall structurally including a plurality of mounting post holes (5) located within the side walls each said post hole having a vertically downward extending hollow shaft (formed by 5, see, e.g. FIG. 1) within the side walls, which provides additional evidence of the obviousness of and/or motivation to use a truck bed sidewall having this structure.
Reyes discloses mounting one or more sport equipment holders to a similar inwardly angled column of a vehicle rack (e.g. 210L, 250L, see Col. 4 lines 40-53 indicating they provide mounting points for accessories including e.g. bike carrier, kayak or canoe carriers, or similar accessories).
Ng discloses a sport equipment holder for securement to a vehicle rack structure for providing one or more spaces (6) for carrying sport equipment in a substantially vertical orientation, one or more locking mechanisms (4 alone or in combination with 3) paired with corresponding sport equipment holders whereby the sport equipment can be mounted to and removed from paired one or more adjacent sport equipment mounts by a sport equipment user standing at ground level (capable of this use with an appropriate vehicle and rack structure and a user of appropriate height).
Alternately, although Examiner maintains that the vertically downwardly extending hollow shaft is inherent in common pickup truck stake holes, to the degree that some trucks might exist without such, it would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Cole, to use a truck including having stake holes with a vertically downwardly extending hollow shaft in order to better secure the rack in position and/or as a mere selection of an art appropriate vehicle/stake hole structure to use.
Alternately, it would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Reyes, to attach an accessory holder/sport equipment mount such as the one taught by Ng to the column of the rack of Maniscalco, in order to increase the storage capacity of the rack and/or allow for holding skis as taught by Ng, and sport equipment can be mounted to a sport equipment mount per Ng in that location by a sport equipment user standing at ground level at least to the same degree as the invention.
With Respect to Claim 4
The sport equipment rack of Claim 1 wherein the inwardly angled upwardly extending rectangular shaft preferably has an inward angle of 45 such that the sport equipment held by the sport equipment will be mounted in a substantially vertical orientation (it is noted that the drawings apparently show an inward angle of 45 degrees or approximately 45 degrees, and the structure is capable of mounting appropriate sport equipment in a substantially vertical orientation).
Alternately, to the degree that the drawings may not be to scale, it would have been obvious to one of ordinary skill in the art before the filing date of this application to select an angle of 45 degrees, as a mere selection of an art appropriate angle to use, to set a desired height/location for the rack, and/or as selecting this angle instead of some other angle near 45 degrees would constitute at most a mere change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04(IV)(A)).
Alternately, the Ng sport equipment holder when mounted on the column (48) will hold sport equipment in a substantially vertical orientation.
With Respect to Claim 5
The sport equipment rack of Claim 1 wherein said one or more locking mechanisms (84) paired with corresponding sport equipment mounts and hollow shafts of mounting post holes threadedly retain the sport equipment mount within the hollow shaft of the mounting post hole and guard against removal of the sport equipment mount with locking knobs preventing removal (i.e. the locking knob operates the clamping screw and the screw as shown is threaded and so threaded clamps/retains the mount within the hollow shaft and guards against removal).
With Respect to Claim 6
The sport equipment mount of Claim 5 wherein the locking knobs (84) connect through the sport equipment mount and the hollow shaft of the mounting post hole from a forward facing side to a rearward facing side (the direction the locking knobs connect can be considered forward facing to rearward facing to the extent broadly claimed, noting that no forward/rearward direction is otherwise specified).
Alternately, Maniscalco discloses using alternate means to attach the rack to a truck sidewall, and Cole discloses attaching a similar post to a vehicle bed side wall using a stake pocket having openings in the stake pocket to allow fasteners to pass through. It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Cole, to attach the mount of Maniscalco using openings in the side of the stake pocket to allow threaded bolts to pass through and secure the stake/post in position. For clarity, this combination encompasses using this as an additional securement mechanism or using it to replace the clamping structure of Maniscalco. It would also have been obvious to locate the openings facing towards the front or rear of the vehicle (i.e. parallel to the sidewalls) in order to leave more space in the truck bed (i.e. avoiding the bolts or locking knobs extending into the bed), to make the bolts and knobs more accessible (i.e. the sides facing the vehicle front and rear are easier to access than the area between the stake pocket and the side wall) and/or as a mere rearrangement of parts which does not patentably distinguish over the prior art (MPEP 2144.04).
With Respect to Claim 8
The sport equipment rack of Claim 1 wherein the sport equipment mounts may be positioned in selected mounting post holes in pairs depending upon the length of the sport equipment being transported (capable of this use, e.g. an additional pair of mounts could be added if desired, noting that standard pickup trucks have 4 or more stake holes or Cole discloses 2 stake holes on each side which would allow for multiple mounts).
Alternately, Reyes discloses forming a similar rack with multiple inwardly angled sports equipment mount racks interconnected by crossbars to form a vehicle rack with multiple locations for attaching various accessories, and so it would have been obvious to one of ordinary skill in the art to provide an additional pair of mounts like that of Maniscalco in order to provide additional support for the surfboard and/or other equipment, to provide additional attachment points for other accessories, and/or as doing so constitutes at most a mere duplication of parts which does not patentably distinguish over the prior art (MPEP 2144.04).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Maniscalco in view of Reyes and Ng, either alone or further in view of Cole as applied to claim 1 above.
With Respect to Claim 2
For clarity, as to claim 2, , the shaft is taken to be only the lower portion of post (48) including the location of attachment of the Ng mount, with the remainder of the post being an extension of the post.
Maniscalco in view of Reyes and Ng, either alone or further in view of Cole discloses the sport equipment rack of Claim 1 further comprising an extension (upper portion of post 48) of the inwardly angled upwardly extending rectangular shaft for supporting and retaining additional sport equipment holders (capable of this use, noting also that it would clearly be obvious to attach additional sport equipment holders as doing so constitutes a mere duplication of parts which does not patentably distinguish over the prior art and/or per Reyes’ disclosure to attach multiple accessories to the columns or other structures of a similar vehicle rack).
With Respect to Claim 3
The sport equipment rack of Claim 2 wherein the extension of the inwardly angled upwardly extending rectangular shaft for supporting and retaining additional sport equipment holders allows for one or more additional sport equipment holders to be mounted to said extending rectangular shaft (inasmuch as it is capable of this use, noting also that Reyes discloses mounting multiple accessories).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Maniscalco, alone or in view of Cole and/or Reyes and Ng as applied to claim 6 above, and further in view of U.S. Patent #4,611,824 to McIntosh (McIntosh) and/or U.S. Patent #2,731,292 to Cole (Cole).
With Respect to Claim 7
The sport equipment mount of Claim 6 but does not disclose wherein an additional locking knob connects the sport equipment mount and the hollow shaft of the mounting post hole from the mounting post hole bottom being threadedly connected through a hole in the post hole bottom into the sport equipment mount.
However, Cole discloses forming a truck bed side wall with mounting post holes having a vertically depending shaft and openings in the side and bottom of the post hole to allow for bolts to pass through for securing the stake/post in position.
McIntosh discloses attaching a threaded bolt to a truck bed side wall mount and mounting post hole from the mounting post hole bottom, the bolt threadedly connected through a hole in the post hole bottom into the mount.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Cole and/or McIntosh, to add a threaded bolt having a locking knob through the bottom of the mounting post hole, in order to better secure the post in position in the hole. For clarity, the nut of McIntosh is a locking knob to the extent claimed; alternately, although McIntosh discloses a nut, using a male fastener/threaded bolt with a locking knob as the connector and a female fastener/threaded opening in the post would be obvious as it constitutes at most a mere rearrangement of parts which does not patentably distinguish over the prior art (MPEP 2144.04).
As to claims 5-6, this combination is presented as an alternative rejection of those claims, as the combination also meets their limitations, and provides for fasteners through openings in the stake pocket more similar to that of the invention.
Response to Arguments
Applicant’s arguments filed 10/14/25 have been considered, but are largely either not persuasive or are moot in view of the new ground(s) of rejection.
It is noted that Applicant’s arguments regarding the amendments overcoming the drawing objections and some of the 112 rejections are persuasive, and as such those objections and rejections are no longer present and will not be further addressed.
In response to Applicant’s arguments that Maniscalco clamps only the top of the pickup truck sidewall and sides not utilize any of the shafts below the posts holes, see the rejection above and the portions of Maniscalco cited for these features, e.g. FIG. 8, which discloses a downwardly extending shaft for use with a stake pocket.
In response to Applicant’s arguments that there are no locking mechanisms in Maniscalco, see the rejection above, noting that the clamping screw of Maniscalco is a locking mechanism meeting the limitations of claim 1 and other claims, and/or the other references disclose and render obvious alternate locking mechanisms that meet the limitations of some of the dependent claims.
In response to applicant's argument that Maniscalco does not disclose sport equipment holders that provide for transport of sport equipment in an upright or vertical position because the example equipment shown in Maniscalco is held horizontally, 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. Examiner maintains that the Maniscalco rack is capable of holding appropriate equipment in a vertical, upright position (e.g. a plurality of skis could be located and held in this fashion by the strap).
In response to Applicant’s arguments that Maniscalco does not disclose holding sports equipment in an upright, vertical position, although Examiner disagrees with this assertion, in the interests of advancing prosecution and providing a rejection using art more similar to the invention as disclosed, see the new rejection above using the Reyes and Ng structures, which combination provides a sports equipment holder that holds sports equipment in an upright, vertical orientation.
In response to Applicant’s arguments that Maniscalco cannot serve as either a Section 102 or 103 reference because the structure described does not resemble the present invention, see the rejection of the claims above indicating how the Maniscalco structure discloses or renders obvious the claimed subject matter.
In response to Applicant’s arguments regarding claims 2-3, see the new rejection of claim 2 above in view of the amended claim language.
In response to Applicant’s arguments regarding claim 4, Examiner maintains the position that Maniscalclo does not indicate a specific angle but the drawings clearly show an angle of approximately 45 degrees, and so the selection of a 45 degree angle for the Maniscalco rack is a matter of obvious design choice well within the level of ordinary skill in the art. Applicant’s arguments that the specified angle provides some particular benefit with the invention does not obviate the fact that Maniscalco has an angle at or about the claimed angle and selecting the claimed angle would clearly be obvious in view of this. There is no inventive step in the mere selection of an appropriate angle at or near an angle that is known to be suitable for the intended purpose.
In response to Applicant’s arguments regarding claim 5 that Maniscalco does not disclose a locking mechanism to secure the L-shaped member 82 in position, Examiner maintains that the clamp screw 84 is a locking mechanism that serves this purpose, i.e. it will clamp the stake pocket that 82 extends into between 84 and 86 which will lock it in position as 84 will push on the stake pocket or some intervening structure which will serve to pull 86 towards the sidewall of the stake pocket between the two. Although Applicant argues that there is no disclosure in Maniscalco of what the threaded member of clamp 84 contacts or passes through to secure it in position, it will clearly contact either the stake pocket itself or some intervening portion of the truck bed sidewall. Examiner also notes the alternate rejection which uses the locking mechanism/fasteners/screws of Cole similar to that disclosed for the invention.
In response to Applicant’s arguments that there is no suggestion of a locking knob, keyway, or other mechanism in Maniscalco, see Maniscalco showing a knob at the end of the threaded clamp which will serve to turn the threaded clamp to lock and is therefore a locking knob.
In response to Applicant’s arguments regarding claim 6, it appears that Applicant has a narrower interpretation of the claim language than the broadest reasonable interpretation used in the rejection. Examiner maintains the position that “the locking knobs connect through the sport equipment mount and the hollow shaft” does not require that the locking knob pass through an opening in each, and that it is sufficient that the locking knobs serve to connect the parts through the use of the sport equipment mount and the hollow shaft. For clarity, the Maniscalco locking knob(s) pass through the sport equipment mount and clamp/connect using the hollow shaft as the shaft will contact 86 to secure/clamp the parts in position. Examiner notes alternately that the combination using the Cole attachment will have a bolt extending through the stake rail, pocket walls, and stake per Cole, which will also meet a more narrow interpretation of this limitation.
In response to Applicant’s arguments regarding the previous rejection of claim 8 that it is mere supposition and hindsight reconstruction, the previous rejection of claim 8 merely indicated that the structure of Maniscalco/the combination met the functional limitations of previous claim 8 (see the indefiniteness rejection for the indefinite scope of previous claim 8, as well as of new claim 8). Examiner maintains the position that the Maniscalco structure is capable of having additional mounts added to the pickup truck bed and so meets the limitations of previous claim 8 to the best of Examiner’s understanding of the indefinite scope of that claim, and also the limitations of current claim 8 to the best of Examiner’s understanding of the indefinite scope of that claim. In the interests of advancing prosecution, in view of the amended claim language a new rejection which modifies Maniscalco to add an additional sport equipment holder has been added.
In response to Applicant’s arguments regarding speculation as to shorter loads in the rejection of claim 8, that was merely a note of a potential obvious benefit of the use of additional sport equipment mounts, and the rejection of previous claim 8 did not in any way modify the structure of Maniscalco to meet the limitations of previous claim 8 which were considered to be merely functional as the broadest reasonable interpretation of the indefinite claim language. This language is not present in the current rejection as it was not in any way necessary for the rejection and appears to have merely caused confusion, and so arguments related to it are considered moot and will not be further addressed.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, all of the rejections take into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure and so the reconstruction is/was proper.
In response to Applicant’s arguments regarding claims 6-7 and the combination of the Maniscalco fastening structure with the Cole/McIntosh fastening structure or replacement of the Maniscalco structure with the Cole/Mcintosh structure, the combination merely involves combination prior art elements according to known methods to yield predictable results (i.e. using an additional fastener to better secure a part in position or a simple substitution of one known element for another to yield predictable results (i.e. substituting one stake pocket and truck sidewall fastener for another stake pocket and truck bed sidewall fastener) both of which are common example rationales supporting a conclusion of obviousness (see e.g. MPEP 2141(III)).
Applicant's arguments (e.g. general statements that the inventive structure has, e.g. “evaded notice or attempts to modify the structure by inventors since at least 1986, almost 40 year” with no evidence provided for this assertion) fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments (e.g. general statements that the inventive structure has, e.g. “evaded notice or attempts to modify the structure by inventors since at least 1986, almost 40 year” with no evidence provided for this assertion) do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
In response to Applicant’s arguments that the references do not disclose a locking knob as claimed, see the rejection above for details of how the prior art discloses or renders obvious a locking knob as claimed. Examiner notes that the clamp of Maniscalco has a large headed handle/knob that is a locking knob to the extent claimed. Although Applicant argues that the hand nuts of McIntosh are not locking knobs, Examiner respectfully disagrees, and maintains that a hand tightened nut is a knob within the ordinary meaning of that term, or alternately as noted in the rejection replacing it with a screw having a handle/knob similar to the clamping screw of Maniscalco would be obvious for the ordinary benefits of such as nuts and screws are common art known fasteners and ones with knobs to allow for rotation without a tool are similarly common and known in the art.
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 ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734