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 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.
Claim(s) 1-4, 6-11, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hupp et al. (US 3381654, hereinafter ‘Hupp’).
Hupp discloses a tool capable of use for tailgate pad installation comprising: a strap receiving portion of said tool(see annotated Figure below), wherein a slot (between 2 and 6) passes through the strap receiving portion, the slot capable of receiving a strap of a tailgate pad (functional/intended use limitation); said slot disposed proximate a first end of said strap receiving portion (see Fig. 2) and a retaining portion of said tool (see annotated Figure below), said retaining portion having a first end (bottom end) proximate said first end of said strap receiving portion when said retaining portion and said strap receiving portion are disposed in a substantially coplanar arrangement (see Fig, 2), wherein said strap receiving portion and said retaining portion are bendable with respect to each other such that said first end of said retaining portion and said first end of said strap receiving portion are configurable to have a separation distance formed therebetween (functional/intended use limitation), said separation distance sufficient to enable said strap receiving portion to be disposed between a gap between a tailgate and a bed of a vehicle while said retaining portion is disposed within said bed of said vehicle, wherein said retaining portion is further configured to prevent said tailgate pad installation tool from falling through said gap between said tailgate and said bed of said vehicle during installation of said tailgate pad (functional/intended use limitation).
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The initial statement of intended use and all other functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by Hupp which is capable of being used in the intended manner, i.e., as a tailgate pad strap installation tool. There is no structure in Swallow that would prohibit such functional intended use (see MPEP 2111).
Hupp further discloses the strap receiving portion and the retaining portion are formed from the same piece of material (col. 2, ll. 50-55); an angled end (@ corners of 1), wherein the angled end is cut at an angle to allow the installation tool to fit through the gap easier (functional/intended use limitation); the slot is cut such that it is parallel to the end of the strap receiving portion (see Fig. 2); the slot is slightly wider than a target strap thickness such that when the target strap is pulled, friction causes the strap to bind in the slot (functional/intended use limitation); the retaining portion is opened into an L position such that the strap receiving portion is slotted through the gap, and the retaining portion is resting against said bed of said vehicle and preventing the tailgate pad installation tool from falling all the way though the gap (functional/intended use limitation).
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.
Claim(s) 5 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hupp et al. (US 3381654, hereinafter ‘Hupp’).
Hupp discloses all limitations of the claim(s) as detailed above except does not expressly disclose the slot being angled with respect to the end of the strap receiving portion as claimed.
However, varying the positioning of the slot so that it would be angled was well within the level of ordinary skill in the art at the time of the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to angle the slot with respect to the end of the strap receiving portion, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim(s) 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gu (US 2022/0379817) in view of Hupp et al. (US 3381654, hereinafter ‘Hupp’).
Gu discloses a tailgate pad kit comprising a front side (12); a plurality of front side straps (51) coupled to the front side; a back side (11); a plurality of strap retaining features (52) coupled to the back side; a top side (top in Fig. 2); except does not expressly disclose the installation tool as claimed.
Hupp discloses a tool capable of use for tailgate pad installation comprising: a strap receiving portion of said tool (see annotated Figure below), wherein a slot (between 2 and 6) passes through the strap receiving portion, the slot capable of receiving a strap of a tailgate pad (functional/intended use limitation); said slot disposed proximate a first end of said strap receiving portion (see Fig. 2) and a retaining portion of said tool (see annotated Figure below), said retaining portion having a first end (bottom end) proximate said first end of said strap receiving portion when said retaining portion and said strap receiving portion are disposed in a substantially coplanar arrangement (see Fig, 2), wherein said strap receiving portion and said retaining portion are bendable with respect to each other such that said first end of said retaining portion and said first end of said strap receiving portion are configurable to have a separation distance formed therebetween (functional/intended use limitation), said separation distance sufficient to enable said strap receiving portion to be disposed between a gap between a tailgate and a bed of a vehicle while said retaining portion is disposed within said bed of said vehicle, wherein said retaining portion is further configured to prevent said tailgate pad installation tool from falling through said gap between said tailgate and said bed of said vehicle during installation of said tailgate pad (functional/intended use limitation).
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All of the component parts are known in Gu and Hupp. The only difference is the combination of all the known elements into a single device by adding the tool taught by Gu alongside the pad assembly taught by Hupp.
Thus, it would have been obvious to one having ordinary skill in the art to add the tool taught by Gu alongside the pad assembly taught by Hupp, since the tool in no way affects the other functions of the pad assembly and the tool can be used in combination with a pad assembly to achieve the predictable results of securely connecting the pad to a vehicle tailgate.
The initial statement of intended use and all other functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by Hupp which is capable of being used in the intended manner, i.e., as a tailgate pad strap installation tool. There is no structure in Hupp that would prohibit such functional intended use (see MPEP 2111).
Hupp further discloses the strap receiving portion and the retaining portion are formed from the same piece of material (col. 2, ll. 50-55); an angled end (@ corners of 1), wherein the angled end is cut at an angle to allow the installation tool to fit through the gap easier (functional/intended use limitation); the slot is cut such that it is parallel to the end of the strap receiving portion (see Fig. 2); the slot is slightly wider than a target strap thickness such that when the target strap is pulled, friction causes the strap to bind in the slot (functional/intended use limitation); the retaining portion is opened into an L position such that the strap receiving portion is slotted through the gap, and the retaining portion is resting against said bed of said vehicle and preventing the tailgate pad installation tool from falling all the way though the gap (functional/intended use limitation).
Regarding claim 19, Gu as modified above discloses all limitations of the claim(s) as detailed above except does not expressly disclose the slot being angled with respect to the end of the strap receiving portion as claimed.
However, varying the positioning of the slot so that it would be angled was well within the level of ordinary skill in the art at the time of the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to angle the slot with respect to the end of the strap receiving portion, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Response to Arguments
Applicant's arguments filed 2/9/2026 have been fully considered but they are not persuasive.
Applicant’s arguments and amendments center around the idea of defining the strap receiving portion and the retaining portion of the tool as being part of a ‘tailgate pad installation tool’, as claimed in the preamble of the claims.
These arguments and amendments have been considered, however are not persuasive.
The applicant is reminded that Claim preamble language may not be treated as a limitation where it merely states an intended use of the system and is unnecessary to define the invention, (Catalina Marketing Int'l Inc. v. Coolsavings. com Inc., Fed. Cir., No. 01-1324, 5/8/02). Furthermore, it should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. In re Schreiber, 128 F.3d 1473, 1477-78,44USPQ2d, 1429, 1431-.2 (Fed. Cir. 1997); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 ,15 USPQ2d 1525, 1528 (Fed. Cir. 1990); Ex parte Masham, 2USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987).
For the reasons stated above, as well as those set forth in the rejections above, applicant’s arguments and amendments are not persuasive and the rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 PETER N. HELVEY whose telephone number is (571)270-1423. The examiner can normally be reached Monday-Friday 10am-7pm EST.
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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/PETER N HELVEY/Primary Examiner, Art Unit 3734
April 14, 2026
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