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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 17-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4 of prior U.S. Patent No. 11,708,018. This is a statutory double patenting rejection.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,708,018. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims.
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 1-20 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 is not clearly understood because the preamble introduces “a chassis”, “a flatbed tow truck”, and “a box compartment” and the body of the claim introduces structures with the same name. If the structures are the same, please change “a chassis”, “a flatbed tow truck”, and “a box compartment” in the body of the claim to –the chassis--, --the flatbed tow truck--, and –the box compartment--; respectively.
Claim 13 is not clearly understood because the preamble introduces “a tow truck” and the body of the claim introduces “a tow truck”. If the structures are the same, please change “a tow truck” to --the tow truck--.
Claim 17 is not clearly understood because the preamble introduces “a box compartment” and the body of the claim introduces “a box compartment”. If the structures are the same, please change “a tow truck” to --the tow truck--.
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 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.
Claims 1-9 and 11-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deets (US 2004/0062620).
Deets discloses a frame that can be attached to a chassis of a flatbed tow truck for attachment of a box compartment over and around the flat bed. The frame (66) comprises a left side structure (68,72,74) and a mirrored right side structure, as shown in Figure 8. The right and left side structures are connectable to respective sides of a box compartment (8) as shown in Figure 4 and disclosed in paragraph [0054]. The left side structure (68,72,74) is oriented generally vertically and the right side structure is oriented generally vertically, as shown in Figure 8. Each cross beam (78) is connected at a first end perpendicularly to the left side structure and a second end perpendicularly to the right side structure, as shown in Figures 8 and 10. At least one vertical beam (72) forms the vertical connection beam. The vertical connection beam is an integral part of the left and right side structures and is oriented vertically for attachment to the box compartment (8), as shown in Figure 8. The frame (66) can be attached to a bottom side of a flatbed tow truck to support and secure the box. In reference to claims 2, 3, and 13, each side structure has a side support beam (74,76), a horizontal connection beam (68,70), and two or more vertical support beams (72), as shown in Figure 8. In reference to claims 4, 5, and 13, the side support beams (74,76) are connected to the respective side horizontal connection beam (68,70) by two or more vertical support beams (72), as shown in Figure 8. In reference to claims 6 and 13, each of the left and right side structures comprises one or more vertical support beams (72), as shown in Figure 8. In reference to claims 7 and 14, the vertical connection beams (72) comprises front left, front right, rear left, and rear right vertical connection beams that are connectable near corresponding front left, front right, rear left, and rear right corners of the box compartment (8), as shown in Figures 4, 5, and 8. In reference to claims 8, 9, 12, and 15, stabilization beams are formed by vertically oriented, diagonal beams connecting between side support beams (74,76) and cross beams (64), as shown in Figure 8. In reference to claims 8, 9, and 11, stabilization beams (80,82) are connected in a generally horizontal orientation perpendicularly between two of the at least two cross-beams (78), as shown in Figure 10 and disclosed in paragraph [0055]. In reference to claim 13, the frame (66) is attached to a chassis of a tow truck (2), as shown in Figures 1, 4, and 8. In reference to claim 16, the frame assembly comprises a box compartment (8), as shown in Figure 4.
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Deets (US 2004/0062620) in view of Gaspard, II et al. (6,241,308).
Deets does not disclose a horizontally oriented, diagonal stabilization beam.
Gaspard, II et al. teaches providing a horizontally oriented, diagonal stabilization beam between side support beam (820) and one of the cross members, as shown in Figure 8(c).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a providing a horizontally oriented, diagonal stabilization beam between side support beam and one of the cross members of Deets, as taught by Gaspard, II et al., to improve the strength and rigidity of the frame.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY A BLANKENSHIP whose telephone number is (571)272-6656. The examiner can normally be reached 7-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Weisberg can be reached at 571-270-5500. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GREGORY A. BLANKENSHIP
Examiner
Art Unit 3612
/GREGORY A BLANKENSHIP/Primary Examiner, Art Unit 3612 September 23, 2025