Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
2. 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 turnbuckle mechanism of claim 8 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
3. 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 truck bed channel, as recited in claims 7 and 20, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
4. 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.
Claim Rejections - 35 USC § 103
5. 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.
6. 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.
7. Claims 1-3, 5, 6, 10-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 9,168,874 B2) in view of Camozzato (BR 202021014136 U2).
Regarding claim 1, Smith discloses a truck storage system, comprising: a deck (10) configured to span substantially a total width of a truck bed; a center support (20) extending in a longitudinal direction of the truck bed and configured to support the deck (see Figure 2); at least one drawer assembly (60) with the center support on a second side (see Figure 2), the drawer assembly configured to be slidable in the longitudinal direction of the truck bed; and at least one storage compartment (39 or 49) situated between the at least one drawer assembly (60) and a side of the truck bed (see Figures 2, 24, and 26). Smith fails to disclose four support feet, each support foot situated at a respective corner of the truck bed and proximate the ends of the center support and on one side of the drawer assembly, wherein the at least one storage compartment is structurally separate from the support feet. Camozzato teaches that it was already known for a truck storage system like that of Smith to include four support feet (29 - see Figure 24), each support foot situated at a respective corner of the truck bed and serving to adjust the height at which the storage unit is positioned (see [042] and [043]), the support feet being structurally separate from storage compartments of the storage system (see Figures 23 and 24). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided feet on the bottom of the Smith storage compartments, at the corners of the truck bed, the motivation being to allow for height adjustment of the storage system in the manner taught by Camozzato.
Regarding claim 2, Smith as modified above would include the system of claim 1, wherein Smith discloses the at least one storage compartment is at least substantially waterproof (see “to direct water or other substances away from the compartment 39,49 and down toward the truck bed” in col. 7 lines 7-10).
Regarding claim 3, Smith as modified above would include the system of claim 1, wherein Smith discloses the at least one storage compartment includes at least two storage compartments (39 and 49), wherein a first of the two storage compartments would be situated adjacent the rear support foot (proximate the corner of the truck bed, as taught by Camozzato) and a second of the two storage compartments would be situated adjacent the front support foot on the first side of the deck (proximate the corner of the truck bed, as taught by Camozzato).
Regarding claim 5, Smith as modified above would include the system of claim 1, Smith further disclosing at least one storage cover (50) to cover the at least one storage compartment. Smith fails to disclose the at least one storage cover being approximately twice a length of a respective storage compartment. Smith appears to show the cover having the same length as the storage compartment but discloses no criticality to such design. A person of ordinary skill in the art at the time Applicant’s invention was effectively filed would have found it to be an obvious matter of design choice to have changed the size of the Smith covers, in this case to be a size twice the length of the storage compartments, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 6, Smith as modified above would include the system of claim 1, further comprising: at least two tie down attachment members (34,44), each tie down attachment member situated between the at least one drawer assembly and the side of the truck bed, as taught by Smith
Regarding claim 10, Smith as modified above would include the system of claim 1, wherein Smith discloses the at least one drawer assembly includes at least two drawer assemblies (60) that are nestable for packaging, shipping and/or storage (see col. 2 lines 31-33 and Figures).
Regarding claim 11, Smith as modified above would include the system of claim 1, but so far fails to include wherein the at least one drawer assembly has side walls that slope at an angle of at most 1 degree. A person having ordinary skill in the art at the time Applicant’s invention was effectively filed would have realized through their own available knowledge and reasoning that a tapered shaped would make it easier to nest the drawers (such nesting originally intended by Smith, see col. 9 lines 26-29) as the taper would work to guide one drawer into another and would have found it obvious to have tapered the Smith drawers at an angle of at most 1 degree for this reason. Furthermore, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. A Change in aesthetic (ornamental) design generally will not support patentability. In re Seid, 73 USPQ 431.
Regarding claim 12, Smith as modified above would include the system of claim 1, wherein Smith discloses the at least one drawer assembly is configured to extend outward of the deck by at least 75% of a length of the at least one drawer assembly (see “remove the drawer assemblies” in col. 9 lines 31-57).
Regarding claim 13, Smith as modified above would include the system of claim 1, wherein Smith discloses an upper surface (11) of the deck has a raised pattern (see col. 4 lines 51-65) configured to engage a relief pattern on an underside of at least one accessory case (accessory case not currently being claimed in combination due to the functional language “configured to engage”) to thereby create a positive-fit connection between the deck and the at least one accessory case.
Regarding claim 14, Smith as modified above would include the system of claim 13, wherein Smith discloses the raised pattern covers a majority of the upper surface of the deck (see Figure 1).
Regarding claim 15, Smith as modified above would include the system of claim 13, further comprising: at least two tie down attachment members (54), each tie down attachment member situated between the at least one drawer assembly and the side of the truck bed, wherein an area (within the feet) between the at least two tie down attachment members does not contain the raised pattern, as taught by Smith.
Regarding claim 16, Smith as modified above would include the system of claim 1, wherein Smith discloses the deck includes two deck halves (10L,10R) configured to interleave with each other above the center support.
Regarding claim 17, Smith as modified above would include the system of claim 1, wherein Camozzato disclose the front support foot and the rear support foot are dimensionally different (see Figure 24 where front feet are longer than rear feet).
Regarding claim 19, Smith discloses a truck storage system, comprising: a deck (10) configured to span substantially a total width of a truck bed; a center support (20) extending in a longitudinal direction of the truck bed and configured to support the deck (see Figure 2); at least one drawer assembly (60) with the center support on a second side (see Figure 2), the drawer assembly configured to be slidable in the longitudinal direction of the truck bed; and at least one storage compartment (39 or 49) situated between the at least one drawer assembly (60) and a side of the truck bed (see Figures 2, 24, and 26). Smith fails to disclose four support feet, each support foot situated at a respective corner of the truck bed and proximate the ends of the center support and on one side of the drawer assembly. Camozzato teaches that it was already known for a truck storage system like that of Smith to include four support feet (29 - see Figure 24), each support foot situated at a respective corner of the truck bed and serving to adjust the height at which the storage unit is positioned (see [042] and [043]), the support feet being structurally separate from storage compartments of the storage system (see Figures 23 and 24). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided feet on the bottom of the Smith storage compartments, at the corners of the truck bed, the motivation being to allow for height adjustment of the storage system in the manner taught by Camozzato.
8. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 9,168,874 B2) in view of Camozzato (BR 202021014136 U2) as applied above, further in view of Martin (US 8,210,591 B2).
Regarding claim 4, Smith as modified above would include the system of claim 1, but so far fails to include wherein the at least one storage compartment (39 or 49) is fully removable. Martin teaches that it was already known in the art for a storage system deck like that of Smith to include covered openings through which storage compartments (400) are removable in order to take small pieces or tools to a work site (see col. 8 lines 42-59). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention as effectively filed to have provided the modified Smith system with additional deck openings with removable storage compartments therein, the motivation being to allow a user to take small pieces or tools to a work site, as taught by Martin.
9. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 9,168,874 B2) in view of Camozzato (BR 202021014136 U2) as applied above, further in view of Bullock (US 7,134,819 B2) and Furniss (US 10,668,870 B2).
Regarding claim 9, Smith as modified above would include the system of claim 6, but so far fails to include wherein each of the at least two tie down attachment members include an attachment ring configured to fold down into a recessed cavity of the deck and to rotate upward and swivel. Bullock teaches tie down attachment members (10) that include an attachment ring (22 or 26) configured to fold down into a recessed cavity (see Figures) and to rotate upward (see col. 2 lines 65-66) and swivel (see col. 3 lines 4-18). Furniss teaches that it was already known to provide tie downs (107-112) on the upper surface of a system like that of Smith. It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided tie downs like those of Bullock on the upper surface of the modified Smith system, where such inclusion was already known in the art, as shown by Furniss, with the motivation being to allow a user to attach additional items atop the Smith system or allow a user to attach a hoist for lifting the modified Smith system out of the truck bed.
10. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 9,168,874 B2) in view of Camozzato (BR 202021014136 U2) as applied above, further in view of Smith (US 2017/0136958 A1).
Regarding claim 18, Smith as modified above would include the system of claim 1, but so far fails to include at least one closeout member which is configured to provide stability to the deck and to prevent an ingress of water into the at least one drawer assembly. Smith ‘958 teaches that a system like that of Smith ‘874 can include a front support member (31, see Figures 32-33) that clearly attaches to one end of the system to provide support and effectively close off the front end. It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the modified Smith system with a front support closeout member, where such inclusion was already known in the art, as shown by Smith ‘958, with the motivation being to provide structural support and effectively close off the front end and effectively prevent debris and water from entering the system.
11. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 9,168,874 B2) in view of Camozzato (BR 202021014136 U2) as applied above, further in view of Bossenbroek et al. (US 2021/0221276 A1).
Regarding claim 20, Smith as modified above would include a truck storage system, comprising: a deck (10) configured to span substantially a total width of a truck bed, as taught by Smith; four support feet, each support foot situated at a respective corner of the truck bed (truck bed being claimed in combination due to the positive structural recitation “situated at”) and configured to support the deck, as taught by Camozzato; a center support (20) extending in a longitudinal direction of the truck bed between the support feet and configured to support the deck (see Figure 2), as taught by Smith; at least one drawer assembly (60) situated between a front support foot of the four support feet and a rear support foot of the four support feet on a first side, and the center support on a second side (see Figure 2), the drawer assembly configured to be slidable in the longitudinal direction of the truck bed, as taught by Smith; and at least one storage compartment (39 or 49) situated (i) external to the at least one drawer assembly (60) and (ii) between the at least one drawer assembly and a side of the truck bed, as taught by Smith, wherein the at least one storage compartment is structurally separate from the support feet; at least one tie down attachment member (33 or 34), the tie down attachment member situated between the at least one drawer assembly and the side of the truck bed, as taught by Smith. Smith fails to disclose at least one bracket, wherein the at least one bracket connects the tie down attachment member to a channel extending in a longitudinal direction of the truck bed. Smith generally discloses the use of “J-hooks, brackets and/or fasteners” for attaching the system to the truck bed (see col. 1 line 66 - col. 2 line 4) but doesn’t specifically mention a bracket as claimed. Bossenbroek teaches that it was already known to attach a truck bed accessory using a bracket (12) that attaches the accessory to a channel (18b) extending in a longitudinal direction of the truck bed. It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have considered any known and suitable fastener for attaching the modified Smith system to the truck bed, in this case choosing to use a channel bracket, where channel brackets were already known to be suitable for such use, as shown by Bossenbroek. Such a bracket would effectively attach the entire Smith system and all of its parts, including the tie downs, to the truck bed channel.
Double Patenting
12. 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).
13. 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).
14. 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.
15. 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.
16. Claims 1, 3, 4, 10, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 9,168,874. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the presently recited structure can be found in the patented claims.
Regarding claim 1, see patented claims 2, 12, 13, and 15 where claim 13 recites compartments which are structurally separate from the support feet due to the “further comprising” language of claim 17.
Regarding claim 3, see patented claim 12.
Regarding claim 4, see patented claim 13 (covers including compartments and covers being removable otherwise compartments of claim 12 wouldn’t be accessible).
Regarding claim 10, see patented claim 18.
Regarding claim 19, see patented claims 2, 12, and 15.
Allowable Subject Matter
18. Claims 7 and 8 are allowable over the art of record.
Response to Arguments
19. Applicant’s arguments filed 9/22/25 with respect to the Double Patenting Rejection have been fully considered but are not persuasive. The current claim amendments do not change the fact that the patented claims include structure equivalent to the current claims as presented in paragraph 17 above.
20. Applicant’s arguments filed 9/22/25 with respect to the Drawings Objections have been considered but are not persuasive. Applicant has argued that one of ordinary skill in the art would understand the turnbuckle and truck bed channel features without need for drawings. Rule 37 CFR 1.83(a) is very clear that all claimed features must be shown in the drawings. Whether the features would be understood by a person of ordinary skill in the art does not come into play here.
21. Applicant’s arguments filed 9/22/25 with respect to the previously applied prior art rejections have been fully considered and are persuasive but are also moot in view of the new grounds of rejection.
Conclusion
22. 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.
23. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN MATTHEW LARSON whose telephone number is (571)272-8649. The examiner can normally be reached Monday-Friday, 7am-3pm. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUSTIN M LARSON/Primary Examiner, Art Unit 3734 1/5/26