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 .
Examiner acknowledges the response filed 10/3/2025. Claims 2, 7, and 14 were additionally cancelled. Claims 1, 3-6, 8, 11-13, and 15-18 remain pending in the application.
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.
Claim 1 and 11 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 2, and 5 of prior U.S. Patent No. 11,761,232. 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 3-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,761,232. Examiner notes that claims 3-6 of the instant application requires the limitations found in separate dependent claims 3, 4, and 7 of USPN ‘232, however, it would have been obvious to one having ordinary skill in the art to have provided both of these limitations in the device of claim 1 of USPN ‘232 to arrive at the device of claims 3-6 of the instant application. Examiner also notes that circular and rectangular straps are well-known in the art. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to have provided the strap be circular or rectangular, as is well-known, for the purpose of accommodating and adapting to a respectively shaped post being used.
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 5, 6, 12-13 and 15-18 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.
Re Clm 5: This claim recites “a connection bolt” which has already been set forth in claim 1. It is unclear to the Examiner if this is the same bolt or if this limitation is attempting to claim a second bolt.
Re Clm 6: This claim recites “a fence connection plate”, which has already been set forth in claim 1. It is unclear to the Examiner if this is the same plate or if this limitation is attempting to claim a second plate.
Re Clm 6: This claim recites “the connection bolts”. Examiner notes that “at least one tube…wherein each tube has a connection bolt”. Therefore, it is unclear if Applicant is attempting to claim multiple connection bolts or if this should be corrected to “the at least one connection bolt”.
Re Clm 12: This claim recites “the connection bolts” in line 9. Examiner notes that “at least one tube…wherein each tube has a connection bolt”. Therefore, it is unclear if Applicant is attempting to claim multiple connection bolts or if this should be corrected to “the at least one connection bolt”.
Re Clm 17: Examiner notes that Claim 12 uses the transitional phrase “consisting of”, however this claim recites “further comprising”. It is unclear as to what is being required by the combination of “consisting of” (clm 12) and “further comprising” (clm 17).
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 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 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hill (US 9115506).
Re Clm 1: Hill discloses an adjustable fence post coupler, comprising: a fence post coupler strap (105); at least one tube (108, 109) is connected to an exterior of the fence post coupler strap; each tube has a connection bolt (148) located movably through the tube; the connection bolt is connected to a fence connection plate (130). Hill also discloses a tightening bolt (168) configured to tighten the fence post coupler strap.
Hill discloses wherein the fence post coupler strap is a solid, but fails to disclose wherein the strap is flexible. Examiner takes OFFICIAL NOTICE that post straps are well-known to be flexible to accommodate and adapt to different sized posts being used. Examiner also notes that it is disclosed that the strap is made from sheet metal. Sheet metal is well-known to be flexible to bend, shape, and form the metal into various configurations. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to have provided the strap of Hill to be a flexible strap, as is well-known, for the purpose of accommodating and adapting to different sized posts being used.
Re Clm 3: Hill as modified above discloses wherein the fence post coupler strap is circular.
Re Clm 4: Hill as modified above fails to disclose wherein the fence post coupler strap is rectangular. Examiner takes OFFICIAL NOTICE that post straps are well-known to take the shape of the posts being used. Examiner notes that rectangular straps are well-known in the art. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to have provided the strap of Hill to be rectangular, as is well-known, for the purpose of accommodating and adapting to a rectangular shaped post being used.
Re Clm 5: Hill discloses at least one nut (see fig 9, through which the connection bolt is passed) located on each connection bolt.
Re Clm 6: Hill discloses (throughout disclosure) a threaded connection on a fence connection plate (configured to engage the threads of the bolts), wherein the connection bolts are connected to the fence connection plate via the threaded connection.
Allowable Subject Matter
Claims 12-13 and 15-18 would be allowable if rewritten or amended to overcome the rejection(s) of claims 12 and 17 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 8 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 10/3/2025 have been fully considered but they are not persuasive.
Applicant argues that the amendments to claim 1 overcome the Double Patenting rejection. Examiner disagrees and notes that the amendments to claim 1 do not overcome the rejection, see above rejection.
Applicant's arguments of allowability over the prior art 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 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 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 JONATHAN PETER MASINICK whose telephone number is (571)270-3060. The examiner can normally be reached Monday-Friday 8a-5p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN P MASINICK/Primary Examiner, Art Unit 3678