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 .
This is a non-final Office Action after Request For Continued Examination (RCE for serial number 18/366,103, Universal Accessory Surface Mount, filed on August 7, 2023.
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 1-2, and 4-25 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, lines 8-9, “an opening of the central insert” – is it the same as in line 5, “wherein the central insert is open”?
Claim 25, line 10, “an opening of the central insert” – is it the same as in line 4, “wherein the central insert is open”?
Claim Rejections - 35 USC § 102
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 1-2, 4-12, 14-18, and 21-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 10,767,684 to Meine et al. (Meine).
Regarding claim 1, Meine ‘684 discloses a surface mount (Fig. 3D – see marked up below) comprising: a flange (see Fig. 3D) having two sides (front and back sides) and an outer rim (outer edge) defining an outer perimeter (furthest boundary of top surface), the flange comprising a central insert (threaded aperture) that is open and recessed on a first side of the two sides and closed (closed bottom) on a second side of the two sides, wherein the first side of the flange defines a planar surface across its entirety, the planar surface extending from the outer perimeter of the surface mount to a perimeter edge of an opening of the central insert, with the central insert flush with the first side (Fig. 3D), and wherein the central insert is threaded (with threaded bolt) internally from the first side, and wherein the surface mount further comprises a surface of a roof of a structure like a camper to which the surface mount is attached.
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Regarding claim 2, Meine ‘684 discloses wherein the central insert is closed and protruded on the second side (Fig. 3D – central bottom portion).
Regarding claims 4-5, Meine ‘684 discloses a plurality of holes (13 – fasteners go in) through the two sides, wherein an opening of the central insert at the first side and openings of the plurality of holes at the first side lie on a same plane.
Regarding claim 6, Meine ‘684 discloses a screw / bolt that fits at least one of the plurality of holes (Fig. 3D).
Regarding claims 7-9, Meine ‘684 discloses wherein the central insert is configured to accept any inserts or adapter (functional language).
Regarding claim 10, Meine ‘684 discloses wherein the flange (bottom) and the central insert (Fig. 3D) are circular.
Regarding claim 11, Meine ‘684 discloses a surface to which the surface mount is attached (Fig. 3D).
Regarding claim 12, Meine ‘684 discloses wherein the surface comprises a clearance hole on the surface configured to receive the central insert of the surface mount (clear insert in Fig. 3D).
Regarding claim 14, Meine ‘684 discloses a hole through the two sides for fasteners (Fig. 3D.
Regarding claim 15, Meine ‘684 discloses wherein the bolt is configured to fit the hole.
Regarding claim 16, Meine ‘684 discloses wherein the surface mount is attached to the surface by the bolt through the hole.
Regarding claim 17, Meine ‘684 discloses wherein the surface further comprises a hole on the surface.
Regarding claim 18, Meine ‘684 discloses wherein the number of holes of the surface mount is the same as the number of the holes of the surface.
Regarding claim 21, Meine ‘684 discloses wherein the surface is other surface.
Regarding claims 22-23, Meine ‘684 discloses wherein the second side is flat and is free from being threaded (see Fig. 3D).
Regarding claim 24, Meine ‘684 discloses wherein the first side and the second side is connected by a surface (inner surface between first side and second side – Fig. 3D).
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 13 is rejected under 35 U.S.C. 103 as being unpatentable over as being anticipated by Meine ‘684 in view of U.S. Patent No. 4,511,183 to Spiegel et al. (Spiegel).
Regarding claim 13, Meine ‘684 fails to disclose wherein the surface mount is attached to the surface by an adhesive. Nevertheless, Spiegel ‘183 discloses an adhesive between two flanges 58, 60. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface mount and the surface of Meine ‘684 to include the adhesive because one would have motivation to provide a sturdy bond between the two surfaces as taught by Spiegel ‘183.
Claims 19-20, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over as being anticipated by Meine ‘684
Regarding claims 19-20, 25, Meine ‘684 discloses the previous invention wherein the surface mount on a roof, but doesn’t disclose wherein the surface is of a vehicle or a camper. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roof surface of Meine ‘684 to include the roof of a vehicle or a camper since it was known in the art that the surface mount can be used on any surface including the roof of a vehicle or camper and it appears that the invention would perform equally and would be within the level of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed January 7, 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Meine does not anticipate the first side of the flange defines a planar surface across its entirely, the planar surface extending from the outer perimeter of the surface mount to a perimeter edge of an opening of the central insert. The examiner respectfully disagrees. Applicant will see a marked-up Figure 3D below where the “shade color” is the first side with a planar surface across its entirety extending from the outer perimeter to a perimeter edge of the opening of the central insert. Therefore, Meine’s reference meets the limitations of claims 1 and 25.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TODD M. EPPS whose telephone number is (571) 272-8282. The examiner can normally be reached Monday-Friday 8am - 5pm.
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/TODD M EPPS/Primary Examiner, Art Unit 3632 March 16, 2026