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) 43-45 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kennedy et al., U.S. Patent Application Publication 2022/0195728.
Regarding claim 43, Kennedy discloses a ceiling clip comprising: a mounting flange (22) comprising a top surface (surface adjacent 24/26) opposite a bottom surface (opposite surface) and a perimeter extending between the top surface and the bottom surface (as shown in Fig. 4); an opening (34) located inset from the perimeter of the mounting flange (see Fig. 4) that extends continuously between the upper surface and the lower surface of the mounting flange; a first member (24) extending upwards from the mounting flange; a second member (26) extending upwards from the mounting flange; a first mounting member (28) extending from the first positioning member; and a second mounting member (30) extending from the second positioning member; wherein the first mounting member and the second mounting member are configured to couple with a torsion spring to secure the panel in the ceiling system (depending on the shape of the spring, the hook members are capable of being coupled, either directly or via intermediate components, to the hook components. The phrase “configured to couple with a torsion spring to secure the panel in the ceiling system” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 44, Kennedy discloses a ceiling clip wherein a first axis extends through the opening in a direction that is orthogonal to the bottom surface of the mounting flange (vertical center axis of 22), and wherein the first member and the second member are positioned about the first axis and offset by about 180 degrees as measured about the first axis (as the present invention is offset, see Fig. 2).
Regarding claim 45, Kennedy discloses a ceiling clip wherein the first mounting member and the second mounting member are configured to couple with a torsion spring to secure the panel in the ceiling system (in the same manner as the present invention, a spring can be slipped over the hook portions). The phrase “configured to couple with a torsion spring to secure the panel in the ceiling system” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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 (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 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) 1-6, 9, 11, 13-15, 40-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kennedy et al., U.S. Patent Application Publication 2022/0195728 in view of Chen, U.S. Patent 11,421,812.
Regarding claim 1, Kennedy discloses a ceiling clip comprising: a mounting flange (22) comprising a top surface (surface adjacent 24/26) opposite a bottom surface (opposite surface) and a perimeter (see Fig. 1) extending between the top surface and the bottom surface; a first positioning member (24) extending upwards from the mounting flange; a second positioning member (26) extending upwards from the mounting flange; a first hook member (28) extending from the first positioning member; a second hook member (30) extending from the second positioning member; wherein the mounting flange comprises a keyhole (34) located inset from the perimeter of the mounting flange and extending continuously from the top surface to the bottom surface of the mounting flange (see Fig. 5); wherein the first positioning member and the second positioning member are positioned about a first axis extending through the keyhole and are offset by about 180 degrees as measured about the first axis (see Fig. 4), as best understood in light of the specification as with the present invention, the positioning members are positioned 180 degrees from one another as measured radially around the first axis; and wherein the first hook member and the second hook member are configured to couple with a torsion spring (in the same manner as the present invention, a spring can be slipped over the hook portions), but does not disclose wherein the first hook member and the second hook member each comprise a distal end that faces a respective positioning member. Chen teaches hook members having a distal end which extends in a direction facing a positioning member (see Fig. 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to produce the hooks with an additional fold for increased strength in the hook portions, and depending on the method of production. The phrase “configured to couple with a torsion spring” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 2, Kennedy discloses a ceiling clip wherein the perimeter of the mounting flange comprises a first edge opposite a second edge and a third edge opposite a fourth edge, wherein the first positioning member is adjacent the third edge and the second positioning member is adjacent the fourth edge (see Fig. 4 reproduced below).
PNG
media_image1.png
408
600
media_image1.png
Greyscale
Regarding claim 3, Kennedy discloses a ceiling clip wherein a first axis extends through the keyhole in a direction that is orthogonal to the bottom surface of the mounting flange (see Fig. 2, generally).
Regarding claim 4, Kennedy discloses a ceiling clip wherein the first hook member extends outward from the first positioning member in a direction away from the first axis (the first axis being through the keyhole in a vertical direction as shown in Fig. 2; see Fig. 2).
Regarding claim 5, Kennedy discloses a ceiling clip wherein the second hook member extends outward from the second positioning member in a direction away from the first axis (the first axis being through the keyhole in a vertical direction as shown in Fig. 2; see Fig. 2).
Regarding claim 6, Kennedy discloses a ceiling clip wherein the first hook member and the second hook member extend outward in opposite horizontally directions away from the first axis (the first axis being through the keyhole in a vertical direction as shown in Fig. 2; see Fig. 2).
Regarding claim 9, Kennedy discloses a ceiling clip wherein the first positioning member extends from a first lower edge to a first upper edge, and the first positioning member has a first positioning height as measured from the first lower edge to the first upper edge, and wherein the second positioning member extends from a second lower edge to a second upper edge, and the second positioning member has a second positioning height as measured from the second lower edge to the second upper edge (see Fig. 2).
Regarding claim 11, Kennedy discloses a ceiling clip wherein the first positioning height and the second positioning height are substantially equal (see Fig. 2).
Regarding claim 13, Kennedy discloses a ceiling clip wherein the first hook member extends between a first proximal end (adjacent 24 upper edge) to a first distal end (opposite end), the first proximal end of the first hook member located adjacent to the first upper edge of the first positioning member (see Fig. 2), and wherein the second hook member extends between a second proximal end (adjacent 26 upper edge) to a second distal end (opposite end), the second proximal end of the second hook member located adjacent to the second upper edge of the second positioning member (see Fig. 2).
Regarding claim 14, Kennedy in view of Chen, as modified, discloses a ceiling clip but does not specifically disclose wherein the first distal end of the first hook member is located vertically between the first upper edge and the first lower edge of the first positioning member, and wherein the first distal end of the first hook member is located vertically between the first upper edge and the first lower edge of the first positioning member. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, depending on the method of production, that the intersection between 24 and 28 be at a sharp right angle. The upper edge and lower edge of 24 would then define the entire apparatus height. The distal edge of the hook member would then be at a location vertically between the full apparatus height, or vertically between the upper and lower edges of the positioning member (see Fig. 2, generally).
Regarding claim 15, Kennedy discloses a ceiling clip wherein the first distal end of the first hook member is horizontally offset from the first positioning member by a first hook offset distance and wherein the second distal end of the second hook member is horizontally offset from the first positioning member by a first hook offset distance (as shown in Fig. 2).
Regarding claim 40, Kennedy discloses a ceiling clip comprising: a mounting flange (22) comprising a top surface (surface adjacent 24/26) opposite a bottom surface (opposite surface) and a perimeter extending between the top surface and the bottom surface (as shown in Fig. 4); a keyhole (34) that extends continuously between the upper surface and the lower surface of the mounting flange; a positioning member (24) extending upwards from the mounting flange; and a hook member extending from the positioning member configured to couple with the torsion spring (in the same manner as the present invention, a spring can be slipped over the hook portions), but does not specifically disclose the hook member has a distal end that faces toward the positioning member. Chen teaches hook members having a distal end which extends in a direction facing a positioning member (see Fig. 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to produce the hooks with an additional fold, wherein the distal end faces toward the positioning member, for increased strength in the hook portions, and depending on the method of production. The phrase “configured to couple with a torsion spring” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 41, Kennedy discloses a ceiling clip wherein a first axis extends through the keyhole in a direction that is orthogonal to the bottom surface of the mounting flange (as shown in Fig. 2), wherein the hook member extends outward from the first positioning member in a direction away from the first axis (see Fig. 2).
Regarding claim 42, Kennedy discloses a ceiling clip but does not disclose wherein the hook member is horizontally offset from a second major surface of the positioning member by an offset distance ranging from about 0.05 inches to about 0.25 inches. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention that the distal edge surface of the hook member may be offset from an outer surface of the positioning member by about 0.25 inches to minimalize the weight and cost of the clip and 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). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim(s) 7, 10, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kennedy et al., U.S. Patent Application Publication 2022/0195728 in view of Chen, U.S. Patent 11,421,812 and Gao et al., U.S. Patent Application Publication 2020/0284279.
Regarding claim 7, Kennedy discloses a ceiling clip but does not disclose wherein the keyhole comprises a discorectangle opening having a slot opening length and an slot opening width. Gao teaches a discorctangle opening for a fastener in a clip apparatus (226). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to produce the opening as a discorectangle depending on the method of production, as the same results would be produced, and since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Regarding claim 10, Kennedy discloses a ceiling clip but does not disclose wherein the first hook member extends above the first upper edge by a first extension height and the second hook member extends above the second upper edge by a second extension height (heights shown in Fig. 2); and wherein a ratio of the first positioning height to the first extension height ranges from about 6:1 to about 10:1. Gao teaches a hook member (216) extending a vertical distance above the positioning member (214; see Fig. 2). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to produce the hook portion with a curvature extending upwards from the positioning member upper edge depending on the method of production, and since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23. It would also have been obvious to produce the hook member extension height within the given range since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233
Regarding claim 12, the prior art as modified discloses a ceiling clip wherein the first extension height and the second extension height are substantially equal (see Gao Figs. 4).
Response to Arguments
Applicant's arguments filed 02/26/2026 have been fully considered but they are not persuasive.
Regarding the applicant’s argument that the hole disclosed by the prior art is a threaded bore rather than a keyhole, the examiner respectfully disagrees. As parameters have not been set in reference to the precise shape of the keyhole nor is a lack of threads within the opening claimed, a keyhole shape/structure is not claimed, leaving the term keyhole open for interpretation. A shape of a slot, as argued by the applicant, is not a known “keyhole shape” in the art. The structural limitations have been met and the rejection stands.
Regarding the applicant’s argument regarding the positioning of the positioning members, the argument is unclear. The opposing positioning members of both the present invention and the prior art are positioned on opposite sides of a center axis of the clip, in a straight line or at 180 degree radial offsets from one another in both instances. In both cases the apparatus is mirrored about a plane intersecting the center axis poisoned through the center keyhole. The rejection stands.
See rejections to newly added limitations as set forth above.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GISELE D FORD whose telephone number is (571)270-7326. The examiner can normally be reached M-T,Th-F 7:30am-4:30pm.
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, Brian Glessner can be reached at 571-272-6754. 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.
GISELE D. FORD
Examiner
Art Unit 3633
/GISELE D FORD/Examiner, Art Unit 3633
Prosecution Insights