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 Objections
Claim 24 is objected to because of the following informalities:
Claim 24 recites “The method of claim 22”. This appears to be a typographical error and should recite –The method of claim 23--.
Appropriate correction is required.
Double Patenting
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of co-pending Application No. 18/215,506. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the co-pending application the only difference is the co-pending application recites the additional limitation of “at least one extension bore…including a non-threaded portion” which is not recited in the current application. However, the co-pending application recites all the claim language of the current application.
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.
Claim(s) 1 and 23-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parsons US 4640495.
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Parsons discloses a saddle and extension assembly for a floor jack (see fig. 4 above) comprising: a jack saddle (58, 60) fastened to a mounting bracket of a lifting arm (56); an extension (16) including a flange (64, 66) and an extension saddle (68, 72, 74); at least one extension bore (77), formed off-center a central axis of the extension and the jack saddle and including a threaded portion (Fig. 2 below); and at least one extension fastener (76) operable to engage with the at least one extension bore to fasten the extension to the jack saddle (58).
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As for claim 23, Parsons discloses a method of attaching an extension assembly (16) and extension saddle onto a floor jack (12, 14), comprising: providing a floor jack (12, 14) with a mounting bracket (58), the mounting bracket pivotally coupled (see Fig. 3) to an end of a lifting arm (56) of the floor jack; providing a jack saddle (58, 60) mounted to the mounting bracket; providing an extension (16); placing the extension onto the jack saddle (see Fig. 2); aligning at least one extension bore (77); providing at least one extension fastener (76); and inserting the at least one extension fastener into the at least one extension bore (see Fig. 2).
As for claim 24, Parsons discloses wherein: the at least one extension bore (77) comprises a first extension bore (77) and a second extension bore (77), and the at least one extension fastener (76) comprises a first extension fastener (76) and a second extension fastener (76); the method further comprising: inserting the first extension fastener (76) into the first extension bore (77) and engaging the first extension fastener with a threaded portion of the first extension bore; and inserting the second extension fastener into the second extension bore and engaging the second extension fastener with a threaded portion of the second extension bore (col. 6, lines 27-37).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Orr US 2748459.
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Orr discloses a saddle and extension assembly for a floor jack (see fig. 1 above) comprising: a jack saddle (26) fastened to a mounting bracket of a lifting arm (27); an extension (shown in Fig. 4 and 5 below) including a flange (10) and an extension saddle (11; 14, 15, 16); at least one extension bore (not shown aligns with holes 22, 23 and 24, col. 2, lines 55-58), formed off-center a central axis of the extension and the jack saddle and including a threaded portion (Fig. 2); and at least one extension fastener (29) operable to engage with the at least one extension bore to fasten the extension to the jack saddle (col. 2, lines 55-58).
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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(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Parsons US 4640495.
As for claim 7, Parsons discloses wherein: the flange (64) further comprises a first telescoping member (66); and the extension saddle (68, 72, 74) further comprises a second telescoping member (68), wherein: the second telescoping member (68) is operable to be received on the first telescoping member (66) of the flange. It would have been obvious to one of ordinary skill in the art, before the effective filing date, as a mere reversal of parts to provide the second telescoping member to be received in the first telescoping member as claimed (see In reGazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955)).
Allowable Subject Matter
Claims 25-27 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.
The following is a statement of reasons for the indication of allowable subject matter: The claims in the application are deemed to be directed to a nonobvious improvement over the prior art. The claims recite method steps of adjusting a height adjustment mechanism on the extension, the height adjustment mechanism being operable to adjust a height and a rotation of the extension saddle relative to a flange (claim 25); and removing the extension from a storage assembly operable, wherein the storage assembly is to be stored on the body of the floor jack in a stored configuration (claims 26-27).
The prior art of Parsons teaches a laterally adjusted mechanism (70) for adjusting the brackets (68) relative to bracket (66) . The prior art of Orr teaches a height adjustable bracket (11, 12) for adjusting the bracket (12) relative to a fixed bracket (11). However, the prior art of record fails to disclose, teach or suggest alone or in combination a height adjustment mechanism operable to adjust a rotation of the extension saddle relative to the flange. The prior art of record also fails to disclose, teach or suggest alone or in combination the claimed stored configuration and storage assembly as recited in the claims. For the above reasons, the claims overcome the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYRONE V HALL JR whose telephone number is (571)270-5948. The examiner can normally be reached Mon.-Fri. 7:30am-3:30pm.
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/TYRONE V HALL JR/Primary Examiner, Art Unit 3723