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 .
Drawings
The drawings are objected to because Numeral 205 on the lower portion of Fig. 4 points to a washer, rather than the elongated plate. It is likely that numeral 205 should be changed to --215--. 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.
Specification
The disclosure is objected to because of the following informalities:
Paragraph 0014, line 5, “component” should be changed to --components--.
Paragraph 0019, lines 6-7, numeral 320 is used for both “bolts” and “nuts,” which is incorrect. It is likely that “nuts 320” in line 7 should be changed to --nuts 310--.
Paragraph 0025, line 8, “overtime” should be changed to --over time--.
Appropriate correction is required.
Claim Objections
Claim 4 is objected to because of the following informalities: The term “the initial brush guard’s upright member” lacks antecedent basis. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: In line 7, it is likely that the word “are” should be deleted. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: In line 9, it is likely that the word “is” should be deleted. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: The term “the initial brush guard’s upright member” lacks antecedent basis. Appropriate correction is required.
Claim Interpretation
The terms “initial brush guard” and “initial upright bar” are being interpreted as simply “brush guard” and “upright bar.” In other words, the term “initial” is being treated as mere nomenclature, and is being given little patentable weight. In fact, it is suggested that the term “initial” be deleted to avoid any potential confusion.
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 1-18 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.
With regard to claims 1 and 10, these claims contain the phrase “…that is initially detached from other components.” This phrase is unclear for a number of reasons. Firstly, the term “other components” is so vague as to include any hypothetical element that could potentially be attached to element in question. The term “other components” does not even necessarily include the other elements in the claim. For example, a decal is an “other component.” Secondly, the term “initially detached” is vague, as the claim does not define the point in time which terminates the “initial” period. For example, even if the upright bar, cross bars, and brush guard were welded together in a factory, they would still be “initially detached” from one another before they were welded together. It is unclear if this meaning is intended within the claim, however, because the disclosure refers to shipping the assembly in a compact manner to the end user, with assembly performed by the user on site with fasteners rather than welding. Examiner suggests the following amendment to remove any potential confusion, while maintaining the current broad scope.
1. A modular grille guard, comprising:
a
an
one or more crossbars
wherein the
With regard to claims 9 and 18, the phrase “wherein the plate engages with greater surface area of the initial upright bar’s surface” is unclear, as the claim does not define any baseline comparison that gives meaning to the term “greater.” In other words, the claim does not specify “greater than what.”
Claims 2-8 and 11-17 are rejected based on their dependence upon rejected claims.
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 1-8 and 10-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,403,855. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With regard to claims 1-3 and 10-12, these claims in the instant application are very similar to those in the ‘855 Patent, although the patented claims feature additional limitations, such as “the initial upright bar extends at least 50% of a vertical length of the main body.” Therefore, the instant claims are broader than the claims in the ‘855 patent, and thus are anticipated by the patented claims.
Note: the claim terms “one or more crossbars” in the instant application and “a main body” in the patented claims are being treated as equivalent elements with different nomenclature.
With regard to claims 4-8 and 13-17, these claims are narrower than the patented claims in the sense that the “fastener” of the patented claims is specified as a “bolt” in the pending claims.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified the claims in the ‘855 patent such that the fastener was a bolt, as bolts are notoriously well known fasteners in the art of aftermarket vehicle grille guards.
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) 1-8 and 10-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Hunter Brush Guard for Ford F150 2009 and Up | Unboxing” and “Hunter Brush Guard Install on 2011 F150” YouTube video series by user Jarmy D posted April 2014 (hereinafter Jarmy).
With regard to claim 1, Jarmy discloses a modular grille guard, comprising:
an initial brush guard that is initially detached from other components (see Fig. 1 below);
an initial upright bar that is initially detached from other components (see Fig. 2 below); and
one or more crossbars (see Fig. 3 below) that are initially detached from at least the initial upright bar,
wherein the one or more crossbars are attachable to the initial upright bar to
form a secure assembly (see Figs. 4 and 5 below), and
wherein the initial brush guard is attachable to the initial upright bar to form a
secure assembly (see Figs. 6 and 7 below), in which the initial brush guard attaches to an opposite side of the initial upright bar relative to the one or more crossbars (see Figs. 6 and 7 below).
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Figure 1 - Brush Guard Element as packed
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Figure 2 - Upright Bars in initial position with no crossbars or brush guard attached
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Figure 3 - Cross Bar before assembly
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Figure 4 - Cross Bar after assembly to upright bar. Top view.
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Figure 5 - Cross Bar after installation; Close-up of plate and bolts
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Figure 6 - Close-up of brush guard attachment to upright bar
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Figure 7 - View of complete, secure assembly
With regard to claims 2, 3, 11, and 12, Jarmy teaches that the initial brush guard and the one or more crossbars are attached to the initial upright bar using fasteners, which are nuts and bolts (see Figs. 5 and 6 above, for example).
With regard to claims 4 and 13, Jarmy teaches that a bolt extends from the initial
brush guard's upright member, through the initial upright bar, and through a plate on a
crossbar of the one or more crossbars to form a unitary assembly (see Fig. 5 above).
With regard to claims 5 and 14, Jarmy teaches an insert positioned between the initial brush guard and the initial upright bar, wherein, when attached, the insert simultaneously touches surfaces of the initial upright bar and the initial brush guard (see Fig. 8 below).
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Figure 8 - Close-up of insert
With regard to claims 6 and 15, Jarmy teaches an insert positioned between the initial upright bar and the crossbar of the one or more crossbars (see Fig. 5 above), wherein, when attached, the insert simultaneously touches surfaces of the initial upright bar and the crossbar (by virtue of being sandwiched between the two).
With regard to claims 7 and 16, Jarmy teaches that the inserts are rubber or silicone (Narrator indicates “rubber” at 4:42 mark in the “Install” video—corresponding to the Fig. 8 view above).
With regard to claims 8 and 17, Fig. 8 above illustrates that the bolt extends through the inserts (see bolt hole within the central hole in the insert).
With regard to claim 10, Jarmy teaches a method of assembling a modular grille guard, comprising:
providing an initial brush guard that is initially detached from other components (see Fig. 1 above);
providing an initial upright bar that is initially detached from other components (see Fig. 2 above);
providing one or more crossbars that are initially detached from at least the
initial upright bar (see Fig. 3 above);
attaching the one or more crossbars are to the initial upright bar to form a
secure assembly (see Figs. 4 and 5 above), and
attaching the initial brush guard to the initial upright bar to form a secure assembly, in which the initial brush guard attaches to an opposite side of the initial
upright bar relative to the one or more crossbars (see Figs. 6 and 7 above).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jarmy.
With regard to claims 9 and 18, as best understood, Jarmy appears to teach that the plate on the end of the crossbar may be welded. However, the video is inconclusive as to the actual attachment means for the plate.
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It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Jarmy such that the end plate on the crossbar was attached by welding, as examiner hereby takes Official Notice that welding is a notoriously common attachment method in aftermarket vehicle grille guards.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references provide further examples of vehicle grille guards having similar features to those disclosed by applicant.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT E FULLER/Primary Examiner, Art Unit 3676