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 .
Summary
This is the response to the Amendment/Request for Reconsideration filed on 09/16/2025.
Claims 1-32 remain pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The originally filed disclosure does provide support for the limitation “has a length at least equal to a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end” of claims 1, 13 and 27. In the Remarks filed on 09/16/2025, the Applicants stated that support for the aforementioned limitation is found in paragraph [0073] and figs. 9-10; however, paragraph [0073] and figs. 9-10 do not show any relationship between the length of the abutment surface relative to “a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end”. The originally filed disclosure does not state any dimensional relationship between a length of the abutment surface of the claimed “a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end”.
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 1-32 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. Claims 1, 13 and 27 recite the limitation “has a length at least equal to a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end” that renders the claims indefinite because it is unclear as the metes and bounds of the dimensional relationship between the length of the abutment surface and “a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end” when the limitation is read in light of the specification. Indeed, the specification and the figures do not mention any dimensional relationship between the length of the abutment surface and “a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end”. Furthermore, the limitation “at least equal to” renders the claims indefinite because it is unclear as to the upper limit of the range “at least equal to” when the limitation is read in light of the specification. Moreover, the word “transverse” means “situated or extending across something”; therefore, a line intersecting transverse to the abutment surface includes numerous lines that intersect the abutment surface in numerous angles, each with its own length, which further shows that the aforementioned limitation renders the claims indefinite.
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) 1, 7, 8-11, 13, 15-16, 21, 23-25, 27 and 29-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reilly et al. (US 2015/0000725) in view of Brault et al. (US 2006/0245925).
Addressing claims 1, 13 and 27, Reilly discloses a solar mounting system and a method of installing a solar mounting system, comprising:
mounting a support structure 14 of the solar mounting system on a base surface (the ground), the support system including a plurality of support members 32 and at least one elongated support rail 36 operatively supported by the plurality of support members 32 (fig. 1B);
securing at least one photovoltaic module (solar panels 12) having a module frame 16 including an upstanding mounting box (see annotated fig. 12 below), a mounting flange 24 extending inwardly from the upstanding mounting box (figs. 4-5 and 11), and one or more photovoltaic cells 20 (fig. 1C) supported by the module frame (the photovoltaic cells 20 are inserted within the upper channel 22 [0038]), to the at least one elongated support rail 36 with at least one fastener (44+70+54, fig. 4),
wherein the at least one fastener comprises:
a fastener head 44a configured to be positioned beneath the one or more photovoltaic cells (fig. 4 implicitly discloses that the fastener head 44a is positioned beneath the photovoltaic cells 20 inserted within the upper channel 22); and
a threaded fastener shank extending in an axial direction from the fastener head and being configured to extend through the mounting flange 24 of the at least one photovoltaic module and the at least one elongated support rail 36 to secure the photovoltaic module to the at least one elongated support rail of the support structure (fig. 5).
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Reilly is silent regarding the fastener head having at least one abutment surface configured to engage the upstanding mounting box of the module frame in response to a rotational force being applied to the fastener so that the engagement of the at least one abutment surface with the upstanding box prevents rotation of the fastener and the abutment surface is linear and has a length at least equal to a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end.
Brault discloses a bolt fastener for securing separate structural elements; wherein, the bolt fastener includes a fastener head 31 with an abutment surface (flat surface 31A, fig. 4); wherein, the flat abutment surface is configured to engage with the adjacent flat surface (the corresponding surface of structure 10A) in response to a rotational force being applied to the fastener so that the engagement of the at least one abutment surface with the corresponding surface of the structure 10A prevents rotation of the fastener (Brault discloses the head is prevented from rotating about its axis when it is in place [0025] because the flat surface 31A is positioned against the inner surface of the structure 10A [0028] and the fastening mechanism is done by tightening the nut 32 [0028]; therefore, Brault implicitly discloses that the flat abutment surface is configured to engage with the corresponding surface of the structure 10A in response to a rotational force being applied to the fastener from tightening the nut so that the engagement of the flat abutment surface with the corresponding surface of structure 10 prevents rotation of the fastener). Fig. 5 shows the abutment surface is linear.
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the mounting system of Reilly with the fastener head having the flat abutment surface for engaging with the corresponding adjacent vertical surface to prevent the rotation of the fastener as disclosed by Brault in order simplify the fastening mechanism by placing the fastener in its position without it being held and the tightening action is done by tightening the nut (Brault, [0028]). In the modified mounting system and method of Reilly in view of Brault, the flat abutment surface of the fastener head is configured to engage with the vertical surface of the upstanding mounting box of the module frame in response to a rotational force being applied to the fastener from tightening the nut so that the engagement of the at least one abutment surface with the upstanding box prevents rotation of the fastener as claimed.
Furthermore, absent evidence of unexpected result, the limitation “has a length at least equal to a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end” would have been obvious to one of ordinary skill in the art by changing the length of the abutment surface or the shape of the fastener head because the only difference between the prior art and the claims was a recitation of relative length of the claimed abutment surface and a fastener head with an abutment surface having the claimed length would not perform different than the prior art device (see MPEP 2144.04, section IV and V). Particularly, the abutment surface is linear to prevent rotation and there is no evidence from the Applicants that the relative dimensional relationship between the length of the abutment surface and a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end does not contribute or affect the ability of the abutment surface to prevent rotation of the fastener.
Addressing claims 7 and 21, fig. 4 of Reilly shows the threaded fastener shank is threaded along its entire length.
Addressing claims 9-11, 23-25 and 29-31, figs. 4-5 of Brault discloses the claimed shape of the fastener head.
Addressing claim 15, fig. 4 of Reilly discloses the mounting flange of the module frame includes at least one mounting aperture 68 formed therethrough and the at least one elongated support rail 36 includes at least one fastening aperture 60 formed therethrough, and further wherein the at least one mounting aperture and the at least one fastener aperture are configured to receive the at least one fastener to secure the photovoltaic module to the at least one elongated support rail of the support structure (figs. 4-5).
Addressing claim 16, fig. 4 of Reilly shows the at least one elongated support rail comprises a Z-shaped purlin as claimed.
Claim(s) 2-5, 12, 14, 17-19, 26, 28 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reilly et al. (US 2015/0000725) in view of Brault et al. (US 2006/0245925) as applied to claims 1, 7, 8-11, 13, 15-16, 21, 23-25, 27 and 29-31 above, and further in view of Bucciferro et al. (US 2006/0257229).
Addressing claims 2-5, 14, 17-19 and 28, Reilly discloses the importance of grounding the solar panel by using raised edges to cut through the protective coating [0011].
Reilly is silent regarding a plurality of projections extending in the axial direction from the underside of the fastener head in the claimed manner.
Bucciferro discloses fastening bolt with threaded shank 20 similarly to those of Reilly and Brault (figs. 1-3). Bucciferro further discloses a plurality of projections 18 extending in the axial direction from an underside of the fastener head and spaced radially from the threaded fastener shank (figs. 2A-2B). The projections are configured to remove paint from a surface of a structure to provide electrical grounding effect (Abstract) similarly to the raised edges of Reilly.
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the head of Reilly in view of Brault’s fastener with a plurality of projections extending in the axial direction from an underside and spaced radially from the threaded fastener shank disclosed by Bucciferro in order to provide additional ground path between the mounting support and the solar panel (Bucciferro, Abstract) as well as provide additional securement between the fastener and the corresponding flange of the modular frame due to the contact between the projections and the flange (Bucciferro, [0007]).
Addressing claims 8 and 22, Reilly and Brault are silent regarding the threaded fastener shank includes a threaded portion and an unthreaded portion along its length.
Bucciferro discloses in fig. 1 that the threaded fastener shank includes a threaded portion 20 and an unthreaded portion 22 along its length. The unthreaded portion 22 is adapted to align the fastener with openings in structures being connected [0031].
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the fastener of Reilly with the unthreaded tip 22 disclosed by Bucciferro in order to align fastener with openings in structures being connected while assisting in clearing paint of a threaded portion of a structure on which it is being installed, while helping to limit the creation of metal shavings during the process (Bucciferro, [0031]).
Addressing claims 12, 26 and 32, figs. 4-5 of Reilly show the fastener comprises a fastener bolt 44, a collar nut 54 configured to engage the bolt to apply a tightening force to the fastening bolt so that the at least one projection (raised edge 62 projects upwardly, [0046]) pierces the non-conductive protective coating (aluminum oxide [0003], which is non-conductive, or electrically insulative protective coating [0003]) applied to the mounting flange of the module frame (fig. 5, paragraph [0046] discloses the raised edge projects upwardly to cuts into the lower flange of the panel frame) to establish the electrical bond and grounding of the photovoltaic module with the support structure [0046].
Claim(s) 6 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reilly et al. (US 2015/0000725) in view of Brault et al. (US 2006/0245925) and Bucciferro et al. (US 2006/0257229) as applied to claims 2-5, 12, 14, 17-19, 26, 28 and 32 above, and further in view of Dice (US1183174).
Addressing claims 6 and 20, Bucciferro is silent regarding the plurality of projections are inequally spaced radially from the threaded fastener shank.
Dice discloses the plurality of projections are inequally spaced radially from the threaded shank 7 (figs. 1-4).
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the projections of Bucciferro with the projections that are inequally spaced from the threaded shank as disclosed by Dice in order to provide further grip between the fastener head and the underlying structure. Furthermore, there are only two configurations, one is the plurality of projections are equally spaced from the threaded fastener shank and another is the plurality of projections are inequally spaced from the threaded fastener shank; therefore, absent evidence of unexpected results choosing a configuration from a finite choice of identified and predictable configurations to obtain the predictable result of providing electrical grounding path between the fastener and the underlying structure would have been obvious to one of ordinary skill in the art (Rationale E, KSR decision, MPEP 2143).
Claim(s) 1, 7, 9-11, 13, 15-16, 21, 23-25, 27 and 29-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reilly et al. (US 2015/0000725) in view of Efanfar (US 2007/0096584).
Addressing claims 1, 13 and 27, Reilly discloses a solar mounting system and a method of installing a solar mounting system, comprising:
mounting a support structure 14 of the solar mounting system on a base surface (the ground), the support system including a plurality of support members 32 and at least one elongated support rail 36 operatively supported by the plurality of support members 32 (fig. 1B);
securing at least one photovoltaic module (solar panels 12) having a module frame 16 including an upstanding mounting box (see annotated fig. 12 below), a mounting flange 24 extending inwardly from the upstanding mounting box (figs. 4-5 and 11), and one or more photovoltaic cells 20 (fig. 1C) supported by the module frame (the photovoltaic cells 20 are inserted within the upper channel 22 [0038]), to the at least one elongated support rail 36 with at least one fastener (44+70+54, fig. 4),
wherein the at least one fastener comprises:
a fastener head 44a configured to be positioned beneath the one or more photovoltaic cells (fig. 4 implicitly discloses that the fastener head 44a is positioned beneath the photovoltaic cells 20 inserted within the upper channel 22); and
a threaded fastener shank extending in an axial direction from the fastener head and being configured to extend through the mounting flange 24 of the at least one photovoltaic module and the at least one elongated support rail 36 to secure the photovoltaic module to the at least one elongated support rail of the support structure (fig. 5).
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Reilly is silent regarding the fastener head having at least one abutment surface configured to engage the upstanding mounting box of the module frame in response to a rotational force being applied to the fastener so that the engagement of the at least one abutment surface with the upstanding box prevents rotation of the fastener and the abutment surface is linear and has a length at least equal to a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end.
Erfanfar discloses a fastener (fig. 3) comprises a fastener head having at least one abutment surface 67, wherein the at least one abutment surface is configured to engage with the corresponding flat surface in response to a rotational force being applied to the fastener so that the engagement of the at least one abutment surface with the flat surface prevents rotation of the fastener [0023]. The at least one abutment surface is linear and has a length at least equal to a length of a line intersecting transverse to the abutment surface at one end and extending through the rotational axis of the fastener to an opposite edge of the fastener head at the other end (fig. 3).
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the mounting system of Reilly with the fastener head having the flat abutment surface for engaging with the corresponding adjacent vertical surface to prevent the rotation of the fastener as disclosed by Erfanfar in order simplify the fastening mechanism by placing the fastener in its position without it being held and the tightening action is done by tightening the nut (Erfanfar, [0023]). Furthermore, substituting the known fastener of Reilly with the known fastener with the fastener head having at least one abutment surface as disclosed by Erfanfar in order to obtain the predictable result of coupling two structures (Rationale B, KSR decision, MPEP 2143) would have been obvious to one of ordinary skill in the art.
Addressing claims 7 and 21, fig. 4 of Reilly shows the threaded fastener shank is threaded along its entire length.
Addressing claims 9-11, 23-25 and 29-31, fig. 3 of Erfanfar discloses the claimed shape of the fastener head.
Addressing claim 15, fig. 4 of Reilly discloses the mounting flange of the module frame includes at least one mounting aperture 68 formed therethrough and the at least one elongated support rail 36 includes at least one fastening aperture 60 formed therethrough, and further wherein the at least one mounting aperture and the at least one fastener aperture are configured to receive the at least one fastener to secure the photovoltaic module to the at least one elongated support rail of the support structure (figs. 4-5).
Addressing claim 16, fig. 4 of Reilly shows the at least one elongated support rail comprises a Z-shaped purlin as claimed.
Claim(s) 2-5, 12, 14, 17-19, 26, 28 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reilly et al. (US 2015/0000725) in view of Erfanfar (US 2007/0096584) as applied to claims 1, 7, 9-11, 13, 15-16, 21, 23-25, 27 and 29-31 above, and further in view of Bucciferro et al. (US 2006/0257229).
Addressing claims 2-5, 14, 17-19 and 28, Reilly discloses the importance of grounding the solar panel by using raised edges to cut through the protective coating [0011].
Reilly is silent regarding a plurality of projections extending in the axial direction from the underside of the fastener head in the claimed manner.
Bucciferro discloses fastening bolt with threaded shank 20 similarly to those of Reilly and Brault (figs. 1-3). Bucciferro further discloses a plurality of projections 18 extending in the axial direction from an underside of the fastener head and spaced radially from the threaded fastener shank (figs. 2A-2B). The projections are configured to remove paint from a surface of a structure to provide electrical grounding effect (Abstract) similarly to the raised edges of Reilly.
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the head of Reilly in view of Brault’s fastener with a plurality of projections extending in the axial direction from an underside and spaced radially from the threaded fastener shank disclosed by Bucciferro in order to provide additional ground path between the mounting support and the solar panel (Bucciferro, Abstract) as well as provide additional securement between the fastener and the corresponding flange of the modular frame due to the contact between the projections and the flange (Bucciferro, [0007]).
Addressing claims 8 and 22, Reilly and Erfanfar are silent regarding the threaded fastener shank includes a threaded portion and an unthreaded portion along its length.
Bucciferro discloses in fig. 1 that the threaded fastener shank includes a threaded portion 20 and an unthreaded portion 22 along its length. The unthreaded portion 22 is adapted to align the fastener with openings in structures being connected [0031].
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the fastener of Reilly with the unthreaded tip 22 disclosed by Bucciferro in order to align fastener with openings in structures being connected while assisting in clearing paint of a threaded portion of a structure on which it is being installed, while helping to limit the creation of metal shavings during the process (Bucciferro, [0031]).
Addressing claims 12, 26 and 32, figs. 4-5 of Reilly show the fastener comprises a fastener bolt 44, a collar nut 54 configured to engage the bolt to apply a tightening force to the fastening bolt so that the at least one projection (raised edge 62 projects upwardly, [0046]) pierces the non-conductive protective coating (aluminum oxide [0003], which is non-conductive, or electrically insulative protective coating [0003]) applied to the mounting flange of the module frame (fig. 5, paragraph [0046] discloses the raised edge projects upwardly to cuts into the lower flange of the panel frame) to establish the electrical bond and grounding of the photovoltaic module with the support structure [0046].
Claim(s) 6 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reilly et al. (US 2015/0000725) in view of Erfanfar (US 2007/0096584) and Bucciferro et al. (US 2006/0257229) as applied to claims 2-5, 12, 14, 17-19, 26, 28 and 32 above, and further in view of Dice (US1183174).
Addressing claims 6 and 20, Bucciferro is silent regarding the plurality of projections are inequally spaced radially from the threaded fastener shank.
Dice discloses the plurality of projections are inequally spaced radially from the threaded shank 7 (figs. 1-4).
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the projections of Bucciferro with the projections that are inequally spaced from the threaded shank as disclosed by Dice in order to provide further grip between the fastener head and the underlying structure. Furthermore, there are only two configurations, one is the plurality of projections are equally spaced from the threaded fastener shank and another is the plurality of projections are inequally spaced from the threaded fastener shank; therefore, absent evidence of unexpected results choosing a configuration from a finite choice of identified and predictable configurations to obtain the predictable result of providing electrical grounding path between the fastener and the underlying structure would have been obvious to one of ordinary skill in the art (Rationale E, KSR decision, MPEP 2143).
Response to Arguments
Applicant's arguments filed 09/16/2025 regarding the rejection of claims 1, 7, 8-11, 13, 15-16, 21, 23-25, 27 and 29-31 as being unpatentable over the disclosure of Reilly in view of Brault have been fully considered but they are not persuasive. The Applicants argued that Brault does not disclose the abutment surface has a length at least equal to a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end. The argument is not persuasive because, absent evidence of unexpected result, the limitation “has a length at least equal to a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end” would have been obvious to one of ordinary skill in the art by changing the length of the abutment surface or the shape of the fastener head because the only difference between the prior art and the claims was a recitation of relative length of the claimed abutment surface and a fastener head with an abutment surface having the claimed length would not perform different than the prior art device. Particularly, the abutment surface is linear to prevent rotation and the relative dimensional relationship between the length of the abutment surface and a length of a line intersecting transverse to the abutment surface at one end and extending through a rotational axis of the fastener to an opposite edge of the fastener head at the other end does not contribute or affect the ability of the abutment surface to prevent rotation of the fastener.
Applicant’s arguments with respect to claim(s) 1-32 have been considered but are moot because the new ground of rejection does not rely on any combination of references, particularly Reilly in view of Erfanfar, applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/BACH T DINH/Primary Examiner, Art Unit 1726 10/15/2025