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 RCE filed on 04/20/2026.
Claims 1, 3-13, 15-27 and 29-35 remain pending in the application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/20/2026 has been entered.
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, 3-13, 15-27 and 29-35 recites the limitation "the axial direction" in line 15 of claim 1, in line 18 of claim 13 and in line 20 of claim 27. The limitation “the threaded fastener shank” in line 15 of claim 1, in line 19 of claim 13 and in line 21 of claim 27. There is insufficient antecedent basis for this limitation in the claim. Claims 2-12, 15-16 and 29-35 are rejected as dependents of claims 1, 13 and 27, respectively.
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, 3-5, 7, 9-13, 15-19, 21, 23-27 and 29-35 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 Deisenhofer (US 2008/0146074).
Addressing claims 1, 3-5, 13, 17-19, 27 and 33-35, 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).
Reilly discloses the importance of grounding the solar panel by using raised edges to cut through the protective coating [0011].
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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 at least one projection extending in the axial direction as claimed.
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.
Deisenhofer discloses a fastener comprising a fastener head 80, a threaded fastener shank 90 extending in an axial direction similarly to that of Reilly and Brault. Deisenhofer further discloses at least one projection 160 extending in the axial direction from an underside of the fastener head and spaced radially from the threaded fastener shank (fig. 5), wherein the at least one projection is configured to pierce a protective coating applied to the casing 2 in response to a tightening of the fastener to establish an electrical bond (fig. 5, paragraph [0035] discloses the nut 71 and bolt portion 9 are tightened to draw the rib into the material of the casing).
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 in view of Brault with the at least one projection extending in the axial direction as disclosed by Deisenhofer in order to provide securement between the fastener and the structure to which the fastener is coupled to as well as providing additional electrical grounding path (fig. 5, paragraph [0039] of Deisenhofer) that are beneficial for the structure of Reilly.
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 claims 12, 26 and 32, the fastener of Reilly in view of Brault and Deisenhofer comprises a fastener bolt (the fasteners disclosed by Reilly, Brault and Deisenhofer correspond to the claimed bolt); and a collar nut (but 71 disclosed by Deisenhofer) configured to engage the bolt to apply a tightening force to the fastening bolt so that the at least one projection pierces the protective coating applied to the mounting flange (Deisenhofer, [0035]) to establish electrical bond and grounding (Deisenhofer, [0039]).
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) 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 Deisenhofer (US 2008/0146074) as applied to claims 1, 3-5, 7, 9-13, 15-19, 21, 23-27 and 29-35 above, and further in view of Dice (US 1183174).
Addressing claims 6 and 20, Deisenhofer 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 Deisenhofer 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) 8 and 22 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 Deisenhofer (US 2008/0146074) as applied to claims 1, 3-5, 7, 9-13, 15-19, 21, 23-27 and 29-35 above, and further in view of Bucciferro et al. (US 2006/0257229).
Addressing claims 8 and 22, Reilly, Brault and Deisenhofer are silent regarding the threaded fastener shank included 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 in view Brault and Deisenhofer 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]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-13, 15-27 and 29-35 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BACH T DINH whose telephone number is (571)270-5118. The examiner can normally be reached Mon-Friday 8:00 - 4:30 EST.
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/BACH T DINH/Primary Examiner, Art Unit 1726 07/10/2026
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