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 .
Specification
The amendment filed 2/3/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
On page 6, lines 22:
As shown in FIGS. 10-11, the provisionally attaching hole 9 includes a vertically-elongated aperture portion 40 disposed above and communicating with a tapered aperture portion 41.The tapered aperture portion 41, in turn, is disposed above and communicating with a transitional portion 46.The vertically elongated aperture portion 41 is bounded on its left side by a left vertical edge 42L extending in the up-down direction, on its right side by a right vertical edge 42R extending in the up-down direction, and on its top end by an upper connecting edge 43 connecting the left and right vertical edges. The tapered aperture portion 41 is bounded on its left side by a left oblique edge 44L extending downwardly and to the left from the bottom end of the left vertical edge 42L; and on its right side by a right oblique edge 44R extending downwardly and to the right from the bottom end of the right vertical edge 42R. The transitional portion is bounded on its left side by a left transitional edge 47L that may curve from the oblique direction to the vertical direction, on its right side by a right transitional edge 47R that may curve from the oblique direction to the vertical direction, and on its bottom end by a lower connecting edge 45 extending at least in part linearly in the left-right direction and connecting the left and right oblique edges. The lower connecting edge 45 may further extend in a plane orthogonal to the plane of the vertically- elongated aperture portion 40 and the tapered aperture portion 41.The height of the tapered aperture portion 41 is greater than the height of the vertically-elongated aperture portion 40, while the height of the vertically-elongated aperture portion 40 is greater than the height of transitional portion 46. The width of the provisionally attaching hole 9 is greatest at the lower connecting edge 45; the width of the provisionally attaching hole is greatest at its lowermost end, which is at the lower end of the wall-side mounting portion 8.—
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
The drawings were received on 2/3/2026. These drawings are unacceptable because they contain new matter corresponding to an objected disclosure under 35 USC 132(a).
Claim Rejections - 35 USC § 112
Claims 1-10 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. In claim 1, the limitation of “the transitional portion is bounded on a left side thereof by a left transitional edge extending generally downwardly from a bottom edge end of the left oblique edge, on a right side thereof by a right transitional edge extending generally downwardly from a bottom end of the right oblique edge.”……”the height of the vertically-elongated aperture portion is greater than a height of the transitional portion” is being rejected because it is being considered by the examiner as being new matter that was not described in the application as originally filed.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP6832580 (JP ‘580) in view of Navien 20007609A Case Bracket (https://www.tanklessparts.com/product/navien-20007609a-case-bracket) (Navien bracket). JP ‘580 discloses a water heater (Figure 1), the water heater configured to be mountable to a mounting surface (not shown) in an up-down direction via a mounting fitting component (16), the mounting fitting component being fixed to a back surface (6) of a case that houses a burning device (18) and having a wall-side mounting portion projecting upward above the case (SEE Figure 3), wherein the wall-side mounting portion has a provisionally attaching hole that is lock-engageable with a locking tool disposed at the mounting surface, and at least one fully attaching hole through which a screw is screwed into the mounting surface (SEE Figure 1), JP ‘580 however does not specifically disclose the design of the provisionally attaching hole as claimed. It is noted by the examiner that this design for the attaching hole is not novel and an example of which is provided in the reference of Navien bracket (SEE Annotated Figure below) which is designed for hanging tankless appliances such as water heaters and is thus relevant art.
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The Navien bracket teaches a provisionally attaching hole includes a vertically-elongated aperture portion disposed above and communicating with a tapered aperture portion; the vertically elongated aperture portion is bounded on a left side thereof by a left vertical edge extending in the up-down direction, on a right side thereof by a right vertical edge extending in the up-down direction, and on a top end thereof by an upper connecting edge connecting the left and right vertical edges; the tapered aperture portion is bounded on a left side thereof by a left oblique edge extending downwardly and to the left from a bottom end of the left vertical edge, on a right side thereof by a right oblique edge extending downwardly and to the right from a bottom end of the right vertical edge, and on a bottom end thereof by a lower connecting edge connecting the left and right oblique edges (formed by the combination of the hole and the structure of the primary reference); a height of the tapered aperture portion is greater than a height of the vertically-elongated aperture portion; and a width of the provisionally attaching hole is greatest at the lower connecting edge. It would have been obvious before the effective filing date the claimed invention, to a person having ordinary skill in the art to which the subject matter pertains to have modified the provisionally attaching hole of JP (‘580) to have the design of that which was already known in the art and taught by Navien bracket and arrived at the applicants claimed invention since the design for the provisionally attaching hole for a given mounting fitting component would necessarily depend on numerous individual and/or interrelated design criteria, such as the overall size and/or shape of water heater, mounting component, etc., to configure an apparatus such as recited in claim 1 according to the limitations set forth in applicant’s claims can be viewed as nothing more than merely a matter of choice in design and/or optimization absent a showing by applicant of any criticality (new or unexpected results produced therefrom) over the prior art of record.
In re claim 2, JP ‘580 as modified by Navien bracket would meet the limitations of the applicants claimed invention since both JP ‘580 & the Navien bracket design discloses that the provisionally attaching hole is configured to guide a screw to the mounting surface (which corresponds to the narrow uppermost location of the provisionally attaching hole). In re claim 3, JP ‘580 as modified by Navien bracket discloses in Figures 1 of JP ‘580 and the Annotated Figure 1 of Navien bracket that the provisionally attaching hole is disposed in a center of the mounting fitting component in a left-right direction. In re claim 4, JP ‘580 as modified by Navien bracket results in a structure wherein the provisionally attaching hole has a different shape than the at least one fully attaching hole (SEE Figures 1 of JP ‘580 & and Annotated Figure 1 of Navien bracket). In re claim 5, JP ‘580 as modified by Navien bracket would meet the limitations of the applicants claimed invention since the resulting structure would amount to the lower connecting edge extending linearly in the left-right direction. In re claim 6, JP ‘580 as modified by Navien bracket would meet the limitations of the applicants claimed invention since Navien bracket also teaches that the width of the provisionally attaching hole is greatest at a lowermost end thereof. In re claim 7, JP ‘580 as modified by Navien bracket would meet the limitations of the applicants claimed invention since JP ‘580 discloses that the wall-side mounting portion (16) has a laterally-elongated rectangular shape (SEE Figure 2) such that the hole as taught by Navien bracket would have a width that is greatest at a lower end of the wall-side mounting portion. In re claim 8, JP ‘580 as modified by Navien bracket would meet the limitations of the applicants claimed invention since Navien bracket also teaches that the height of the vertically elongated aperture portion is greater than a height of the at least one fully attaching hole (SEE Annotated Figure 2 for clarity).
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Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP6828893 (JP ‘893) in view of Navien 20007609A Case Bracket (https://www.tanklessparts.com/product/navien-20007609a-case-bracket) (Navien bracket). JP ‘893 discloses a water heater (1), the water heater configured to be mountable to a mounting surface in an up-down direction via a mounting fitting component (11), the mounting fitting component being fixed to a back surface of a case (6) that houses a burning device and having a wall-side mounting portion projecting upward above the case (SEE Figures 1 & 2), wherein the wall-side mounting portion has a provisionally attaching hole (14A) that is lock-engageable with a locking tool disposed at the mounting surface, and at least one fully attaching hole (17A or 18A) through which a screw is screwed into the mounting surface, JP ‘893 however does not specifically disclose the design of the provisionally attaching hole as claimed. It is noted by the examiner that this design for the attaching hole is not novel and an example of which is provided in the reference of Navien bracket (SEE Annotated Figure above) which is designed for hanging tankless appliances such as water heaters and is thus relevant art. The Navien bracket teaches a provisionally attaching hole includes a vertically-elongated aperture portion disposed above and communicating with a tapered aperture portion; the vertically elongated aperture portion is bounded on a left side thereof by a left vertical edge extending in the up-down direction, on a right side thereof by a right vertical edge extending in the up-down direction, and on a top end thereof by an upper connecting edge connecting the left and right vertical edges; the tapered aperture portion is bounded on a left side thereof by a left oblique edge extending downwardly and to the left from a bottom end of the left vertical edge, on a right side thereof by a right oblique edge extending downwardly and to the right from a bottom end of the right vertical edge, and on a bottom end thereof by a lower connecting edge connecting the left and right oblique edges (formed by the combination of the hole and the structure of the primary reference); a height of the tapered aperture portion is greater than a height of the vertically-elongated aperture portion; and a width of the provisionally attaching hole is greatest at the lower connecting edge. It would have been obvious before the effective filing date the claimed invention, to a person having ordinary skill in the art to which the subject matter pertains to have modified the provisionally attaching hole of JP (‘893) to have the design of that which was already known in the art and taught by Navien bracket and arrived at the applicants claimed invention since the design for the provisionally attaching hole for a given mounting fitting component would necessarily depend on numerous individual and/or interrelated design criteria, such as the overall size and/or shape of water heater, mounting component, etc., to configure an apparatus such as recited in claim 1 according to the limitations set forth in applicant’s claims can be viewed as nothing more than merely a matter of choice in design and/or optimization absent a showing by applicant of any criticality (new or unexpected results produced therefrom) over the prior art of record.
In re claim 2, JP ‘893 as modified by the Navien bracket hole design would meet the limitations of the applicants claimed invention since both references cite that the provisionally attaching hole is configured to guide a screw to the mounting surface (as can be ascertained by a person having ordinary skill in the art with reference to the shape of the hole in Figures 1-4 of JP ‘893 and the hole in Annotated Figure 1 of Navien bracket). In re claim 3, JP ‘893 as modified by the Navien bracket hole design would meet the limitations of the applicants claimed invention since the Navien bracket hole design is disposed in a center of the mounting fitting component in a left-right direction (SEE Annotated Figure 1 of Navien bracket). In re claim 4, JP ‘893 as modified by the Navien bracket hole design results in a structure wherein the provisionally attaching hole has a different shape than the at least one fully attaching hole (SEE Figure 3). In re claim 5, JP ‘893 as modified by Navien bracket would meet the limitations of the applicants claimed invention since the resulting structure would amount to the lower connecting edge extending linearly in the left-right direction. In re claim 6, JP ‘893 as modified by Navien bracket would meet the limitations of the applicants claimed invention since Navien bracket also teaches that the width of the provisionally attaching hole is greatest at a lowermost end thereof. In re claim 7, JP ‘893 as modified by Navien bracket would meet the limitations of the applicants claimed invention since JP ‘893 discloses that the wall-side mounting portion (11) has a laterally-elongated rectangular shape (SEE Figures 7 & 8) such that the hole as taught by Navien bracket would have a width that is greatest at a lower end of the wall-side mounting portion. In re claim 8, JP ‘583 as modified by Navien bracket would meet the limitations of the applicants claimed invention since Navien bracket also teaches that the height of the vertically elongated aperture portion is greater than a height of the at least one fully attaching hole (SEE Annotated Figure 2 for clarity).
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2019124378 (JP ‘378) in view of Navien 20007609A Case Bracket (https://www.tanklessparts.com/product/navien-20007609a-case-bracket) (Navien bracket). JP ‘378 discloses a water heater (1), the water heater configured to be mountable to a mounting surface in an up-down direction via a mounting fitting component (11), the mounting fitting component being fixed to a back surface of a case that houses a burning device (SEE [0004]) and having a wall-side mounting portion projecting upward above the case (SEE Figures 1-4), wherein the wall-side mounting portion has a provisionally attaching hole (15) that is lock-engageable with a locking tool disposed at the mounting surface, and at least one fully attaching hole (20) through which a screw (30) is screwed into the mounting surface. JP ‘378 however does not specifically disclose the design of the provisionally attaching hole as claimed. It is noted by the examiner that this design for the attaching hole is not novel and an example of which is provided in the reference of Navien bracket (SEE Annotated Figure above) which is designed for hanging tankless appliances such as water heaters and is thus relevant art. The Navien bracket teaches a provisionally attaching hole includes a vertically-elongated aperture portion disposed above and communicating with a tapered aperture portion; the vertically elongated aperture portion is bounded on a left side thereof by a left vertical edge extending in the up-down direction, on a right side thereof by a right vertical edge extending in the up-down direction, and on a top end thereof by an upper connecting edge connecting the left and right vertical edges; the tapered aperture portion is bounded on a left side thereof by a left oblique edge extending downwardly and to the left from a bottom end of the left vertical edge, on a right side thereof by a right oblique edge extending downwardly and to the right from a bottom end of the right vertical edge, and on a bottom end thereof by a lower connecting edge connecting the left and right oblique edges (formed by the combination of the hole and the structure of the primary reference); a height of the tapered aperture portion is greater than a height of the vertically-elongated aperture portion; and a width of the provisionally attaching hole is greatest at the lower connecting edge. It would have been obvious before the effective filing date the claimed invention, to a person having ordinary skill in the art to which the subject matter pertains to have modified the provisionally attaching hole of JP (‘378) to have the design of that which was already known in the art and taught by Navien bracket and arrived at the applicants claimed invention since the design for the provisionally attaching hole for a given mounting fitting component would necessarily depend on numerous individual and/or interrelated design criteria, such as the overall size and/or shape of water heater, mounting component, etc., to configure an apparatus such as recited in claim 1 according to the limitations set forth in applicant’s claims can be viewed as nothing more than merely a matter of choice in design and/or optimization absent a showing by applicant of any criticality (new or unexpected results produced therefrom) over the prior art of record. In re claim 2, JP ‘378 as modified by Navien bracket would meet the limitations of the applicants claimed invention since both references discloses that the provisionally attaching hole is configured to guide a screw (30) to the mounting surface (in re JP ‘378). In re claim 3, JP ‘378 as modified by Navien bracket would meet the limitations of the applicants claimed invention since the Navien bracket hole design is disposed in a center of the mounting fitting component in a left-right direction (SEE Annotated Figure, above). In re claim 4, JP ‘378 as modified by Navien bracket results in a structure of the provisionally attaching hole having a different shape than the at least one fully attaching hole (SEE Annotated Figure 1 of Navien bracket, above). In re claim 5, JP ‘378 as modified by Navien bracket would meet the limitations of the applicants claimed invention since the resulting structure would amount to the lower connecting edge extending linearly in the left-right direction. In re claim 6, JP ‘378 as modified by Navien bracket would meet the limitations of the applicants claimed invention since Navien bracket also teaches that the width of the provisionally attaching hole is greatest at a lowermost end thereof. In re claim 7, JP ‘378 as modified by Navien bracket would meet the limitations of the applicants claimed invention since JP ‘378 discloses that the wall-side mounting portion (11) has a laterally-elongated rectangular shape (SEE Figures 1 & 2) such that the hole as taught by Navien bracket would have a width that is greatest at a lower end of the wall-side mounting portion. In re claim 8, JP ‘378 as modified by Navien bracket would meet the limitations of the applicants claimed invention since Navien bracket also teaches that the height of the vertically elongated aperture portion is greater than a height of the at least one fully attaching hole (SEE Annotated Figure 2 for clarity).
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ando (10,234,171) in view of Navien 20007609A Case Bracket (https://www.tanklessparts.com/product/navien-20007609a-case-bracket) (Navien bracket). . Ando discloses a water heater (column 5, line 25), the water heater configured to be mountable to a mounting surface (W) in an up-down direction via a mounting fitting component (2), the mounting fitting component being fixed to a back surface of a case (3) that houses a burning device and having a wall-side mounting portion (22) projecting upward above the case, wherein the wall-side mounting portion has a provisionally attaching hole (22a) that is lock-engageable with a locking tool disposed at the mounting surface, and at least one fully attaching hole (22b) through which a screw is screwed into the mounting surface, Ando however does not specifically disclose the design of the provisionally attaching hole as claimed. It is noted by the examiner that this design for the attaching hole is not novel and an example of which is provided in the reference of Navien bracket (SEE Annotated Figure above) which is designed for hanging tankless appliances such as water heaters and is thus relevant art. The Navien bracket teaches a provisionally attaching hole includes a vertically-elongated aperture portion disposed above and communicating with a tapered aperture portion; the vertically elongated aperture portion is bounded on a left side thereof by a left vertical edge extending in the up-down direction, on a right side thereof by a right vertical edge extending in the up-down direction, and on a top end thereof by an upper connecting edge connecting the left and right vertical edges; the tapered aperture portion is bounded on a left side thereof by a left oblique edge extending downwardly and to the left from a bottom end of the left vertical edge, on a right side thereof by a right oblique edge extending downwardly and to the right from a bottom end of the right vertical edge, and on a bottom end thereof by a lower connecting edge connecting the left and right oblique edges (formed by the combination of the hole and the structure of the primary reference); a height of the tapered aperture portion is greater than a height of the vertically-elongated aperture portion; and a width of the provisionally attaching hole is greatest at the lower connecting edge. It would have been obvious before the effective filing date the claimed invention, to a person having ordinary skill in the art to which the subject matter pertains to have modified the provisionally attaching hole of Ando to have the design of that which was already known in the art and taught by Navien bracket and arrived at the applicants claimed invention since the design for the provisionally attaching hole for a given mounting fitting component would necessarily depend on numerous individual and/or interrelated design criteria, such as the overall size and/or shape of water heater, mounting component, etc., to configure an apparatus such as recited in claim 1 according to the limitations set forth in applicant’s claims can be viewed as nothing more than merely a matter of choice in design and/or optimization absent a showing by applicant of any criticality (new or unexpected results produced therefrom) over the prior art of record. In re claim 2, Ando as modified by the Navien bracket hole design would meet the limitations of the applicants claimed invention since both references discloses that the provisionally attaching hole would be capable of guiding a screw (41) to the mounting surface (SEE Figure 3 of Ando and Annotated Figure 1 of Navien bracket). In re claim 3, Ando as modified by the Navien bracket hole design would meet the limitations of the applicants claimed invention since Navien bracket teaches that the provisionally attaching hole is disposed in a center of the mounting fitting component in a left-right direction (SEE Annotated Figure 1). In re claim 4, Ando as modified by the Navien bracket hole design would meet the limitations of the applicants claimed invention since the resulting structure would include a provisionally attaching hole that has a different shape than the at least one fully attaching hole (SEE Annotated Figure 1 of Navien bracket). In re claim 5, Ando as modified by Navien bracket would meet the limitations of the applicants claimed invention since the resulting structure would amount to the lower connecting edge extending linearly in the left-right direction. In re claim 6, Ando as modified by Navien bracket would meet the limitations of the applicants claimed invention since Navien bracket also teaches that the width of the provisionally attaching hole is greatest at a lowermost end thereof. In re claim 7, Ando as modified by Navien bracket would meet the limitations of the applicants claimed invention since Ando discloses that the wall-side mounting portion (2) has a laterally-elongated rectangular shape (SEE Figures 1 & 2) such that the hole as taught by Navien bracket would have a width that is greatest at a lower end of the wall-side mounting portion. In re claim 8, Ando as modified by Navien bracket would meet the limitations of the applicants claimed invention since Navien bracket also teaches that the height of the vertically elongated aperture portion is greater than a height of the at least one fully attaching hole (SEE Annotated Figure 2 for clarity).
Claim(s) 9 & 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over any one of JP ‘580, JP ‘583, JP ‘378 and Ando in view of the Navien 20007609 Case Bracket. All of the cited references of JP ‘580 or JP ‘583 or JP ‘378 or Ando as modified by the Navien 20007609 Case Bracket reference teach the applicants primary inventive concept, however the Navien 20007609 Case Bracket reference is not specifically designed to have a plurality of fully attaching holes having an elongated-circle-like shape extending in the left-right direction, wherein the fully attaching holes are disposed on left and right sides of the provisionally attaching hole (as per claim 9) nor “wherein the lower edges of the fully attaching holes are disposed at a same position, in the up-down direction, as the upper connecting edge of the provisionally attaching hole (as per claim 10), however these configurations amount to nothing more than an obvious choice in the design of the bracket wherein a person having ordinary skill in the art for a given installation, would necessarily depend on numerous individual and/or interrelated design criteria, such as the overall size and/or shape of the attaching holes as well as their position, etc.; to configure an apparatus such as recited in claims 9 & 10 according to the limitations set forth in applicant’s claims can be viewed as nothing more than merely a matter of choice in design and/or optimization absent a showing by applicant of any criticality (new or unexpected results produced therefrom) over the prior art of record.
Response to Arguments
As previously stated, the examiner has submitted evidence that the Navien Case Bracket 20007609A predates the applicants priority date in the enclosed document:
(https://web.archive.org/web/20170211075327/https://bostonheatingsupply.com/Navien/NPE%20Parts%20and%20Diagram.pdf )
which cites a case assembly that uses the Navien Case Bracket as element (11) in the illustration on page 1 (provided below) along with a Table on page 2 which has a date of February 11, 2017.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY A WILSON whose telephone number is (571)272-4882. The examiner can normally be reached M-F; 7:00am-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, Steve McAllister can be reached at 571-272-6785. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY A WILSON/Primary Examiner, Art Unit 3762 March 27, 2026
Prosecution Insights