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 .
Election/Restrictions
Applicants’ election without traverse of Group I, species A2, B2, C1 readable on claims 1-5, 7, 9, 10 and 11 in the reply filed on 7/6/26 is acknowledged. Claims 6, 8, 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention II, species A1, B1, C2, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/6/26.
An OA on the merits of claims 1-5, 7, 9, 10 and 11 as follows:
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed to.
The following title is suggested: -- A dual rail mounting device--.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1-5, 7, 9-11 objected to the following information:
Since the claims directed to “A device for mounting a dual rail on a vehicle,” therefore, the preamble should be rewritten as follows:
-- A device for mounting a dual rail on a vehicle comprising:” --.
. In line 1 of claims 2-5, 7, 9-11 "Claim" should not be capitalized.
Appropriate correction is required.
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 1-5, 7, 9-11 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.
Since the claims directed to a device as indicated in line 1 of the preamble and aseveraltransition terms such as “comprising” also occurrence in lines 2 and 9 which should be updated to: --“includes “--, for clarity of the inventive structural features.
Therefore, the following phrases or terms should be updated to proper structure formats.
“an elastic cushion comprising:
a first cavity configured for receiving a first rail of the dual rail.
a second cavity configured for receiving a second rail of the dual rail; and
at least a first slot configured for enabling a lateral insertion of the first rail of the dual rail into the first cavity and a lateral insertion of the second rail of the dual rail into the second cavity;” (claim 1, lines 2-8)) is awkwardly worded and confusing should be rewritten to:
--" an elastic cushion includes a first cavity configured to receive a first rail of the dual rail,
a second cavity configured to receive a second rail of the dual rail, and at least a first slot configured to lateral insert of the first rail of the dual rail into the first cavity and lateral insert of the second rail of the dual rail into the second cavity;” --
“a mounting bracket comprising:
a recess designed for receiving elastic cushion; and
a mounting mechanism configured for mounting the mounting bracket on a vehicle; and
a fastening mechanism configured for fastening the mounting bracket on the elastic cushion.” (claim 1,
lines 9-14) is awkwardly worded and confusing should be rewritten to:
--" a mounting bracket includes a recess designed for receiving the elastic cushion, a mounting mechanism configured to mount the mounting bracket on the vehicle, and a fastening mechanism configured to fasten the mounting bracket on the elastic cushion.” --
whether or not “a vehicle” (claim 1, line 12) as same as that “a vehicle” in the preamble of claim 1, line 1? Id it is then line 12 of claim 1 should be: --“the vehicle” --.
“comprises” (claim 2, line 1) appears to be: --“further comprises” --.
Claims 3, 5 directed to the operation functionally intended use which does not further limit the claimed device.
Note: it has been held that the recitation that an element is "capable of, adapted to, configured to, or configuring for, operable to and/or can" perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
“comprises” (claim 4, line 2) appears to be: --“further comprises” --, to reflect changes as suggested to claim 1 above.
Like claim 4 line 2 above applied to claim 6, lines 2 and 6, and claims 7-11, line 1, the term “comprises” should be: -- further comprises” --, respectively.
Claim Rejections - 35 USC § 102
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 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) 1-5, 7, 9 as best understood is/are rejected under 35 U.S.C. 102a1 as being anticipated by JP 2005160273A to Naruse.
Naruse discloses the claimed device for mounting a dual rail on a vehicle, wherein the device comprises:
an elastic cushion 14/24 comprising:
a first cavity (as recess of 10) configured for receiving a first rail of the dual rail (see Fig. 3);
a second cavity (as recess of 20) configured for receiving a second rail of the dual rail; and
at least a first slot configured for enabling a lateral insertion of the first ra I of the dual rail into the first cavity and a lateral insertion of the second rail of the dual rail into the second cavity (see Fig. 3);
a mounting bracket 40comprising:
a recess designed for receiving the elastic cushion 14 (see Fig. 7); and
a mounting mechanism 40a configured for mounting the mounting bracket 40 on a vehicle; and
a fastening mechanism 12 configured for fastening the mounting bracket on the elastic cushion (see Fig. 7).
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Therefore, the above limitation is/are met by the applied reference above.
As applied to claim 2 refers to a bent portion of 14/24 which represented the claimed tab of above claim.
As applied to claims 3, 5, since no further inventive structure features existed in these claims, therefore not inventive when departing from the applied above reference and common general knowledge without exercising any inventive skills.
As applied to claim 4, refer to Fig. 7 as rotated 90° (counter clockwise) and reproduced below of the applied reference for the teaching of “the mounting bracket 40 comprises an upper plate and a lower plate, the upper plate comprises the recess
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configured for receiving the elastic cushion, and the mounting bracket comprises a connecting mechanism configured for connecting the upper plate and the lower plate to one another, and for thereby enclosing the elastic cushion between the upper plate and the lower plate (see reproduced Fig. 7 above.
As applied to claim 7 appears to meet by the above where the cushion in form of multi strap like (see Fig. 8, which depicts at least two straps 24, 24a presenting as cushion straps).
As applied to claim 9, refer to Fig. 2 where the mounting bracket 40 includes a raised edge 12a.
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) 10-11 as best understood is/are rejected under 35 U.S.C. 103 as being unpatentable over Naruse.
As applied to claims 10-11, regarding materials as set forth in above claims is therefore not inventive when departing from the Naruse and common general knowledge without exercising any inventive skills. Further, It would have been obvious to a person of ordinary skill in the art at the time the invention was made to utilize with material above since above materials are well-known and are selected based on design considerations and tradeoffs between cost, mechanical properties, and dielectric properties.
Limitation of claim 11 is also met for same reason set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can normally be reached M-TH ~5:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas J Hong can be reached at 571-272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MINH N TRINH/Primary Examiner, Art Unit 3729
8/31/26
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