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 .
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
Claim(s) 14-17 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.
MPEP 2173.05(p), which recites in part: “II. PRODUCT AND PROCESS IN THE SAME CLAIM A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).” (emphasis in bold added). For more info, see also Federal Circuit’s analysis of claim indefiniteness under 35 U.S.C. § 112 ¶ 2 in IPXL Holdings, L.L.C. v. Amazon.com, Inc. – that a single claim covering both an apparatus and a method of use of that apparatus is indefinite.
Claim 14 in lines 6-18 recites in part: “said hook configured to insert into the second hole through the pegboard surface when the pegboard hanger assembly is installed on the pegboard assembly; and a grommet configured to insert into the first hole of the pegboard surface such that the grommet extends from an outboard surface of the pegboard surface through the pegboard surface and beyond an inboard surface of the pegboard surface,……; and when the pin is fully installed in the passage of the grommet, the pin presses an outer circumference of the grommet against an inner circumference of the first hole of the pegboard surface”.
As best understood, it appears that above recited limitations taken from claim 14 are directing to a method of using the pegboard hanger assembly to install to a pegboard, covering various steps of an installation process of pegboard hanger assembly to pegboard from beginning to end. Note that the pegboard alongside pegboard surface thereof belong to external workpiece(s), instead of being claimed components or elements of the pegboard hanger assembly.
For example, claim 14 in lines 7-9 recites in part: “said hook configured to insert into the second hole through the pegboard surface when the pegboard hanger assembly is installed on the pegboard assembly”.
However, upon careful review, it is difficult to understand with clarity as to how the hook would be configured and what specific structural limitations are required to achieve such hook insertion into a hole at surface of the pegboard. Therefore, as best understood by Examiner, for the sake of clarity, the above limitation is rendered to be indefinite and should be amended to read as follow for the sake of improving clarity: “said hook is inserted into the second hole through the pegboard surface when the pegboard hanger assembly is installed on the pegboard assembly”. However, suggested limitation which reads: “said hook is inserted into the second hole through the pegboard surface when the pegboard hanger assembly is installed on the pegboard assembly” is a explicit method step of using the pegboard hanger assembly to install to a pegboard, but not belong to the apparatus claim for the pegboard hanger assembly itself.
Please note that unless the pegboard hanger alongside the hook thereof is used in an actual method step of installation to a pegboard, otherwise, the pegboard hanger along with hook thereof (as standalone hanger assembly) would not possess any structural interactions with the pegboard and its hole and pegboard surface, because pegboard is an external workpiece outside the subject matter scope of the pegboard hanger assembly itself.
Moreover, lines 7-9 of claim 14 which recites: “said hook configured to insert into the second hole through the pegboard surface when the pegboard hanger assembly is installed on the pegboard assembly” is deemed indefinite based on the inclusion of elements and limitations directing to a pegboard assembly (external workpiece) including second hole and pegboard surface, while separate and distinct from claimed scope and subject matter for the pegboard hanger assembly.
Furthermore, another example found in claim 14 in lines 10-12 recites in part: “and a grommet configured to insert into the first hole of the pegboard surface such that the grommet extends from an outboard surface of the pegboard surface through the pegboard surface and beyond an inboard surface of the pegboard surface”.
However, upon careful review, it is difficult to understand with clarity as to how the grommet would be configured and what specific structural limitations required to achieve such grommet configuration to enable of grommet insertions to be extending from one surface of pegboard and beyond another surface of pegboard. Therefore, as best understood by Examiner, for the sake of clarity, the above limitation should be amended to read as follow for the sake of overcoming indefiniteness issue to the following: “and a grommet is inserted into the first hole of the pegboard surface such that the grommet extends from an outboard surface of the pegboard surface through the pegboard surface and beyond an inboard surface of the pegboard surface”.
However, “and a grommet is inserted into the first hole of the pegboard surface such that the grommet extends from an outboard surface of the pegboard surface through the pegboard surface and beyond an inboard surface of the pegboard surface” is directing to a method step of using the pegboard hanger assembly to install to a pegboard, but not belong to the apparatus claim for the pegboard hanger assembly itself.
Please note that unless the pegboard hanger alongside the grommet thereof is used in an actual method step of installation to a pegboard, the pegboard hanger along with grommet thereof (as standalone hanger assembly) would not possess any structural interactions with the hole and pegboard surface of pegboard (external workpiece outside the subject matter scope of the pegboard hanger assembly).
Moreover, claim 14 in lines 10-12 which recites in part: “and a grommet configured to insert into the first hole of the pegboard surface such that the grommet extends from an outboard surface of the pegboard surface through the pegboard surface and beyond an inboard surface of the pegboard surface” is deemed indefinite based on the inclusion of elements and limitations directing to a pegboard assembly (external workpiece) including first hole and surfaces of a pegboard, while separate and distinct from claimed scope of pegboard hanger assembly.
Furthermore, yet another example found in claim 1 in last 3 lines recites in part: “when the pin is fully installed in the passage of the grommet, the pin presses an outer circumference of the grommet against an inner circumference of the first hole of the pegboard surface” which is interpreted as being a method step as follow: “installing a pin fully in the passage of the grommet, with the pin pressing an outer circumference of the grommet against an inner circumference of the first hole of the pegboard surface” which belongs as subject matter of a method step of using the pegboard hanger assembly for installation to a pegboard, but not belong to the apparatus claim for the pegboard hanger assembly itself. Please note that unless the pegboard hanger alongside the pin thereof is used in an actual method step of installation to a pegboard, the pegboard hanger along with pin and grommet thereof would not have any structural interactions with the hole and pegboard surface of pegboard, which is external workpiece outside the subject matter scope of the pegboard hanger assembly itself.
Moreover, claim 14 in last 3 lines which recites in part: “when the pin is fully installed in the passage of the grommet, the pin presses an outer circumference of the grommet against an inner circumference of the first hole of the pegboard surface” is deemed indefinite based on the inclusion of elements and limitations directing to a pegboard (external workpiece) including circumferences of the first hole and surface of a pegboard, while having claimed scope of pegboard hanger assembly.
Therefore, based upon discussions above in totality, claim 14 in lines 6-18 recites various method steps and claimed limitations for multiple method steps are being directed to the subject matter of a method for installing a pegboard hanger assembly to a pegboard, but not the apparatus claim for the pegboard hanger assembly itself. As a result, in accordance with MPEP 2173.05(p), claim 14 is indefinite because a single claim which claims both an apparatus (pegboard hanger assembly) and the method steps of using the apparatus (a method for install the pegboard hanger to pegboard) is indefinite.
By virtue of dependency upon base claim 14, dependent claims 15-17 are also 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Einhorn (US 3891172) discloses a hook hanger support member for panel board. Gibbons (US 4405110) discloses a support bracket for supporting a hanger structure from a pegboard. Butterworth (US 3091423) discloses a hook and peg hold means for boards. Foye (US 6266250B1) discloses a mounting apparatus with a locking pin to mount to a support panel. Marieu (CA1049478A) discloses a pegboard hook retainer. Girdley (US 4917337) discloses an article support for pegboard. Conran (US 3625464) discloses an article support for apertured panel with a support stud.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DING Y TAN whose telephone number is (303)297-4271. The examiner can normally be reached on Monday-Friday, 8:00 am MT--5:00 pm MT. 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, Terrell McKinnon can be reached on 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DING Y TAN/Examiner, Art Unit 3632
/TERRELL L MCKINNON/Supervisory Patent Examiner, Art Unit 3632