DETAILED ACTION
The Examiner acknowledges Claims 28-31 and 33-35 have been amended, Claim 32 has been cancelled and Claims 21-27 and 36-40 remain withdrawn.
Response to Arguments
Applicant’s arguments and amendments with respect to the Specification Objection have been fully considered and are persuasive. The Objection of the Specification has been withdrawn.
Applicant’s arguments and amendments with respect to the Drawing Objection have been fully considered and are persuasive. The Objection of the Drawings has been withdrawn.
Applicant’s arguments and amendments with respect to the 112 rejections have been fully considered and are persuasive. The 112 rejections of Claim 28, 31 and 34 have been withdrawn.
Applicant’s arguments and amendments with respect to the Prior Art rejections have been considered but are moot because the amendment(s) have necessitated a new ground(s) of rejection.
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.
Claim 31 is 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 Specification does not set forth the anchor can be removed and repositioned. Paragraph 0044 of the Published Application sets forth the anchor “may be removably attached” but nothing about repositioning it.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 28-30 and 33-35 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent # 7,251,918 to Reif et al.
Regarding claim 28, Reif teaches in Figures 3 and 4, an apparatus (15) [fixing bracket (Column 8, Line 38)] comprising: an elongated [rectangular (Column 4, Lines 41-42)] base strip (Column 8, Line 42); a pair of step clips (3) [legs (Column 7, Line 44)] provided on the elongate base strip (Column 8, Line 42) (8) [flange (Column 7, Line 49)]; an anchor (7) [spike (Column 8, Line 42)] protruding from an inner cavity formed between the pair of step clips (3) capable of digging into and deforming a portion [driven into hard wood (Column 8, Line 48)] of a deck board (11) (Column 8, Lines 16-17); and Figure 7 shows a plurality of tabs (30) [blade strips (Column 9, Line 27)] extending below the base strip configured to align the base strip [one on each side] along a side surface of a joist (13) [substrate (Column 8, Line 24)], wherein one or more of the plurality of tabs (30) comprises a cutout (Column 9, Lines 32-34).
Regarding claim 29, Reif teaches in Figure 7, the plurality of tabs (30) extend perpendicular to the base strip (8) to secure the apparatus parallel to the joist [substrate (Column 8, Line 24)].
Regarding claim 30, Reif teaches in Figure 4, the anchor (7) provides friction [positive fit (Column 8, Lines 29-30)] against movement of a deck board (11, Fig 3) with respect to a front and back end of the apparatus (15).
Regarding claim 33, Reif teaches in Figure 4, the pair of step clips (3) extend in a perpendicular direction with respect to the base strip (8).
Regarding claim 34, Reif teaches in Figure 3, the anchor (6) secured one or more deck boards (11) in the pair of step clips (5).
Regarding claim 35, Reif teaches in Figures 21 and 22, the apparatus (42) includes multiple locking parts (44) to provide connections to one or more additional devices (2/2’).
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.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 7,251,918 to Reif et al.
Regarding claim 31, Reif teaches a system with an anchor but does not teach it can be removed and repositioned. However, the Applicant discloses in Paragraph 0044 of the Published Application that the anchor may be removably attached or permanently attached. In the instant case, it would have been a simple substitution of one known element for another to obtain predictable results.
Conclusion
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/ANDREW J TRIGGS/Primary Examiner, Art Unit 3635
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