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 Objections
Claims 9-15 are objected to because of the following informalities:
Claim 9 recites: “and configured to provided at least one of the first and second stops.”
The Examiner believes that the word “provided” should be “provide.”
All claims that depend from claim 9 are objected since they depend from an objected parent claim.
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 12-13 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.
Claim 12 recites: “wherein the retainers are stamped from and extend proud of an adjacent surface of the bracket.”
There is no antecedent basis for the limitation “the retainers” (plural). Also it is not clear what is meant by “extend proud of an adjacent surface.”
Claim 9 is a parent claim of claim 12. Claim 9 recites “a retainer” (singular).
In order to expedite prosecution, claim 12 is construed as: “wherein the retainer is stamped from and extends from of an adjacent surface of the bracket.”
Claim 13 is rejected since it depends from a rejected parent claim.
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Jafari” (US 2010/0084155).
Regarding claim 1, Jafari anticipates 1. An adjustable depth electrical box comprising:
a bracket including a first interlocking structure and a first retention feature (Figs. 1-6, [0025]-[0030]; frame 2 includes slots 6, and tabs 14 to retain the box);
an electrical box slidably supported on the bracket and including a second interlocking structure configured to slide relative to the first interlocking structure between multiple discrete positions, the electrical box having a second retention feature cooperating with the first retention feature (Figs. 1-6, [0025]-[0030]; box 3 includes tab 8, and end tabs 9 which cooperates with tabs 14);
wherein the first and second interlocking structures are configured to interlock with one another in one of the multiple discrete positions and resist a sliding force above a threshold thereby providing a discrete installation depth (Figs. 1-6, [0025]-[0030]; slots 6 and tab 8 interlock in one of multiple discrete positions);
and wherein the first and second retention features are configured to permit uninhibited sliding of the first and second interlocking structures between first and second stops but prevent overtravel of the bracket relative to the electrical box (Figs. 1-6, [0025]-[0030]; tabs 14 and end tabs 9 permit sliding between the slot 6 stops but prevent overtravel).
Regarding claim 2, Jafari anticipates 2. The adjustable depth electrical box of claim 1, wherein one of the first and second interlocking structures includes at least one slot, and the other of the first and second interlocking structures includes at least one tab received in one of the slots corresponding in the discrete installation depth (Figs. 1-6, [0025]-[0030]; tab 8 is received in one of the slots 6).
Regarding claim 3, Jafari anticipates 3. The adjustable depth electrical box of claim 2, wherein the at least one slot is provided on the electrical box, and the at least one tab is provided on the bracket (Figs. 1-6, [0025]-[0030]; slot 6 is provided on the box 3 and tab 8 is provided on the frame 2).
Regarding claim 4, Jafari anticipates 4. The adjustable depth electrical box of claim 2, wherein the at least one slot included multiple slots (Figs. 1-6, [0025]-[0030]; multiple slots 6).
Regarding claim 5, Jafari anticipates 5. The adjustable depth electrical box of claim 2, wherein the at least one tab includes multiple tabs (Figs. 1-6, [0025]-[0030]; tab 8 is on each side of the box 3).
Regarding claim 6, Jafari anticipates 6. The adjustable depth electrical box of claim 5, wherein the at least one slot included multiple slots (Figs. 1-6, [0025]-[0030]; multiple slots 6).
Regarding claim 7, Jafari anticipates 7. The adjustable depth electrical box of claim 2, wherein the at least one slot is provided in a wall and extends through an entire thickness of the wall (Figs. 1-6, [0025]-[0030]; slots 6 extends through an entire thickness of the plate 4).
Regarding claim 8, Jafari anticipates 8. The adjustable depth electrical box of claim 2, wherein the at least one slot is provided on the bracket, and the at least one tab is provided on the electrical box (Figs. 1-6, [0025]-[0030]; slot 6 is provided on the frame 2 and tab 8 is provided on the box 3).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Jafari in view of “Gretz” (US 7,476,807).
Regarding claim 9, Jafari discloses the claimed invention as applied to claim 1, above.
Jafari does not disclose the limitations of claim 9.
Gretz discloses 9. The adjustable depth electrical box of claim 1, wherein one of the first and second retention features is provided by a longitudinal pocket providing the first and second stops at opposing ends of the pocket, and the other of the first and second retention features is provided by a retainer received in the pocket and configured to provided at least one of the first and second stops (Fig. 1, col. 3, lines 25 and 38; longitudinal slot 94 is a pocket with stops at the ends of the pocket, and alignment tab 64 is a retainer).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Jafari’s electrical box with Gretz’s structure in order to thereby further align the bracket 24 with respect to the electrical box 22, as suggested by Gretz at col. 5, lines 37-42.
Regarding claim 10, Jafari in view of Gretz discloses the claimed invention as applied to claim 9, above.
Jafari discloses 10. The adjustable depth electrical box of claim 9, wherein the bracket is a stamped sheet metal structure, and the electrical box is plastic (Figs. 1-6, [0024]; the frame 2 is metal and the box 3 is plastic).
Regarding claim 11, Jafari in view of Gretz discloses the claimed invention as applied to claim 10, above.
Jafari discloses 11. The adjustable depth electrical box of claim 10, wherein the first retention feature is unitarily and integrally with the bracket (Figs. 1-6, [0025]-[0030]; tab 14 is integral with frame 2).
Regarding claim 12, Jafari in view of Gretz discloses the claimed invention as applied to claim 11, above.
Gretz discloses 12. The adjustable depth electrical box of claim 11, wherein the retainer is stamped from and extends from of an adjacent surface of the bracket (Fig. 1, col. 3, lines 25 and 38; alignment tab 64 is stamped and extends from the bracket. Examiner’s note: see the 112 rejection above for the construction of this limitation.).
Regarding claim 13, Jafari in view of Gretz discloses the claimed invention as applied to claim 12, above.
Jafari discloses 13. The adjustable depth electrical box of claim 12, wherein the second retention feature is unitarily with the electrical box (Figs. 1-6, [0025]-[0030]; end tab 9 is formed with the box 3).
Jafari does not disclose the end tab 9 is integrally formed with the box 3.
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have formed these parts integrally formed, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893). Doing so would have provided for an alternate way to construct the box through ordinary experimentation.
Regarding claim 14, Jafari in view of Gretz discloses the claimed invention as applied to claim 9, above.
Jafari does not explicitly disclose the limitations of claim 14.
It would have been an obvious matter of design choice to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have provided the pocket in the electrical box, which would involve a rearrangement of parts, and a pair of opposing retainers on the bracket since this would involve a duplication of parts, since it has been held that rearranging and duplicating parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70, St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. It is noted that Jafari’s electrical box includes opposing retainers on the bracket, so a person of ordinary skill in the art would have found it obvious to duplicate Gretz’s retainers based on a reading of Jafari and through ordinary experimentation. Doing so would have provided for an alternate way to construct the box.
Regarding claim 15, Jafari in view of Gretz discloses the claimed invention as applied to claim 10, above.
Gretz discloses 15. The adjustable depth electrical box of claim 10, wherein the bracket includes at least one reinforcing rib (Fig. 1, col. 3, line 35; stiffening rib 88).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Jafari.
Regarding claim 16, Jafari discloses the claimed invention as applied to claim 1, above.
Jafari discloses 16. The adjustable depth electrical box of claim 1, wherein opposing hooks that are received in corresponding grooves, the hooks and grooves defining an adjustment plane (Figs. 1-6, [0025]-[0030]; slots 6 and opposing tabs 8 are received in corresponding slots 6, they define an adjustment plane).
Jafari’s discloses the box includes opposing hooks and corresponding grooves in the bracket, but Jafari does not explicitly disclose the bracket includes opposing hooks and corresponding grooves in the electrical box.
It would have been an obvious matter of design choice to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have provided the hooks on the bracket and grooves on the box, which would involve a rearrangement of parts, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70, St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Doing so would have provided for an alternate way to construct the box through ordinary experimentation.
Conclusion
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/STANLEY TSO/Primary Examiner, Art Unit 2847