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 .
The following correspondence is a non-final Office Action for application no. 18/738,060 for a BEAM CLAMP, AND A MOUNTING ASSEMBLY, filed on 6/10/2024. Claims 1, 2, 4-8, 10, 12-19 and 26-29 are pending.
Election/Restrictions
Applicant's election with traverse of Species 5 (Fig. 21) is acknowledged. The traversal is based on the grounds that the embodiments are directed to a unitary concept and based on various policy arguments. These arguments are unpersuasive. The arguments set forth by the applicant (i.e., a want of a serious burden on the examiner) are arguments commonly set forth when traversing a restriction of the invention. (See MPEP 803). However, the examiner is requiring the applicant to elect between several disclosed species. A proper traversal of an election of species includes arguments that the species are not patentable over one another. Since the applicant has not submitted persuasive arguments that the embodiments are not distinct from one another, the requirement is still deemed proper and is therefore made FINAL.
Claims 10, 12-19 and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/22/2025.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/627,859, filed on 1/18/2022.
Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to claim priority to an application filed in a foreign country.
Drawings
The drawings are objected to because RN 20 appears to point to two different members. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because RNs 32, 34 do not appear to point to vertices. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
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, 2, 4-8 and 27-29 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.
Regarding claim 1, there is an inconsistency between the language in the preamble and certain portions in the body of the claim, thereby making the scope of the claims unclear. The preamble in claim 1 clearly indicates that a subcombination is being claimed, e.g., "a beam clamp for attachment to a flange of a structural building member...." This language would lead the examiner to believe that the applicant intends to claim only the subcombination of "a beam clamp," the structural building member being only functionally recited. This presents no problem as long as the body of the claim also refers to the functionally, such as, "for attachment to said structural building member."
The problem arises when the structural building member is positively recited within the body of the claim, such as, "a clamp body that … exceeds the hardness of the structural member.” There is an inconsistency within the claim; the preamble indicates subcombination, while in at least one instance in the body of the claim there is a positive recital of structure indicating that the combination of a clamp and a structural building member are being claimed. The examiner cannot be sure if applicant's intent is to claim merely the clamp or the clamp in combination with the structural building member. Applicant is required to clarify what the claims are intended to be drawn to, i.e., either the clamp alone or the combination of the clamp and the structural building member. Applicant should make the language of the claim consistent with applicant's intent. In formulating a rejection on the merits, the examiner is considering that the claims are drawn to the combination and the claims will be rejected accordingly. If applicant indicates by amendment that the combination claim is the intention, the language in the preamble should be made consistent with the language in the body of the claims. If the intent is to claim the subcombination, then the body of the claims must be amended to remove positive recitation of the combination. Claims 2, 4-8 and 27-29 are rejected for the same reasons as dependent on claim 1.
Claim 1 recites the limitation "the outer," “the cross sectional area of the shank” and “the longitudinal direction” therein. There is insufficient antecedent basis for these limitations in the claim. Claims 2, 4-8 and 27-29 are rejected for the same reasons as dependent on claim 1.
Claim 2 recites the limitation "the form" therein. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the direction of insertion" therein. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the amplitude" therein. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the ratio," “the width” and “the minimum separation” therein. There is insufficient antecedent basis for these limitations in the claim.
Claim 7 recites the limitation "the ratio," “the depth” and “the minimum separation” therein. There is insufficient antecedent basis for these limitations in the claim.
Claim 28 recites the limitation "the engagement" therein. There is insufficient antecedent basis for this limitation in the claim.
Claim Objections
Claims 3 and 9 are objected to because of the following informalities: claims 3 and 9 are not in proper form because the text of cancelled claims should be deleted. Appropriate correction is required.
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.
Claim(s) 1, 2, 4-8 and 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Showalter (U.S. Pub. 7,513,080) in view of Dinh (U.S. Pat. 9,422,957).
Regarding clams 1 and 8, as best understood, Showalter teaches a beam clamp for attachment to a flange of a structural building member and from which to support or brace a service component, the beam clamp comprising: a clamp body, the clamp body includes including: a first jaw section that includes at least one mounting through hole, a second jaw section that has a pair of lateral faces (one shown below), a joining section that interconnects the first and second jaw sections, the first and second jaw sections, and the joining section of the clamp body being formed of a single piece of material, a transverse opening that is to receive the flange, the transverse opening being defined by the first and second jaw sections and the joining section, and a contact surface on the second jaw section, the outer peripheral edges of the contact surface being defined on two sides by vertices (edges) formed with the lateral faces and on a third side by a leading edge of the second jaw section, wherein in use of the beam clamp, the contact surface is in contact with the flange of the structural member; and at least one set screw that is to be installed in the mounting through hole, the set screw having a tip with a leading end with a cross sectional area that is less than the cross sectional area of the shank of the set screw, the cross sectional areas being in planes that are transverse to the longitudinal direction of the shank, whereby, in use of the clamp, the flange is secured within transverse opening between the tip of the at least one set screw and the contact surface, but does not teach that the clamp body is made of hardened steel that exceeds the hardness of the structural member, and has a minimum hardness of 150 BHN and wherein the contact surface has surface irregularities formed on at least a portion of the contact surface that extends the width between the vertices and from the leading edge, providing a roughness that enhances engagement of the contact surface with the flange. [The Examiner notes that the limitations of claim 8 are not given any patentable weight because the limitations regarding “creating by a cutting tool” recite limitations regrading methods of manufacturing and the claims are directed to an apparatus.]
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, with a reasonable degree of success, to construct the invention of Showalter where the clamp body is made of hardened steel that exceeds the hardness of the structural member, and has a minimum hardness of 150 BHN, in order to provide a strong and durable structural member and further, discovering an optimum value of a result effective variable involves only routine skill in the art.
Furthermore, Dinh teaches a clamp wherein the contact surface has surface irregularities (Fig. 1B) formed on at least a portion of the contact surface, providing a roughness that enhances engagement of the contact surface. Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, with a reasonable degree of success, to construct the invention of Showalter wherein the contact surface has surface irregularities formed on at least a portion of the contact surface that extends the width between the vertices and from the leading edge, providing a roughness that enhances engagement of the contact surface with the flange in order to securely grip the flange and prevent undesired movement.
[AltContent: textbox (Clamp body)]
[AltContent: arrow][AltContent: textbox (Joining section)]
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[AltContent: arrow]
[AltContent: textbox (Tip with leading end)]
[AltContent: arrow][AltContent: textbox (2nd jaw section)][AltContent: arrow]
[AltContent: arrow][AltContent: textbox (1st jaw section)]
[AltContent: textbox (Mounting through hole)][AltContent: arrow][AltContent: textbox (Longitudinal direction of shank)]
[AltContent: arrow][AltContent: arrow]
[AltContent: textbox (Lateral face )][AltContent: arrow][AltContent: arrow][AltContent: textbox (Mounting through hole)][AltContent: arrow]
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow]
[AltContent: arrow][AltContent: textbox (Set screw)][AltContent: arrow]
[AltContent: textbox (Transverse opening)]
[AltContent: textbox (flange)][AltContent: textbox (Structural member )]
[AltContent: textbox (Contact surface)][AltContent: textbox (Contact surface)]
[AltContent: textbox (Leading edge of 2nd jaw section)]
Regarding claim 2, as best understood, Showalter and Dinh teach the clamp of claim 1, wherein the surface irregularities are in the form of one or more sets of alternating ridges and furrows that are formed in the contact surface (see Fig. 1B).
Regarding claim 4, as best understood, Showalter and Dinh teach the clamp of claim 2, wherein Dinh teaches that the ridges and furrows are formed so as to be substantially transverse to the direction of insertion (horizontal direction) of the flange into the transverse opening.
Regarding claims 5-7, as best understood, Showalter and Dinh teach the clamp of claim 1, but does not teach that the amplitude of the surface irregularities is less than 1 mm, the ratio of the width of the second jaw section between the pair of lateral faces to the minimum separation of the first and second jaw sections is at least 1.25:1 or that the ratio of the depth of the second jaw section to the minimum separation of the first and second jaw sections is at least 1.5:1. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, with a reasonable degree of success, to construct the invention of Showalter and Dinh wherein the amplitude of the surface irregularities is less than 1 mm, the ratio of the width of the second jaw section between the pair of lateral faces to the minimum separation of the first and second jaw sections is at least 1.25:1 and the ratio of the depth of the second jaw section to the minimum separation of the first and second jaw sections is at least 1.5:1 in order to provide a gripping surface with a firm hold, and further, discovering an optimum value of a result effective variable involves only routine skill in the art.
Regarding claim 27, as best understood, Showalter and Dinh teach the clamp of claim 1, wherein the second jaw section includes at least one mounting through hole.
Regarding claim 28, as best understood, Showalter and Dinh teach the clamp of claim 27, wherein there is provided a contact surface on the first jaw section, but does not teach that the contact surface is formed with surface irregularities providing a roughness that enhances the engagement of the contact surface with the flange. Dinh, however, teaches a clamp wherein the contact surface is formed with surface irregularities (Fig. 1B) providing a roughness that enhances the engagement of the contact surface with the flange in order to prevent slippage. Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, with a reasonable degree of success, to construct the invention of Showalter and Dinh, wherein the contact surface is formed with surface irregularities providing a roughness that enhances the engagement of the contact surface with the flange in order to securely grip the flange and prevent undesired movement.
Although claim 29 contains purely functional limitations, it is nonetheless rejected because as best understood, Showalter and Dinh teach the clamp of claim 28, wherein the clamp body can be mounted in either of two orientations (through one of the first or second jaw sections) on the flange and a set screw extends through either mounting through hole, depending on which of the two contact surfaces is to be in contact with the flange.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPub 2017/0336021, 2004/0055233, USP 8844234, 4747590 (beam clamps).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NKEISHA J. SMITH whose telephone number is (571)272-5781. The examiner can normally be reached Normal hours: M/Th 7-4; T 9-5; W 7-3; F 7-4.
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 at 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NKEISHA SMITH/Primary Examiner, Art Unit 3632 September 12, 2025
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