DETAILED ACTION
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 6 – 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 8 of copending Application No. 19/334,266 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations of claims 6 – 12 of the instant application are anticipated by claims 1 – 8 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Specifically regarding claim 6 of the instant application, it is the position of the Examiner that each of claims 1 and 5 of the reference application separately anticipates the limitations of claim 6. Examiner recognizes that claim 6 of the instant application positively includes a vehicle having first, second, third and fourth wheels, which is not positively required by either of claims 1 or 5 of the reference application. However, each of claims 1 and 5 of the reference application expressly states that the ‘vehicle frame rack’ is configured for use with a vehicle having first, second, third, and fourth wheels, as recited in claim 6.
Specifically regarding claim 12 of the instant application, each of claims 3 and 5 of the reference application separately anticipates the limitations of claim 6.
Claims 1 – 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 5 of copending Application No. 19/334,266 in view of Horimizu (U.S. Patent Application Publication Number 2017/0313561).
Specifically regarding claim 1 of the instant application, each of claims 1 and 5 of ‘266 separately anticipates each of the limitations of claim 1 of the instant application, except for the limitation of ‘the third support portion including a front wheel stopper, a rear wheel stopper, and a bottom plate.’
Horimizu teaches a vehicle stand (abstract) comprising: a third support portion configured to support a third wheel of a vehicle (figure 1, right elements 50 and 60 being the ‘third support portion’; paragraphs 66 – 68), the third support portion including a front wheel stopper, a rear wheel stopper spaced from the front wheel stopper along a longitudinal direction of the vehicle, and a bottom plate extending from the front wheel stopper to the rear wheel stopper (figures 1 and 2, element 61F being the ‘front wheel stopper,’ element 61R being the ‘rear wheel stopper,’ and element 61 being the ‘bottom plate’; paragraph 68). It would have been obvious to one skilled in the art to provide the third support portion of claims 1 and 5 of ‘266, with the front wheel stopper, rear wheel stopper, and bottom plate of Horimizu, because Horimizu teaches that a support portion having the front wheel stopper, rear wheel stopper, and bottom plate provides the benefit of supporting a wheel of a vehicle (paragraph 68), as desired by claims 1 and 5 of ‘266.
This is a provisional nonstatutory double patenting rejection.
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 3, 10, and 12 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 3 recites the limitation “the first support portion or the second support portion, which moves in the width direction ...” in the second paragraph of the body of the claim. Examiner notes that the limitation is directed towards ‘a vehicle stand.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘moving the first support portion or the second support portion in the width direction,’ as recited by the limitation, such that the claim is directed towards ‘a method of operating a vehicle stand,’ or whether Applicant intends the limitation to recite functional language of the ‘first support portion or the second support portion,’ such that the claim is directed towards the ‘vehicle stand’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “the first support portion or the second support portion, which is movable in the width direction ...”
Claim 3 further recites the limitation “... a first movable portion, which moves along the second beam” in the third paragraph of the body of the claim. Examiner notes that the limitation is directed towards ‘a vehicle stand.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘moving the first movable portion along the second beam,’ as recited by the limitation, such that the claim is directed towards ‘a method of operating a vehicle stand,’ or whether Applicant intends the limitation to recite functional language of the ‘first movable portion,’ such that the claim is directed towards the ‘vehicle stand’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... a first movable portion, which is configured to move along the second beam.”
Claim 3 further recites the limitation “... a second movable portion, which moves along the third beam” in the fifth paragraph of the body of the claim. Examiner notes that the limitation is directed towards ‘a vehicle stand.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘moving the second movable portion along the third beam,’ as recited by the limitation, such that the claim is directed towards ‘a method of operating a vehicle stand,’ or whether Applicant intends the limitation to recite functional language of the ‘second movable portion,’ such that the claim is directed towards the ‘vehicle stand’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... a second movable portion, which is configured to move along the third beam.”
Claim 10 recites the limitation “the first support portion or the second support portion, which moves in the width direction ...” in the second paragraph of the body of the claim. Examiner notes that the limitation is directed towards ‘a combination of a vehicle and a vehicle stand.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘moving the first support portion or the second support portion in the width direction,’ as recited by the limitation, such that the claim is directed towards ‘a method of operating a vehicle stand,’ or whether Applicant intends the limitation to recite functional language of the ‘first support portion or the second support portion,’ such that the claim is directed towards the ‘vehicle stand a vehicle’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “the first support portion or the second support portion, which is movable in the width direction ...”
Claim 10 further recites the limitation “... a first movable portion, which moves along the second beam” in the third paragraph of the body of the claim. Examiner notes that the limitation is directed towards ‘a combination of a vehicle stand and a vehicle.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘moving the first movable portion along the second beam,’ as recited by the limitation, such that the claim is directed towards ‘a method of operating a vehicle stand,’ or whether Applicant intends the limitation to recite functional language of the ‘first movable portion,’ such that the claim is directed towards the ‘vehicle stand and vehicle’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... a first movable portion, which is configured to move along the second beam.”
Claim 10 further recites the limitation “... a second movable portion, which moves along the third beam” in the fifth paragraph of the body of the claim. Examiner notes that the limitation is directed towards ‘a combination of a vehicle stand and a vehicle.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘moving the second movable portion along the third beam,’ as recited by the limitation, such that the claim is directed towards ‘a method of operating a vehicle stand,’ or whether Applicant intends the limitation to recite functional language of the ‘second movable portion,’ such that the claim is directed towards the ‘vehicle stand and vehicle’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... a second movable portion, which is configured to move along the third beam.”
Claim 12 recites the limitation “the first support portion or the second support portion, which moves in the width direction ...” in the tenth paragraph of the body of the claim. Examiner notes that the limitation is directed towards ‘a vehicle stand.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘moving the first support portion or the second support portion in the width direction,’ as recited by the limitation, such that the claim is directed towards ‘a method of operating a vehicle stand,’ or whether Applicant intends the limitation to recite functional language of the ‘first support portion or the second support portion,’ such that the claim is directed towards the ‘vehicle stand’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “the first support portion or the second support portion, which is movable in the width direction ...”
Claim 12 further recites the limitation “... a first movable portion, which moves along the second beam” in the eleventh paragraph of the body of the claim. Examiner notes that the limitation is directed towards ‘a vehicle stand.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘moving the first movable portion along the second beam,’ as recited by the limitation, such that the claim is directed towards ‘a method of operating a vehicle stand,’ or whether Applicant intends the limitation to recite functional language of the ‘first movable portion,’ such that the claim is directed towards the ‘vehicle stand’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... a first movable portion, which is configured to move along the second beam.”
Claim 12 further recites the limitation “... a second movable portion, which moves along the third beam” in the thirteenth paragraph of the body of the claim. Examiner notes that the limitation is directed towards ‘a vehicle stand.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘moving the second movable portion along the third beam,’ as recited by the limitation, such that the claim is directed towards ‘a method of operating a vehicle stand,’ or whether Applicant intends the limitation to recite functional language of the ‘second movable portion,’ such that the claim is directed towards the ‘vehicle stand’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... a second movable portion, which is configured to move along the third beam.”
Response to Arguments
Applicants’ arguments, see pages 8 - 10, filed July 6, 2026, with respect to claims 1 - 12 have been fully considered and are persuasive. Specifically, Examiner recognizes that the third support portion of Horimizu is not configured to support a third wheel of a vehicle which is separate from a first wheel of the vehicle in a longitudinal direction of the vehicle, as recited by claims 1, 6, and 12.
This is because the ‘third wheel’ of Horimizu is separated from the ‘first wheel’ in the width direction, rather than the longitudinal direction (figure 1, see below). Examiner further notes that it would not be reasonable to consider the ‘width direction’ of the vehicle as the ‘longitudinal direction’ of the vehicle because “longitudinal” is commonly defined by Merriam-Webster’s Dictionary as “of or relating to the lengthwise dimension,” wherein “lengthwise” is commonly defined as “of or relating to the longest dimension of an object.”
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jang (U.S. Patent Application Publication Number 2015/0139764) teaches a vehicle stand comprising: a first support portion configured to support a first wheel of a vehicle; a second support portion configured to support a second wheel of the vehicle, the second wheel being separated from the first wheel in a width direction of the vehicle; a third support portion configured to support a third wheel of the vehicle, the third wheel being separated from the first wheel in a longitudinal direction of the vehicle; a fourth support portion configured to support a fourth wheel of the vehicle, the fourth wheel being separated from the third wheel in the width direction of the vehicle; a first stand part which includes the first support portion and the second support portion at a predetermined height; and a second stand part that includes the third support portion and the fourth support portion at the predetermined height. However, Examiner notes that the second stand part is not separated from the first stand part. This is because “separate” is commonly defined by Merriam-Webster’s Dictionary as “kept apart from” or “detached from.” Because Jang teaches the first and second stand parts being connected to each other, Jang does not teach the first and second stand parts being “separated” from one another.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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