DETAILED ACTION
This communication is a first Office Action Non-Final rejection on the merits. Claims 1-18 as originally filed are pending and have been considered below.
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 1 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 12,371,922. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims merely recite the same structural recessed portion (railing bracket), expressed in slightly different terminology. The differences between the claims amount only to an obvious variation and do not result in a structural or functional distinction. Therefore, the instant claims do not confer patentable distinctness, and the substantive differences (highlighted below) are limited to alternative terminology that does not specifically disclose materially alter the scope of substance of the invention. Claims 2-9 and 11-18 depend from claims 1 and 10, respectively, and are therefore rejected as well.
Claim 1 (U.S. Patent No. 12,371,922)
Claim 1 (instant application)
1. A post anchor comprising: a base plate having an upper surface and a lower surface, the base plate defining a set of apertures extending through the base plate from the lower surface to the upper surface; and a collar that extends from the upper surface of the base plate, the collar comprising: a set of sides having an interior surface and an exterior surface, each of the set of sides abutting another of the set of sides at corners to define an abutment, wherein at least one of the set of sides includes a set of side wall apertures; and a set of corner members located at the corners, wherein each of the set of corner members includes a face offset from the abutment such that the face defines a separate plane from the set of sides, the face defining a corner exterior, and a corner member aperture that extends from the corner exterior to the interior surface; wherein an upper surface of at least one of the set of sides comprises a recessed portion extending downwardly from the upper surface thereof and between respective corner members thereof to define a resting surface capable of receiving a portion of a railing; and whereby the portion of the railing can be rested within the recessed portion of the upper surface of the at least one of the set of sides to facilitate mounting of the railing to a post located within the collar of the post anchor.
1. A post anchor comprising: a base plate having an upper surface and a lower surface, the base plate defining a set of apertures extending through the base plate from the lower surface to the upper surface; and a collar that extends from the upper surface of the base plate, the collar comprising: a set of sides having an interior surface and an exterior surface, each of the set of sides abutting another of the set of sides at corners, wherein at least one of the set of sides includes a set of side wall apertures; and a set of corner members located at the corners, wherein each of the set of corner members includes a corner member aperture that extends from a corner exterior to the interior surface; wherein an upper surface of at least one of the set of sides comprises a railing bracket defined by a pair of sides extending upwardly from the collar and juxtaposed from one another to define an opening therebetween capable of receiving a portion of a railing; and whereby the portion of the railing can be located within the opening of the railing bracket to facilitate mounting of the railing to at least one of a post located within the collar of the post anchor or the post anchor itself.
Claim 10 (U.S. Patent No. 12,371,922)
Claim 10 (instant application)
10. A post mounting system comprising: a post; a railing; and a post anchor coupled to the post, the post anchor comprising: a base plate having an upper surface and a lower surface, the base plate defining a set of apertures extending through the base plate from the lower surface to the upper surface; and a collar that extends from the upper surface of the base plate, the collar comprising: a set of sides having an interior surface and an exterior surface, each of the set of sides abutting another of the set of sides at corners, wherein the interior surface of the set of sides defines an interior that receives at least a portion of the post; a set of side wall apertures extending through at least one side of the set of sides; a first set of fasteners that couple the collar to the post through the set of side wall apertures; a set of corner members located at the abutting of each of the set of sides, wherein the set of corner members include a set of corner member apertures extending from a corner exterior to the interior surface; and a second set of fasteners that couple the post anchor to the post through the set of corner member apertures; wherein an upper surface of at least one of the set of sides comprises a recessed portion extending downwardly from the upper surface thereof and between respective corner members thereof to define a resting surface configured to receive and support a portion of the railing; and whereby the portion of the railing can be rested within the recessed portion of the upper surface of the at least one of the set of sides to facilitate mounting of the railing to a post located within the collar of the post anchor.
10. A post mounting system comprising: a post; and a post anchor coupled to the post, the post anchor comprising: a base plate having an upper surface and a lower surface, the base plate defining a set of apertures extending through the base plate from the lower surface to the upper surface; and a collar that extends from the upper surface of the base plate, the collar comprising: a set of sides having an interior surface and an exterior surface, each of the set of sides abutting another of the set of sides at corners, wherein the interior surface of the set of sides defines an interior that receives at least a portion of the post; a set of side wall apertures extending through at least one side of the set of sides; a first set of fasteners that couple the collar to the post through the set of side wall apertures; a set of corner members located at the abutting of each of the set of sides, wherein the set of corner members include a set of corner member apertures extending from a corner exterior to the interior surface; and a second set of fasteners that couple the post anchor to the post through the set of corner member apertures; wherein an upper surface of at least one of the set of sides comprises a railing bracket defined by a pair of sides extending upwardly from the collar and juxtaposed from one another to define an opening therebetween capable of receiving a portion of a railing; and whereby the portion of the railing can be located within the opening of the railing bracket to facilitate mounting of the railing to at least one of a post located within the collar of the post anchor or the post anchor itself.
Allowable Subject Matter
Claim(s) 1 and 10 are rejected, but would be allowable if the nonstatutory double patenting rejection set forth above were overcome by the filing of a terminal disclaimer in accordance with 37 CFR 1.321(c) or 1.321(d). In particular, the limitations drawn to “an upper surface of at least one of the set of sides comprises a railing bracket defined by a pair of sides extending upwardly from the collar and juxtaposed from one another to define an opening therebetween capable of receiving a portion of a railing; and whereby the portion of the railing can be located within the opening of the railing bracket to facilitate mounting of the railing to at least one of a post located within the collar of the post anchor or the post anchor itself” of claim 1, and “an upper surface of at least one of the set of sides comprises a railing bracket defined by a pair of sides extending upwardly from the collar and juxtaposed from one another to define an opening therebetween capable of receiving a portion of a railing; and whereby the portion of the railing can be located within the opening of the railing bracket to facilitate mounting of the railing to at least one of a post located within the collar of the post anchor or the post anchor itself” of claim 10 would overcome the prior art rejection since no prior art of record, alone or in combination, teaches this configuration and any modification to arrive at the claimed subject matter would require impermissible hindsight or piecemeal reconstruction. Claims 2-9 and 11-18 depend from claims 1 and 10, respectively, and are therefore rejected as well.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The cited patents listed on the included form PTO-892 further show the state of the art with respect to post anchors in general.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMAR HIJAZ whose telephone number is (571)270-5790. The examiner can normally be reached on 8-6 EST Monday-Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached on (571) 270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMAR F HIJAZ/Examiner, Art Unit 3633