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 .
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.
Claims 1-16 are 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 limitation ““a first runner physically connecting the first wing to the partition outer surface” raises new matter issues added to the specification because nowhere in the Detailed Description is disclosed how the runner is physically connected to the first wing. It is unclear from the Specification how the first runner and the first wing are physically connected.
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 1-16 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 the limitation “a first runner physically connecting the first wing to the partition outer surface”, is indefinite for the reasons explained in the 112, first paragraph, above. The claim is indefinite because it is unclear what applicant meant by “physically”. Nowhere in the Detailed Description is disclosed how the wing is physically connected runner. The examiner raises a question if is physically connected because the first runner and the first wing are in contact to each other, or because it has a structure which attaches the two structures together?
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Leese (US 2019/0109445) in view of Roth (EP 1,722,472).
Claims 1 and 6
Leese discloses an old work box (200) for installation in a wall comprising a partition (defined by combination of 202 and sidewalls 235) having a partition outer surface (defined by outer surface of sidewalls 235) and a partition inner surface (defined by inner surface of sidewalls 235); a backing wall (defined by wall identified as 202) attached to the partition, the backing wall and the partition forming a work box cavity (defined by interior space within the partition); at least one flange (206) disposed on the partition; a first and second wings (defined by 222 at each side of the box including drum portion 224) movably disposed on the partition within a first and second channels (234 including pocket 240) on the partition outer surface; and a first and second runner (defined by connection between drum 224 and channel 234) connecting the first and second wings to the partition outer surface, the first and second runners being configured to break upon movement of the first and second wings. Leese discloses a mounting mechanism comprising mounting clamps (220) that includes the wings (222) and the drums (224) which rotates when screw is driven (see abstract). Leese further discloses the mounting mechanism is integral to the electrical box (see [0030]), therefore a connection/first and second runners exists between the drums and the channels disposed in the electrical box. Leese further discloses the mounting clamps may be located in initial position located within a pocket (240) prior to insertion of the electrical box (see [0026]). Leese does not disclose the first and second runners physically connected to the first and second wings by the first and second channels, respectively. However, Roth discloses a box comprising clamping tabs (40) connected to a box body (2) by breakable links (51), which when is desired to pivot the clamping tabs, the links are breaks and the clamping tabs are movable between a retracted position and an output position (see pages 5 and 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Leese having the wings connected to the runners by breakable links as taught by Roth to maintain in retracted position the wings prior to insertion of the work box into the wall opening.
Claims 2 and 7
Leese further discloses the first and/or second wings are movable between a folded/initial position and an unfolded position/away from pockets (240) (see [0019], [0026], figures 2 and 10).
Claims 3, 4, 8 and 9
Leese further discloses the first and/or second runners connect the first and/or second wings to the partition outer surface while the first and/or second wings are in the folded/initial position. Leese discloses the mounting mechanism comprises mounting clamps integral to the electrical box, wherein the mounting clamps are connected to the exterior surface of the electrical box through screws (230), therefore before use, the mounting clamps are connected electrical box in the folded/initial position and the unfolded position.
Claim 5
Leese further discloses movement of the first wing from the folded position to the unfolded position is capable to dispose the wall between the first wing and the at least one flange. After the first wing is in unfolded position, the electrical box is capable of being positioned where a wall can be between the first wing and the flange.
Claim 10
Leese further discloses the second runner is capable to break upon the movement of the second wing from the folded position. Leese discloses the mounting mechanism comprises mounting clamps integral to the electrical box, wherein the mounting clamps are connected to the exterior surface of the electrical box through screws (230), therefore before use, the mounting clamps are connected electrical box in the folded/initial position and capable to break when the wing is still in fold position but starting movement to the unfolded position.
Claims 11 and 12
Leese further discloses the first and/or second runner, provided by channels (234), capable to provide a first and/or second pathway for a material to flow into the first and/or second wing in case the work box is formed by a molding process.
Claim 13
Leese further discloses the at least one flange (206) is disposed on the partition opposite the backing wall (202) (see figure 10).
Claim 14
Leese further discloses the work box cavity has a work box cavity opening (204), and
wherein the at least one flange (206) is disposed adjacent the work box cavity opening so that the at least one flange generally extends in a same plane as the work box cavity opening (see figure 9).
Claim 15
Leese further discloses the first wing comprises an edge (244) configured to limit the movement of the first wing (see figure 10 and [0027]).
Claim 16
Leese further discloses the first wing comprises a cutout (defined by transition between wing 222 and drum 224 that contacts pocket 240 in folded/initial position) configured to allow the first wing to fold flat with respect to the partition outer surface while the first wing is in the folded position (see figures 3 and 10).
Response to Arguments
Applicant’s arguments with respect to claims 1-16 have been considered but are moot in view of a new ground of rejection. Regarding applicant’s argument that Leese does not disclose the wings disposed within a channel, the examiner disagrees. Leese discloses the wings are defined by portions (222) and (224) of clamps (220), wherein the wing portions (224) is disposed within channel (234) and/or wing portion (222) is disposed within channel/pocket (240).
Conclusion
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 RAFAEL A. ORTIZ whose telephone number is (571)270-5240. The examiner can normally be reached Monday - Friday 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RAFAEL A. ORTIZ
Primary Examiner
Art Unit 3736
/RAFAEL A ORTIZ/Primary Examiner, Art Unit 3736
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