DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Claims 1-10 and 15-20 in the reply filed on 03/25/2026 is acknowledged.
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/25/2026.
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 1-10 and 15-20 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “prism” in claims 1, 17, and 18 is used by the claim to refer to the shape of the base, the body of the verticals,” while the accepted meaning is “ a solid geometric figure whose two end faces are similar, equal, and parallel rectilinear figures, and whose sides are parallelograms.” The term is indefinite because the specification does not clearly redefine the term and the Figures 1-12 do not show a claimed elements that conforms to the accepted meaning of prism. An appropriated correction is required. The examiner will interpret as best able.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 16, and 17 is/are rejected under 35 U.S.C. 102(a2) as being anticipated by Namgung (KR 20190021612A).
In re Claims 1 and 2, Namgung teaches a clip (1) for use in the installation of deck boards (3) comprising: a base(10,11) generally in the configuration of a prism and having a major plane and a major axis; a plurality/two of verticals (20,30), each vertical of said plurality/two of verticals comprising a proximal/lower end and an opposing distal/upper end with an elongated body generally in the configuration of a prism extending therebetween, said each vertical being attached to said major/horizontal plane of said base (10,11) at said proximal end such that said major/vertical plane of said each vertical is generally perpendicular to said major plane of said base, where said major planes of said each vertical are generally parallel; and at least one vertical of said plurality of verticals comprising a retaining element (40,50) disposed at said distal/upper end, said retaining element protruding outward from a lateral side of said at least one vertical. (Figures 1-8; paragraphs 0040-0052)
Regarding the requirements for configuration of the base or the body of the verticals to be a prism, the configurations taught by Namgung are as prism shaped as those of the instant application.
In re Claim 3, Namgung teaches first vertical (20) of said at least two verticals and a second vertical (30) of said at least two verticals are connected to said base(10,11) at opposing sides of said base. (Figures 1-8; paragraphs 0040-0052)
In re Claims 4 and 5, Namgung teaches clip is made of a material/sheet metal having sufficient ductility/elasticity that said first vertical(20) and said second vertical(30) are capable of being temporarily pinched together without breaking said clip. (paragraphs 0049,0052)
In re Claims 16, Namgung teaches a plurality of clips (1). (Figure 3)
In re Claims 17, Namgung teaches a base (10,11) element generally in the configuration of an elongated prism sized and shaped to be placed on a deck joist (2). (Figures 1-8) Regarding the requirements for configuration of the base or the body of the verticals to be a prism, the configurations taught by Namgung are as prism shaped as those of the instant application.
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Namgung (KR 20190021612A) in view of Kilgore et al. (U.S. 8,544,229).
In re Claim 6, Namgung has been previously discussed but does not disclose a base has a generally H-shaped cross section comprising two pairs of legs having a crossbar extending therebetween, wherein a major axis of said crossbar is generally perpendicular to a major axis of each of said pairs of legs and said first vertical and said second vertical are attached to said base at opposing sides of said crossbar.
Kilgore teaches a base (14) which is shown in Figure 9 with an H shaped cross section. The base has two pairs of legs having a crossbar extending therebetween, wherein a major axis of said crossbar is generally perpendicular to a major axis of each of said pairs of legs and first and second verticals (18) that are attached to said base at opposing sides of said crossbar. (Figures 1-9, annotated Figure)
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It would be obvious to one of ordinary skill in the art, prior to the effective date of the invention to modify Namgung with the teachings of Kilgore. The Kilgore base has connectors (16) allow for connection to the sides of joists (11) for a stronger connection.
Claim(s) 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Namgung (KR 20190021612A) in view of Crepin (FR2843414)
In re Claims 18 and 19, Namgung has been previously discussed but does not teach a spacer element generally in the configuration of an elongated prism and having a plurality of apertures sized and shaped for passage of said verticals and retaining elements.
Crepin teaches a spacer (1) element generally in the configuration of an elongated prism and having a plurality of apertures (3) sized and shaped for passage of a clip strip (5) with verticals (7) and retaining elements(8). The plurality of clips is disposed at each aperture, and said verticals and retaining elements of each said clip pass through said aperture and are oriented such that said retaining elements of adjacent clips in said clip strip extend towards each other. (Figures 1-5)
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention, to modify Namgun with the teachings of Crepin. The spacer holes allow for consistent placement and spacing of the clips when installing the deck.
Allowable Subject Matter
Claims 7-10 and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art of record fails to teach or adequately suggest a clip for use in the installation of deck boards with the combination of characteristics specified in the independent claim. Of particular note are the requirements that the retaining element is generally in the configuration of an irregular trapezoid comprising: a base connected to said at least one vertical; a top side angled downward toward said base; an opposing bottom side generally parallel to said major plane of said base; and a hook disposed at an end of said bottom side distal said at least one vertical, said hook pointing downward towards said base. The clip strip is disposed in a rolled configuration. There is no cogent reasoning that is unequivocally independent of hindsight that would have led one of ordinary skill in the art at the time the invention was made to modify the prior art to obtain the applicant's invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTOT-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM G BARLOW whose telephone number is (571)270-1158. The examiner can normally be reached Monday - Friday, 9:00 am-4:00 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571) 272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM G BARLOW/Examiner, Art Unit 3633
/BRIAN E GLESSNER/Supervisory Patent Examiner, Art Unit 3633
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