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 Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 27, “over the opening the base plate” should be “over the opening in the base plate”.
Appropriate correction is required.
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 11, 12 and 14 – 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.
Claims 11, 12 and 14 – 20 depend from cancelled claim 4 and therefore are indefinite because their dependencies are unknown.
Claim 11 recites the limitation "the second radius" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 mentions “a third radius” and “the second radius” without previously reciting “a first radius” making it unclear as to how many radiuses there are.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11 – 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 11, 12 and 14 – 20 improperly depend from cancelled claim 4. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 1 – 3 and 21 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by patent application publication number US 2010/0201100 A1 to Hill.
Regarding claims 1 – 3 and 21, Hill discloses a hitch adapter (adapter 44) comprising:
[Claim 1] a base plate (base plate 46) having:
an outer edge portion (forward end 48), an interior portion (the horizontal surface of base plate 46), at least one anchor point (openings 62 and 64) for use in securing at least one associated object (retaining pin 86) to the hitch adapter, and an opening (hitch ball receiving opening 92); and,
a latch plate (lock plate 66) positioned over or under the base plate (base plate 46; See Fig. 3) such that the latch plate is selectively positionable with respect to the opening on the base plate between an open position (shown in Fig. 4) and a closed position (shown in Fig. 5);
[Claim 2] the base plate (base plate 46) further comprises a plurality of connection points (openings 62 and 64) disposed radially with respect to a center point (the center of opening 92) on the base plate;
the latch plate (lock plate 66) further comprises a plurality of connection points (openings 76 and 78, Fig. 2) corresponding to the plurality of connection points on the base plate for securing the latch plate to the base plate; and
fasteners (bolt 80 and retaining pin 86) disposed within the corresponding connection points on the base plate and the latch plate to secure the latch plate to the base plate (Figs. 2 and 3); and
[Claim 3] wherein the base plate (base plate 46) comprises a cutout (semi- circular portion 94 and generally U-shaped portion 96) that forms the base plate opening (hitch ball receiving opening 92), wherein the cutout is formed from at least one straight or curved lined cuts in the interior center portion (the horizontal surface of base plate 46) of the base plate (Figs. 2 – 5).
Regarding claim 21, Hill discloses a hitch adapter (adapter 44) comprising:
[Claim 21] a base plate (base plate 46) having:
an outer edge portion (forward end 48),
an interior portion (the horizontal surface of base plate 46),
a plurality of anchor points (openings 62 and 64) for use in securing at least one associated object (retaining pin 86 and padlock 90) to the hitch adapter, and
an opening (hitch ball receiving opening 92);
a cutout (the outer periphery of hitch ball receiving opening 92) that forms the opening,
wherein the cutout is formed from at least one straight or curved lined cuts (the straight and curved interior edges of hitch ball receiving opening 93) in the interior center portion of the base plate (along the lateral centerline of the device shown in Fig. 3),
wherein the cutout (semi-circular portion 94 and generally U-shaped portion 96) forms a curvilinear opening (hitch ball receiving opening 92) in the interior center portion (the horizontal surface of base plate 46) of the base plate (base plate 46).
wherein the cutout (semi-circular portion 94 and generally U-shaped portion 96) comprises two sub-cutouts (semi-circular portion 94 and generally U-shaped portion 96), wherein the first sub-cutout (semi-circular portion 94) comprises a first semicircular cutout (See Fig. 3) and the second sub-cutout (generally U-shaped portion 96) comprises a second semicircular cutout (See Fig. 3), wherein the first semicircular cutout and the second semicircular cutout are overlapping (See Fig. 3);
at least one connection point (opening 62) disposed radially with respect to a center point (the center of opening 92) on the base plate; and
a latch plate (lock plate 66) positioned over or under the base plate (base plate 46; See Fig. 3) such that the latch plate is selectively positionable with respect to the opening on the base plate between an open position (shown in Fig. 4) and a closed position (shown in Fig. 5),
further comprising a plurality of connection points (openings 76 and 78, Fig. 2) corresponding to the plurality of connection points on the base plate for securing the latch plate to the base plate;
wherein the latch plate (lock plate 66) is pivotably disposed over the opening (hitch ball receiving opening 92) [[in]] the base plate (base plate 46);
wherein the latch plate (lock plate 66) is selectively pivotable between a fully open position (shown in Fig. 4) wherein the first semicircular cutout (See Fig. 3) and the second semicircular cutout (See Fig. 3) are not covered by the latch plate and a closed position (shown in Fig. 5) wherein a portion of the cutout is covered by the latch plate;
wherein the first semicircular cutout (See Fig. 3) has a first radius, and the second semicircular cutout (See Fig. 3) has a second radius and wherein the second radius is less than the first radius (See Figs. 2 – 5);
wherein the first semicircular cutout (See Fig. 3) is disposed concentrically with the center point (the center of opening 92) in the base plate (base plate 46),
wherein the base plate (base plate 46) and the latch plate (lock plate 66) each comprise corresponding slide connection points (openings 64 and 78) and corresponding pivot connection points (openings 62 and 76),
wherein the pivot connection points between the base plate and the latch plate allow for rotational movement of the latch plate with respect to the base plate, and
wherein the corresponding slide connection points are disposed a circumferential distance from the pivot connection points and a radial distance with respect to the center point (the center of opening 92) of the base plate; and
fasteners (bolt 80 and retaining pin 86) disposed within the corresponding connection points on the base plate and the latch plate to secure the latch plate to the base plate (Figs. 2 and 3).
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 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hill.
Regarding claim 11 (as best understood to depend from claim 3), the modified Hill discloses the hitch adapter (adapter 44), but does not disclose the latch plate (lock plate 66) comprises a latch semicircular cutout having a third radius, wherein the third radius is equal to the second radius of the second semicircular cutout of the base plate.
However, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Hill such that the latch plate comprises a latch semicircular cutout having a third radius as a design choice to improve the appearance of the hitch. (The court held that the configuration of a claimed device was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. (MPEP 2144.04(IV)(B)))
Regarding claim 12, the modified Hill discloses the hitch adapter (adapter 44) of Claim 11;
[Claim 12] wherein the base plate (base plate 46) further comprises:
a first anchor point (the forward end 48, Fig. 6) positioned at a first end of the base plate and a second anchor point (hitch pin opening 34, Fig. 6) positioned at a second end of the base plate and disposed opposite the first anchor point, wherein the first and second semicircular cutouts (semi-circular portion 94 and generally U- shaped portion 96) are disposed between the first anchor point and the second anchor point (Fig. 6).
Allowable Subject Matter
Claims 14 – 20 contain allowable subject matter but are not allowed due to the 35 U.S.C. 112(b) and 112(d) rejections above.
Claims 22 – 28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claims 14 and 22, the modified Hill discloses the hitch adapter of Claim 13. However, Hill does not disclose the latch plate or the base plate comprises a slide channel cut circumferentially into the latch plate or the base plate for receiving a slide connection pin, wherein the slide channel and the slide connection pin provide the slide connection points between the latch plate and the base plate and wherein the slide connection points are disposed along the slide channel. Claims 15 – 20 and 23 – 28 depend from claims 14 and 22, respectively, and therefore, are also contain allowable subject matter.
Response to Arguments
Applicant's arguments filed August 3, 2026 have been fully considered but they are not persuasive.
Applicant argues “Hill teaches only a cavity and fails to teach a separate at least one anchor point. Instead, Hill teaches only a cavity for securing an external hitch to a hitch adapter.” (Remarks, Pages 7 – 8) However, since applicant has not further defined the anchor points, except to say they are” for use in securing at least one associated object to the hitch adapter”, several features of Hill can serve as the claimed anchor point. For instance, apertures 76 and 78, bolt 80 or pin 86, etc. can all serve as anchor points. Then, Hill’s device discloses several anchors. Applicant further argues regarding Hill “pivot pin or bolt 80 is not a connection point at all, but rather a fixed pivoting point, and there is only one opening 78 that could be a connection point.” (Remarks, Page 8) Bolt (80), of Hill, is a spot on the device where plate (66) connects to base plate (44, 46), as well as opening (78) being a spot where the two plates (66) and (46) connect. Therefore, in addition to various other connection points, Hill does disclose a plurality of connection points. Regarding claim 3, applicant argues “Hill teaches a cutout that is at one end of a base plate” and not at the center of the base plate (Remarks, Page 9) However, Hill discloses an opening (92) that is centered laterally on plate (46). This opening does fit the language of the claim which only requires the cutout is “in the interior center portion of the base plate” (Claim 1, line 11). Lastly, applicant argues “adding a third radius would render [[Hill’s]] Hitch inoperable, as it could not serve its function of securing the hitch to the adapter with a third radius.” (Remarks, Page 11) The Examiner disagrees with this. The ability of the latch (66) to secure the hitch to the adapter would depend on the size of a third radius and on its presence. A third radius, properly sized would still allow the adapter to function while accommodating a hitch of another size.
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 Felicia L Brittman-Alabi whose telephone number is (313)446-6512. The examiner can normally be reached M-F, 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at (571)272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Felicia L. Brittman-Alabi/ Examiner, Art Unit 3611
/VALENTIN NEACSU, Ph.D./ Supervisory Patent Examiner, Art Unit 3611
