DETAILED ACTION
This is a Final action on the merits of application 18813247.
Claim 15 is canceled.
No Terminal Disclaimer has been filed.
Claims 1-14 and 16-20 are pending.
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.
Claim 1-7, 9-11, 13-14, 16, 18-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7, 9-11, 13-14, 16, 18-20 of copending Application No. 18318938 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially similar in scope and fully encompassed by the above claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
6. Claim 1 is substantially similar in scope and fully encompassed by claim 1 of appl. 18318938.
7. Claim 2 is substantially similar in scope and fully encompassed by claim 2 of appl. 18318938.
8. Claim 3 is substantially similar in scope and fully encompassed by claim 3 of appl. 18318938.
9. Claim 4 is substantially similar in scope and fully encompassed by claim 4 of appl. 18318938.
10. Claim 5 is substantially similar in scope and fully encompassed by claim 5 of appl. 18318938.
11. Claim 6 is substantially similar in scope and fully encompassed by claim 6 of appl. 18318938.
12. Claim 7 is substantially similar in scope and fully encompassed by claim 7 of appl. 18318938.
13. Claim 9 is substantially similar in scope and fully encompassed by claim 9 of appl. 18318938.
14. Claim 10 is substantially similar in scope and fully encompassed by claim 10 of appl. 18318938.
15. Claim 11 is substantially similar in scope and fully encompassed by claim 11 of appl. 18318938.
16. Claim 13 is substantially similar in scope and fully encompassed by claim 13 of appl. 18318938.
17. Claim 14 is substantially similar in scope and fully encompassed by claim 14 of appl. 18318938.
18. Claim 16 is substantially similar in scope and fully encompassed by claim 16 of appl. 18318938.
19. Claim 18 is substantially similar in scope and fully encompassed by claim 18 of appl. 18318938.
20. Claim 19 is substantially similar in scope and fully encompassed by claim 19 of appl. 18318938.
21. Claim 20 is substantially similar in scope and fully encompassed by claim 20 of appl. 18318938.
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.
22. Claim(s) 1-7, 9-11, 13-14, 16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schagen US 3996868, and further in view of Brownley US 3409920 and Becker US 8469756.
23. Claim 1, 11 and 14, Schagen discloses a front portion 1 having a top surface, a bottom surface, an outer edge, and an inner side, the inner side comprising a plurality of recesses; a central portion 1b having a top surface, a bottom surface, an outer edge, a first inner side, the first inner side comprising a plurality of recesses 16, wherein the first inner side of the front portion abuts the inner side of the back portion, and a second inner side, the second inner side comprising a plurality of recesses 16; a back portion 1c having a top surface, a bottom surface, an outer edge, and an inner side, the inner side comprising a plurality of recesses 16, wherein the second inner side of the central portion abuts the inner side of the back portion; and a first plurality of elongated supports 19 extending between the recesses of the front portion and the recesses of the first inner side; a second plurality of elongated supports 19 extending between the recesses of the second inner side and the recesses of the back portion; [see fig. 1] he does not disclose wherein the releasable securing element comprises a front component and a back component each including features corresponding to each other to overlap or be engaged together, thereby releasably locking together the front portion and back portion.. However, Brownley had disclosed a U pin joining the boards but Becker discloses this in fig. 1, securing element 170 along with the female thread lug opposite that is releasable that joins the boards together
. Thus, it 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 to have combined the disclosures to attain the above said configuration for securing means of a modular board.
24. Claim 2, Schagen discloses the plurality of supports 19 are enclosed within the board. See fig. 1
25. Claim 3, Schagen discloses the aforementioned limitations of claim 1, he does not disclose the plurality of supports comprise at least three supports. However, he does disclose at least 2 supports and it has been held that a multiplicity of duplicate parts is of ordinary skill, thus it 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 to use more supports for additional securing means.
25. Claim 4, Schagen discloses the board comprises a paddleboard or a surfboard. See Abstract.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct
claims have not in fact been patented.
26. Claim 5-7, Schagen discloses the aforementioned limitations of claim 1, he does not disclose the
releasable securing element spans a location at which the inner side of the front portion abuts the inner
side of the first inner side of the central portion, and wherein the releasable securing elements are
located within a recess and the recesses are located in the outer edge of the front portion, the back
portion, and the central portion. Brownley discloses this in fig. 1 thus, it 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 to have combined the disclosures to attain the above said
configuration for securing means of a modular board.
27. Claim 9-10, Schagen discloses wherein the plurality of elongated supports are removable and
replaceable from the recesses of the front portion, or the back portion. See fig. 1, col. 3 lines 20-28.
28. Claim 13, Schagen discloses the aforementioned limitations of claim 11, he does not disclose
the plurality of elongated supports comprises four supports. He does disclose 2 supports and it has been
held that a multiplicity of duplicate parts is of ordinary skill, thus it 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 to use more supports for additional securing means.
29. Method Claims 16, and 18, Schagen discloses the aforementioned limitations of claim 14, he does not disclose engaging a fastening element to releasably secure the front portion to the central portion or the fastening element comprises a pair of connectors that are located on the outer edge of the board and extending across a location of abutment between the front portion and the back portion and one or
more of the supports are affixed to the front portion or the back portion and have a free end which
includes an aperture. Brownley or Becker discloses these limitations in fig. 1, thus it 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 to have combined the disclosures to achieve enhanced securing means of a modular board.
Allowable Subject Matter
30. Claims 8, 12 and 17 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.
Response to Arguments
31. Applicant’s arguments with respect to claim(s) 1-14, 16-20 have been considered but are moot because the new ground of rejection does not rely on the same references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Examiner has added the Becker reference that clearly discloses the amended limitations of the independent claims, see fig. 1.
The amended limitation: wherein the releasable securing element comprises a front component 170 and a back component 160 each including features corresponding to each other to overlap or be engaged together, thereby releasably locking together the front portion and back portion; Shown by Becker.
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.
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/JOVON E HAYES/Examiner, Art Unit 3615
/MARC Q JIMENEZ/Supervisory Patent Examiner, Art Unit 3615
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