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 .
Election/Restrictions
Applicant’s election of Group I (claims 1-22) and Species A-1 in the reply filed on June 2, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 8-10, 17-20, and 23-31 are withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“fastening mechanisms” in claim 1;
“fastening mechanisms” in claim 6;
“insert attachment mechanism” in claim 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 2, 3, 6, 11, 12, 15, and 21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 recites “the antenna is selected from a plurality of different antenna configurations” in lines 1-2. It is unclear whether the “antenna” is positively recited or not. Claim 1 is directed to “a lid for mounting on a utility box, the utility box housing an antenna therein.” For purposes of examination, this limitation will be interpreted as the lid is capable of being mounted on a utility box housing one of a plurality of different antenna configurations.
Claim 2 recites “the plurality of different antenna configurations antenna” in line 3. It is unclear what is meant by “antenna configurations antenna.”
Claim 2 recites “and fastening mechanism is configured” in line 2. It is unclear whether this should be “the plurality of fastening mechanisms is configured” or “at least one of the fastening mechanisms is configured.”
Claim 3 recites “the at least one fastening mechanism” in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1 recites “a plurality of fastening mechanisms.” It is unclear whether claim 3 should read “the plurality of fastening mechanisms” or “at least one of the fastening mechanisms.”
Claim 6 recites “a top plate configured to be mounted in an upper recess of the cover by fastening mechanisms that extend through the cover.” The claim limitation “fastening mechanisms” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification discloses fastening mechanisms for fastening the antenna to the insert (see e.g., para. [0076]), and fastening mechanisms for securing top and bottom plates of the insert together (see e.g., paras. [0077], [0080]). However, the specification does not disclose discuss a fastening mechanism that extends through the cover for mounting at top plate in an upper recess. Further, the drawing do not appear to show a fastening mechanism that “extends through the cover.” For example, openings 21 do not appear to extend through the top cover (see e.g., Figs. 1-2C). Thus, it is unclear what structure has the function of mounting the top plate in the upper recess. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 11 recites “the utility box houses an instrument,” and “the antenna is configured to transmit a signal generated by the instrument” in lines 1-2. Claim 11 depends from claim 1, which is directed to “a lid for mounting on a utility box, the utility box housing an antenna therein.” Thus, it is unclear whether the “utility box” and the “instrument” are positively recited or not. For purposes of examination, this limitation will be interpreted as the lid is capable of being mounted on a utility box that houses an instrument that generates a signal.
Claim 12 recites “the instrument includes at least one of a leak detection instrument, a geo-location instrument or an electrical current or electrical load sensing instrument” in lines 1-3. Claim 12 depends from claim 1, which is directed to “a lid for mounting on a utility box, the utility box housing an antenna therein.” Thus, it is unclear whether the “instrument” is positively recited or not. For purposes of examination, this limitation will be interpreted as the lid is capable of being mounted on a utility box that houses an instrument that includes at least one of a leak detection instrument, a geo-location instrument or an electrical current or electrical load sensing instrument.
Claim 15 recites “the utility box cover plate” in line 2. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, this limitation will be interpreted as “the utility box cover.”
Claim 21 recites “the utility box houses at least one of a leak detection instrument and a geo-location instrument, and the antenna is configured to transmit a signal generated by the leak detection or geo-location instrument,” in lines 1-3. Claim 21 depends from claim 13, which is directed to “an insert for mounting to a utility box cover of a utility box, the utility box housing an antenna therein.” Thus, it is unclear whether the “utility box” and the “instrument” are positively recited or not. For purposes of examination, this limitation will be interpreted as the insert is capable of being mounted on a utility box cover of a utility box that houses an instrument that generates a signal.
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 1-6, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by U.S. Pub. 2019/0226874 to Slater (hereinafter, “Slater”).
Regarding claim 1, Slater discloses a lid (frame 100 with assembly 10, Fig. 12) for mounting on a utility box (paras. [0024]-[0025]), the utility box housing an antenna therein (paras. [0024]-[0025]), the lid (frame 100 with assembly 10) comprising: a cover (frame 100, Fig. 12) configured to be mounted on the utility box (para. [0033]); an insert (assembly 10, Figs. 7-10) configured to be mounted to the cover (frame 100, see Fig. 12), the insert (assembly 10) including a plurality of fastening mechanisms (openings to secure brackets 60, Figs. 6-10) configured to secure the antenna (electronic module 50, para. [0027]) such that the antenna can transmit a signal out of the utility box (paras. [0025]-[0027]).
Regarding claim 2, Slater further discloses the antenna (electronic module 50) is selected from a plurality of different antenna configurations (para. [0031]), and fastening mechanism (openings to secure brackets 60) is configured to secure any one of the plurality of different antenna configurations antenna (para. [0031]) such that any one of the plurality of different antenna configurations can transmit a signal out of the utility box (para. [0031]).
Regarding claim 3, Slater further discloses the at least one fastening mechanism (openings to secure brackets 60) is an opening (see Fig. 6) for receiving at least one of a zip-tie, a bracket and a screw (see Fig. 6).
Regarding claim 4, Slater further discloses the cover (frame 100) includes a through-hole (opening 106, Fig. 12) extending from a top surface (top edge 110, Fig. 12) of the cover (frame 100) to a bottom surface (annotated Fig. 12 below) of the cover (frame 100), the through-hole (opening 106) including a shelf (lip 108, Fig. 12) in between the top surface of the cover (top edge 110) and the bottom surface of the cover (annotated Fig. 12), the portion of the through-hole (opening 106) above the shelf (lip 108) defining an upper recess (annotated Fig. 12) and the portion of the through-hole (opening 106) below the shelf (lip 108) defining a lower recess (annotated Fig. 12).
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Slater Annotated Figure 12
Regarding claim 5, Slater further discloses the insert (assembly 10) comprises: a top plate (upper side 24, Fig. 12) configured to be mounted in the upper recess (annotated Fig. 12; para. [0033]) of the cover (frame 100); and a bottom plate (bottom portion of bracket 60, see Fig. 13) configured to be mounted in the lower recess (annotated Fig. 12) of the cover (frame 100).
Regarding claim 6, Slater further discloses the insert (assembly 10) includes a top plate (upper side 24, see Fig. 12) configured to be mounted in an upper recess (annotated Fig. 12) of the cover (frame 100) by fastening mechanisms that extend through the cover (see e.g., Figs. 6, 13-14).
Regarding claim 11, Slater further discloses the utility box (para. [0031]) houses an instrument (para. [0031]), and the antenna is configured to transmit a signal generated by the instrument (para. [0031]).
Regarding claim 12, Slater further discloses the instrument (paras. [0031], [0034]) includes at least one of a leak detection instrument, a geo-location instrument or an electrical current or electrical load sensing instrument (paras. [0031], [0034]), and the antenna is configured to transmit one or more respective signal generated by the leak detection instrument, the geo-location instrument or the electrical current or electrical load sensing instrument (paras. [0031], [0034]).
Claims 13-16, 21, and 22 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by U.S. Pat. 6,378,817 to Bublitz et al. (hereinafter, “Bublitz”).
Regarding claim 13, Bublitz discloses an insert (housing 20, Figs. 1-3) for mounting to a utility box cover (lid 13, Fig. 1) of a utility box (enclosure 10, Fig. 1), the utility box (enclosure 10) housing an antenna therein (col. 2, ll. 44-52), the insert (housing 20) comprising: a top plate (cap 21, Fig. 2) configured to be mounted in an upper recess of the cover (cap 21 is capable of being mounted in an upper recess of a cover); a bottom plate (flange 32, Fig. 2) configured to be mounted in a lower recess of the cover (flange 32 is capable of being mounted in an upper recess of a cover); and the bottom plate (flange 32) defining a plurality of fastener openings (holes 35, 36, Fig. 4; col. 3, ll. 3-12), each fastener opening (holes 35, 36) configured to receive a fastener (screws 40, Fig. 2) for securing the antenna (col. 3, ll. 3-12) such that the antenna can transmit a signal out of the utility box (col. 1, ll. 16-40).
Regarding claim 14, Bublitz further discloses the fastener (screws 40) is one of a zip-tie, a bracket, and a screw (screws 40).
Regarding claim 15, Bublitz further discloses the top plate (cap 21) and the bottom plate (flange 32) are configured to be secured to each other (see Figs. 2-3), with at least a portion of the utility box cover plate (lid 13) interposed therebetween (see Fig. 1), by an insert attachment mechanism (screws 39, Fig. 2).
Regarding claim 16, Bublitz further discloses the insert attachment mechanism (screws 39) includes a screw (screws 39) extending between the bottom plate (flange 32) and the upper plate (cap 21, see Fig. 3).
Regarding claim 21, Bublitz further discloses the utility box (enclosure 10) houses of least one of a leak detection instrument and a geo-location instrument (enclosure 10 is capable of housing a leak detection instrument or geo-location instrument), and the antenna (col. 2, ll. 44-52) is configured to transmit a signal generated by the leak detection or geo-location instrument (antenna is capable of transmitting a signal generated by the instrument).
Regarding claim 22, Bublitz further discloses the insert (housing 20) is manufactured from plastic (col. 2, ll. 44-47).
Allowable Subject Matter
Claim 7 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 7, neither Slater nor Bublitz discloses the top plate and bottom plate are secured to one another with the shelf of the cover interposed therebetween. It would not have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Slater and/or Bublitz to have such an arrangement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pub. 2021/0135349 to Rodriguez, Jr. et al. discloses a lid for a utility box comprising a cover and an insert with a plurality of fastening mechanisms to secure an antenna, and top and bottom plates of the insert are secured together via screws (see Figs. 1-4C).
U.S. Pub. 2012/0049021 to Nahar discloses a lid for a utility box comprising a cover and an insert with a plurality of fastening mechanisms to secure an antenna (see Figs. 1-7).
U.S. Pat. 5,583,492 to Nakanishi et al. discloses a lid for a utility box comprising a cover and an insert with fastening mechanisms to secure an antenna, wherein the cover has a shelf and the insert has a top plate mounted in an upper recess and a bottom plate mounted in a lower recess (see Figs. 1-7).
U.S. Pat. 7,202,828 to Zehngut et al. discloses a lid for a utility box comprising a cover and an insert with a plurality of fastening mechanisms to secure an antenna, the insert having a top plate and a bottom plate secured together via a screw (see Figs. 1-8).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA E. PARKER whose telephone number is (571)272-6014. The examiner can normally be reached Monday-Friday 8:00 am - 4:30 pm EST.
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/LAURA E. PARKER/Primary Examiner, Art Unit 3733
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