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 .
The following correspondence is a Non-Final Office Action for application no. 18/816,615, for a BOLLARD HOLDER, filed on 8/27/2024. This correspondence is in response to applicant's RCE filed on 7/22/2026. Claims 1-20 are pending.
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 17-20 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.
Regarding claims 1 and 17, there is an inconsistency between the language in the preamble and certain portions in the body of the claims, thereby making the scope of the claims unclear. The preamble in claims 1 and 17 clearly indicates that a subcombination is being claimed, e.g., "a bollard holder to hold a bollard to a concrete form, with the concrete form providing for leveling of concrete in a first plane, the bollard holder comprising ...." (emphasis added). This language would lead the examiner to believe that the applicant intends to claim only the subcombination of "a bollard holder," the bollard and concrete form being only functionally recited. This presents no problem as long as the body of the claim also refers to the functionally, such as, "for attachment to said bollard and concrete form."
The problem arises when the concrete form is positively recited within the body of the claim, such as, "with the encircling portion having a bottom surface that lies in a second plane parallel to the first plane." The structure of the bollard holder is defined in terms of its relationship to the structure of the concrete form (i.e., first plane and second plane), but the concrete form is not positively claimed. Thus, there is an inconsistency within the claims; the preamble indicates subcombination, while in at least one instance in the body of the claims there is a positive recital of structure indicating that the combination of a bollard holder and a concrete form are being claimed. The examiner cannot be sure if applicant's intent is to claim merely the bollard holder or the bollard holder in combination with the concrete form. Applicant is required to clarify what the claims are intended to be drawn to, i.e., either the bollard holder alone or the combination of the bollard holder and the concrete form. Applicant should make the language of the claim consistent with applicant's intent. In formulating a rejection on the merits, the examiner is considering that the claims are drawn to the combination and the claims will be rejected accordingly. If applicant indicates by amendment that the combination claim is the intention, the language in the preamble should be made consistent with the language in the body of the claims. If the intent is to claim the subcombination, then the body of the claims must be amended to remove positive recitation of the combination.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first plane, second plane, third plane and fourth plane must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-10 and 17-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 1 and 17 would be allowable if rewritten or amended 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. Note: This allowance is based on the combination of the bollard holder and concrete form, should applicant decide that the concrete form is not a part of the combination then the nature of the claims and this allowance may change.
Claims 2-10 and 18-20 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.
Claims 11-16 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NKEISHA J. SMITH whose telephone number is (571)272-5781. The examiner can normally be reached Normal hours: M/Th 7-4; T 9-5; W 7-3; F 7-4.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terrell McKinnon can be reached at 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NKEISHA SMITH/Primary Examiner, Art Unit 3632 August 4, 2026
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