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 with traverse of Group 1 in the reply filed on 10 July 2026 is acknowledged. The traversal is on the ground(s) that searching both groups does not pose a substantial burden. This is not found persuasive because the Examiner has searched and examined group I but additional searching and examination would be needed for group II.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-3, 5, 7, 8, 10 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 9 and 11 of U.S. Patent No. 12,077,975. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is substantially similar to claim 1 of the ‘975 Patent except it doesn’t use the word “trailer” for the mobile support structure. However, a trailer is a mobile support structure. Furthermore, the ‘975 Patent has extra limitations not required in this Application “wherein the plurality of guy wires includes first and second guy wires, each of which is secured to the same one of the plurality of outriggers, and also secured to the extendable and retractable tower in first and second spaced apart positions proximate a first tower story”.
Claim 2 can be found in claim 1 of the ‘975 Patent.
Claim 3 can be found in claim 11 of the ‘975 Patent.
Claim 4 can be found in claims 1, 5 and 6 of the ‘975 Patent. Although not identical, all the limitations can be found or implied in the ‘975 Patent.
Claim 5 can be found in claim 3 of the ‘975 Patent.
Claim 7 can be found in claim 4 of the ‘975 Patent.
Claim 8 can be found in claim 3 of the ‘975 Patent.
Claim 9 can be found in claims 4 and 6 of the ‘975 Patent. Although not identical, all the limitations can be found or implied in the ‘975 Patent.
Claim 10 can be found in claim 9 of the ‘975 Patent.
Claim 15 can be found in claim 11 of the ‘975 Patent. Although not identical, all the limitations can be found or implied in the ‘975 Patent.
Claims 1, 2, 5-8 and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 9-11 and 22-23 of U.S. Patent No. 11,661,761. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is substantially identical to claim 1 of the ‘761 Patent except for the extra limitations of the ‘761 Patent “wherein the plurality of guy wires includes two guy wires, each of which is secured to the same one of the plurality of outriggers, and also secured to the extendable and retractable tower in first and second spaced apart positions proximate the same tower story”.
Claim 2 can be found in claim 1 of the ‘761 Patent.
Claim 5 can be found in claim 10 of the ‘761 Patent. Although not identical, all the limitations can be found or implied in the ‘761 Patent.
Claim 6 can be found in claim 11 of the ‘761 Patent although the ‘761 Patent provides for 8 guy wires, above the 4 guy wires in the Application.
Claim 7 can be found in claim 9 of the ‘761 Patent.
Claim 8 can be found in claim 10 of the ‘761 Patent although the ‘761 Patent provides for more than 3 guy wires which meets the “plurality” limitation in the Application.
Claim 10 can be found in claim 7 of the ‘761 Patent.
Claim 11 can be found in claim 22 of the ‘761 Patent.
Claim 12 can be found in claim 23 of the ‘761 Patent.
Claim 13 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,077,975 and claim 1 of U.S. Patent No. 11,661,761 in view of US Patent # 10,920,444. Neither the ‘975 Patent nor the ‘761 Patent claim the outriggers include a foot portion including a drop leg for ground engagement. However, the ‘444 Patent teaches in Figure 17, an outrigger (40a) further includes a foot portion (50a) including a drop leg (52a) for ground engagement (Column 13, Lines 8-9); wherein there are at least two outriggers with drop legs [four (Column 22, Lines 33-38)]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the Prior Patents with a reasonable expectation of success because the drop leg allows the foot to telescope with respect to the outrigger (Column 13, Lines 1-5).
Claim 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,077,975 and claim 1 of U.S. Patent No. 11,661,761 in view of US Patent # 7,062,883. Neither the ‘975 Patent nor the ‘761 Patent claim first and second outriggers and first, second, third and fourth guy wires where the first and third guy wires are secured proximate a first tower story and the second and fourth guy wires are secured proximate a second tower story. However, the ‘883 Patent teaches in Figure 2, a plurality of outriggers (3) includes first and second outriggers, and a plurality of guy wires (6) includes first, second, third and fourth guy wires, and the first and second guy wires (6) are secured to the first outrigger (3), and the third and fourth guy wires (6) are secured to the second outrigger (3), and the first and third guy wires (6) are secured to an extendable and retractable tower (2) proximate a first tower story (7 lower), and the second and fourth guy wires (6) are secured to the extendable and retractable tower proximate a second tower story (7 upper). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the Prior Art and have a reasonable expectation of success because the ‘883 Patent teaches the guy wire attachment points can be adapted to suit current field conditions (Column 4, Lines 21-22),
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J TRIGGS whose telephone number is (571)270-3657. The examiner can normally be reached Mon-Thurs 6am-2pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at (571) 270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J TRIGGS/Primary Examiner, Art Unit 3635
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