DETAILED ACTION
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,110,065 in view of Ries et al. (US 11,338,860) or Sagi et al. (US 6,997,497).
Regarding claims 1-13, US 12,110,065 claims the same essential elements of the cargo rack including: a cargo bed and frame, side supports, up and down positions, a divider, a headache rack, a handle, and standoff tubes. US 12,110,065 does not have corner cutouts with lights as claimed. However, each of Ries and Sagi teach a cargo carrier with an elevated support surface having angled corners with cutouts for lights. Ries discloses an upper bed member 22/38 having lights 70 disposed in cutouts of angled corners thereof. Sagi discloses a cargo bed 100/122 having angled corners 136 with cut outs 174 for lights 132. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide similar corners with cutouts and lights in order to illuminate the area around the UTV at night.
Claims 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,110,065.
Regarding claims 14-16, although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same essential elements of the cargo rack including: a cargo bed and frame, side supports, up and down positions, a divider, a headache rack, a handle, and standoff tubes.
Claims 17 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,110,065 in view of Ries et al. (US 11,338,860) or Sagi et al. (US 6,997,497).
Regarding claims 17 and 18, US 12,110,065 claims the same essential elements of the cargo rack including: a cargo bed and frame, side supports, up and down positions, a divider, a headache rack, a handle, and standoff tubes. US 12,110,065 does not have corner cutouts with lights as claimed. However, each of Ries and Sagi teach a cargo carrier with an elevated support surface having angled corners with cutouts for lights. Ries discloses an upper bed member 22/38 having lights 70 disposed in cutouts of angled corners thereof. Sagi discloses a cargo bed 100/122 having angled corners 136 with cut outs 174 for lights 132. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide similar corners with cutouts and lights in order to illuminate the area around the utv at night.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,654,977 in view of Ries et al. (US 11,338,860) or Sagi et al. (US 6,997,497).
Regarding claims 1-13, US 11,654,977 claims the same essential elements of the cargo rack including: a cargo bed and frame, side supports, up and down positions, a divider, a headache rack, a handle, and standoff tubes. US 11,654,977 does not have corner cutouts with lights as claimed. However, each of Ries and Sagi teach a cargo carrier with an elevated support surface having angled corners with cutouts for lights. Ries discloses an upper bed member 22/38 having lights 70 disposed in cutouts of angled corners thereof. Sagi discloses a cargo bed 100/122 having angled corners 136 with cut outs 174 for lights 132. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide similar corners with cutouts and lights in order to illuminate the area around the utv at night.
Claims 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,654,977.
Regarding claims 14-16, although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same essential elements of the cargo rack including: a cargo bed and frame, side supports, up and down positions, a divider, a headache rack, a handle, and standoff tubes.
Claims 17 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,654,977 in view of Ries et al. (US 11,338,860) or Sagi et al. (US 6,997,497).
Regarding claims 17 and 18, US 11,654,977 claims the same essential elements of the cargo rack including: a cargo bed and frame, side supports, up and down positions, a divider, a headache rack, a handle, and standoff tubes. US 11,654,977 does not have corner cutouts with lights as claimed. However, each of Ries and Sagi teach a cargo carrier with an elevated support surface having angled corners with cutouts for lights. Ries discloses an upper bed member 22/38 having lights 70 disposed in cutouts of angled corners thereof. Sagi discloses a cargo bed 100/122 having angled corners 136 with cut outs 174 for lights 132. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide similar corners with cutouts and lights in order to illuminate the area around the utv at night.
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.
Claim(s) 1-2, 6, 9, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Infantino (US 2013/0001267) in view of Sagi et al. (US 6,997,497).
Regarding claims 1-2, Infantino discloses a cargo rack substantially as claimed, including: a cargo bed 22, wherein said cargo bed comprises a divider 42/44 and a plurality of angled corners (Figure 1), a plurality of side supports 52, wherein a first end of each of said plurality of side supports is configured to be fastened to said cargo bed (para. 0033), wherein a second end of each of said plurality of side supports is configured to be fastened to one of said opposing sides of said bed of said utility task vehicle (para. 0037). Infantino does not disclose cutouts for lights as claimed. Sagi teaches a cargo carrier with an elevated cargo bed 100/122 with angled corners 136, cut outs 174 and lights 132. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to make the cargo bed in the manner disclosed by Sagi (e.g. see frame at lead lines 122 and 196 in Figure 2, base 196, compartments 120/122/124, corners 136 and lights 132) in order to provide distinct storage compartments on the cargo bed and to illuminate the area around the utv at night.
Regarding claim 6, said plurality of side supports 52 comprises a first side support 52 and a second side support 52, wherein a first side panel 70 is attached between said first side support and said second side support.
Regarding claim 9, to the degree presently claimed, said first side support 52 comprises a frame members 62 attached thereto that can be considered handle (i.e. something that can be grasped and held).
Regarding claim 11, Infantino discloses a bottom 46 of said cargo bed is supported by a frame 24 and Sagi discloses a bottom 196 supported by a frame at lead lines 122 and 196 in Figure 2, wherein said frame of said cargo bed of said cargo rack is fastenable to said bed of said utility task vehicle with quick release fasteners (noting that this last limitation essentially only recites functional language and the fasteners are not positively claimed – the modified Infantino is capable of being secured by quick release fasteners to the degree claimed).
Regarding claim 12, said side supports 52 are “fastenable” to said frame with quick release fasteners (noting that this last limitation essentially only recites functional language and the fasteners are not positiviely claimed – the modified Infantino is capable of being secured by quick release fasteners to the degree claimed).
Regarding claim 13, to the degree claimed Infantino discloses that the cargo rack has an up position (Figure 3) and a down position (Figure 4).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Infantino in view of Sagi, as applied to claim 3 above, and further in view of Vertanen (US 2009/0200823).
Regarding claim 3, modified Infantino discloses the invention substantially as claimed but does not disclose a divider received in in a slot in a bottom of the cargo bed. Vertanen discloses a divider 220 positioned in a cargo bed of a cargo rack, the divider comprising handle 234 and openings (see 236 and openings for fasteners as in Figure 19b) operable to secure goods to said divider, and wherein said divider is received in a slot 145/154 in a bottom of said cargo bed. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the cargo bed of modified Infantino with similar removable divider and receiving slot in order to optionally divide the storage space into smaller compartment/regions.
Claim(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Infantino in view of Sagi, as applied to claim 1 above, and further in view of Brauer et al. (US 6,983,968).
Regarding claims 4 and 5, modified Infantino discloses the invention substantially as claimed but does not disclose a headache rack. Brauer discloses that it is known to provide a vehicle bed with a headache rack 10 having a frame 44/46/48/56 and side plates 50/52. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the vehicle bed of Infantino with a similar headache rack in order to protect the passengers from objects/materials being transported in the vehicle bed.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Infantino in view of Sagi, as applied to claim 1 above, and further in view of Johnson et al. (US 8,087,694).
Regarding claim 10, modified Infantino discloses the invention substantially as claimed but does not disclose right and left standoff tubes extending from the left and right of the cargo bed. Johnson teaches that is known to provide standoff tubes 38 on the left and right sides of a cargo rack 12. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the cargo bed of Infantino with a similar right and left standoff tubes in order to deflect tree branches and similar obstacles away from the operator and passenger – col. 5 lines 55-63.
Claim(s) 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Infantino (US 2013/0001267) in view of Johnson et al. (US 8,087,694).
Regarding claims 14 and 17, Infantino discloses a cargo rack substantially as claimed, including: a cargo bed 22, wherein said cargo bed comprises a divider 42/44 and a plurality of angled corners (Figure 1), a plurality of side supports 52, wherein a first end of each of said plurality of side supports is configured to be fastened to said cargo bed (para. 0033), wherein a second end of each of said plurality of side supports is configured to be fastened to one of said opposing sides of said bed of said utility task vehicle (para. 0037). Infantino discloses the invention substantially as claimed but does not disclose right and left standoff tubes extending from the left and right of the cargo bed. Johnson teaches that is known to provide standoff tubes 38 on the left and right sides of a cargo rack 12. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the cargo bed of Infantino with a similar right and left standoff tubes in order to deflect tree branches and similar obstacles away from the operator and passenger – col. 5 lines 55-63.
Regarding claim 15, Infantino discloses said frame of said cargo bed of said cargo rack is “fastenable” to said bed of said utility task vehicle with quick release fasteners (noting that this last limitation essentially only recites functional language and the fasteners are not positiviely claimed – the modified Infantino is capable of being secured by quick release fasteners to the degree claimed).
Regarding claim 16, to the degree claimed, Infantino discloses that the cargo rack has an up position (Figure 3) and a down position (Figure 4).
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over Infantino (US 2013/0001267) in view of Johnson et al. (US 8,087,694), as applied to claim 17, and in further view of Sagi et al. (US 6,997,497).
Regarding claim 18, modified Infantino discloses the invention substantially as claimed but does not have cut outs and lights in angled corners of the cargo bed. Sagi teaches a cargo carrier with an elevated cargo bed 100/122 with angled corners 136, cut outs 174 and lights 132. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to make the cargo bed in the manner disclosed by Sagi (e.g. see frame at lead lines 122 and 196 in Figure 2, base 196, compartments 120/122/124, corners 136 and lights 132) in order to provide distinct storage compartments on the cargo bed and to illuminate the area around the utv at night.
Allowable Subject Matter
Claims 7 and 8 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COREY NELSON SKURDAL whose telephone number is (571)272-9588. The examiner can normally be reached Mon-Fri 9am-4pm EST.
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/COREY N SKURDAL/Primary Examiner, Art Unit 3734
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