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 .
Claim Rejections - 35 USC § 112
Claims 7, 13-14 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 7, 13, and 14, it is unclear how the holder clamp and/or the support clamp has/have serrations, as the components have previously been established as being slidable with respect to one another, and the serrations as claimed would prevent the sliding required by the claim from which the claim depends. Appropriate correction is required.
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.
Claim(s) 1-2, 8-11, 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wildes, U.S. Patent Application Publication 2022/0255494.
Regarding claim 1, Wildes discloses a mounting system comprising: a strut channel (42); a holder clamp (10) configured to connect with the strut channel and including an H-shape (see Fig. 8, H-shape comprising both of 12 and 17); and a support clamp (20) configured to secure the holder clamp, wherein the holder clamp is slidable in a vertical direction within the support clamp (as there is nothing permitting sliding between the two components, see figures). The phrase “slidable” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 2, Wildes discloses a mounting system further comprising a base (23) that is connectable with a lower surface of the support clamp.
Regarding claim 8, Wilde discloses a mounting system wherein the support clamp is U-shaped (walls 24 are connected by component 28 and present a U-shape).
Regarding claim 9, Wildes discloses a mounting system wherein the holder clamp is held within the support clamp (see Fig. 3).
Regarding claim 10, Wildes discloses a mounting system wherein the support clamp and the holder clamp are pre-assembled as a clamp assembly (depending on the method of assembly chosen by a user, see Fig. 3, generally).
Regarding claim 11, Wildes discloses a mounting system comprising: a strut channel (42); a clamp assembly (components 10 and 20) attachable to the strut channel at a lower surface thereof (see Fig. 3, generally), the clamp assembly including: a holder clamp (10) configured to connect with the strut channel and including an H-shape (see Fig. 8, H-shape comprising both of 12 and 17); and a support clamp (20) securing the holder clamp adjustably within a pair of opposing walls (24), the holder clamp being slidable within the support clamp in a vertical direction (as there is no feature preventing sliding between the components, see Fig. 3, generally); and a base (23) that is connectable to a lower surface of the clamp assembly. The phrases “attachable,” “configured to connect,” “slidable,” and “connectable” are statements of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 16, Wildes discloses a mounting system wherein an intermediate wall of the H-shape is offset from a center line through opposing sidewalls of the holder clamp (see Fig. 3).
Regarding claim 17, Wildes discloses a mounting system wherein the holder clamp is rotatable about a horizontal axis in the support clamp (prior to insertion of fastener 32 the holder clamp is capable of being rotated about a horizontal axis while positioned in the support clamp as they are sldably engaged). The phrase “rotatable” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 18, Wildes discloses a mounting system wherein a slot (channel within which 10 is positioned, see Fig. 3) is defined between the pair of the opposing walls of the support clamp, and wherein the holder clamp is rotatable within the slot (prior to insertion of fastener 32 the holder clamp is capable of being rotated about a horizontal axis while positioned in the support clamp as they are sldably engaged). The phrase “rotatable” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claim Rejections - 35 USC § 103
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 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) 3, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wildes, U.S. Patent Application Publication 2022/0255494 in view of DuPont, U.S. Patent Application Publication 2013/0102165.
Regarding claim 3, Wildes discloses a mounting system but does not specifically disclose wherein the strut channel has a pair of sidewalls and a bottom wall connected between the pair of sidewalls at respective lower ends thereof. DuPont teaches a strut channel having a pair of sidewalls (30) connected by a bottom wall (32) at lower ends thereof (see Fig. 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a support member having a pair of sidewalls connected by a bottom wall at the lower ends thereof depending on material availability as it would not affect the function of the mounting system and the same results would be produced, and since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Regarding claim 19, Wildes discloses a mounting system but does not specifically disclose the strut channel is U-shaped. DuPont teaches a strut channel having a pair of sidewalls (30) connected by a bottom wall (32) at lower ends thereof (see Fig. 3) producing a U-shape. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a support member having a U-shape depending on material availability as it would not affect the function of the mounting system and the same results would be produced, and since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Claim(s) 4-5, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wildes, U.S. Patent Application Publication 2022/0255494 in view of Stearns et al., U.S. Patent 9,431,953.
Regarding claim 4, Wildes discloses a mounting system but does not disclose it is further comprising a first adjustment fastener and a second adjustment fastener respectively receivable by opposing sidewalls of the support clamp to secure the holder clamp within the support clamp. Stearns teaches two clamping members (28, 30), one slidably received into the other, fixed in a final position by locking bolt (49). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a locking fastener to fix the slidable components firmly into a desired vertical position. It would also have been obvious to utilize first and second locking fasteners for a more secure attachment, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St, Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 5, Wildes, as modified, discloses a mounting system wherein the holder clamp includes: a first sidewall (24) having a first side opening (for the locking fastener as modified) sized to accommodate the first adjustment fastener; and a second sidewall (other of 24) having a third side opening (for the locking fasteners as modified) sized to accommodate the second adjustment fastener, but does not disclose the first sidewall having a second side opening, nor the second sidewall having a fourth side opening. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include an additional opening on each sidewall to further secure the clamping members, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St, Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 12, Wildes discloses a mounting system but does not disclose it is further comprising a first adjustment fastener and a second adjustment fastener to respectively connect the holder clamp with the support clamp on the pair of the opposing walls. Stearns teaches two clamping members (28, 30), one slidably received into the other, fixed in a final position by locking bolt (49). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a locking fastener to fix the slidable components firmly into a desired vertical position. It would also have been obvious to utilize first and second locking fasteners for a more secure attachment, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St, Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim(s) 7, 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wildes, U.S. Patent Application Publication 2022/0255494 in view of Bamat et al., U.S. Patent Application Publication 2021/0058023.
Regarding claim 7, Wildes discloses a mounting system but does not disclose wherein the first sidewall and the second sidewall each include serrations on respective opposing external surfaces. Bamat teaches clamping members engaging one another via external and internal teeth (110, 68). It would have been obvious to one having ordinary skill in the art to produce the components with the holder clamp including serrations on opposing external surfaces and the support clamp including serrations on opposing internal surface for a secure fit between the clamping components.
Regarding claim 13, Wildes discloses a mounting system but does not disclose wherein the holder clamp includes serrations on opposing external surfaces thereof. Bamat teaches clamping members engaging one another via external and internal teeth (110, 68). It would have been obvious to one having ordinary skill in the art to produce the components with the holder clamp including serrations on opposing external surfaces and the support clamp including serrations on opposing internal surface for a secure fit between the clamping components.
Regarding claim 14, Wildes discloses a mounting system but does not disclose wherein the support clamp includes serrations on opposing internal surfaces thereof. Bamat teaches clamping members engaging one another via external and internal teeth (110, 68). It would have been obvious to one having ordinary skill in the art to produce the components with the holder clamp including serrations on opposing external surfaces and the support clamp including serrations on opposing internal surface for a secure fit between the clamping components.
Allowable Subject Matter
Claims 20-21 are allowed.
Claim 6 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
Applicant’s arguments with respect to the claims 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.
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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GISELE D. FORD
Examiner
Art Unit 3633
/GISELE D FORD/Examiner, Art Unit 3633
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