DETAILED ACTION
Status of Submission
This Office action is responsive to applicant’s preliminary amendment filed on September 9, 2024, which has been entered.
Claims Subject to Examination
Amended patent claims 1-20 and new reissue claims 21-30 are subject to examination.
Objections to Amendments – Formalities
The claim amendments filed on September 9, 2024 are objected to as failing to comply with 37 CFR 1.173(b)(2), (d) and (g). Each amended patent claim and each new reissue claim must show all changes made relative to the patent claims in effect as of the filing date of the reissue application, with matter to be omitted by reissue enclosed in single brackets, and with matter to be added by reissue underlined. Thus, new reissue claims must be underlined in their entirety and must not include any text enclosed in single brackets.
The claim amendments are improper because:
In claim 1, at l. 7, “accessory mount” should read “accessory-mount”.
In claim 1, at l. 10, “one curved] a curved” should read “one] a curved”
In claim 1, at ll. 10-11, “[at least one]_an” should read “an”.
In claim 1, at l. 13, “accessory mount” should read “accessory-mount”.
In claim 1, at l. 16, “leg located” should read “leg located”.
In claim 1, at l. 17, “positioning _ leg” should read “positioning leg”.
In claim 3, “angled or” should read “angled or”.
In claim 8, “[1] 21” should read [1] 21”.
In claim 11, at l. 1, “unit [universal” should read “unit [universal”.
In claim 11, at l. 2, “profile, having” should read “profile, having”.
In claim 11, at ll. 3-4, “corner, where the angular mounting clamp unit [, universal mounting clamps unit] is [method] to be located, comprising” should read “corner, where the angular mounting clamp unit [universal mounting clamps method] is to be located, comprising”.
In claim 11, at l. 5, “an angled” should read “an angled”.
In claim 11, at l. 9, “comprising four” should read “comprising four”.
In claim 11, at l. 10, “said angled]” should read “said angled accessory-mount bracket using fasteners; and]”
In claim 11, at l. 11, “[(d) a fastener positioner; -mount bracket using fasteners, and]” should read “[(3) at least one fastener positioner adapted to position fasteners on said angled accessory-mount bracket;].
In claim 11, at l. 14, “accessory mount leg, adapt ed” should read
“accessory-mount leg, adapted”.
In claim 11, at l. 18, “(ii)[(2)]” should read “(ii)”.
In claim 11, at l. 18, “mounting clamping unit on the structure [and ]” should read “mounting-clamp unit [from said universal mounting clamps system upon] on the structure”.
In claim 11, at l. 21, “fasteners.” should read “fasteners.[; and]
Claim 11 should have a line 22 that reads “[(iii) attaching at least one accessory upon said at least one mounting-clamp unit.]
Claim 21 should be underlined in its entirety (rather than having a gap in the underlining).
Applicant is required to place the amendments into compliance with 37 CFR 1.173(a)-(g) in response to this Office action.
The claim amendments filed on September 9, 2024 are also objected to because:
In claim 1, at l. 5, “accessories;” should read “accessories; and”.
In claim 1, at ll. 14-15, “fastener]; when the curved mounting clamp unit is installed on the structure and” should read “fastener] when the curved
mounting-clamp unit is installed on the structure; and”
In claim 1, at l. 16, “accessory mount” should read “accessory-mount”.
In claim 11, at l. 19, “accessory mount” should read “angled accessory-mount”.
In claim 11, at l. 20, “accessory mount” should read “angled accessory-mount”.
In claim 22, at l. 3, “comprising” should read “comprising:”.
In claim 22, at l. 4, “fastener” should read “fastener;”.
In claim 22, at l. 6, “accessory mount” should read “accessory-mount”.
In claim 22, at l. 7, “accessory mount” should read “accessory-mount”.
In claim 22, at l. 10, “accessory mount” should read “accessory-mount”.
In claim 23, at l. 2, “steps includes” should read “steps include”.
In claim 24, at l. 2, “steps includes” should read “steps include”.
In claim 29, at l. 1, “accessory mount” should read “accessory-mount”.
In claim 30, at l. 1, “accessory mount” should read “accessory-mount”.
Original Disclosure – Definition
The instant application seeks reissue of US Patent No. 11,440,362 B2, which issued from Application No. 17/367,534. The “original disclosure” is the disclosure of Application No. 17/367,534 as filed on July 5, 2021.1 Any subject matter added to the disclosure (including the claims) during either the examination of the instant reissue application or the earlier-concluded examination of Application No. 17/367,534 does not constitute a part of the “original disclosure”.
Objection to Amendment – New Matter
35 USC 132(a) prohibits any amendment that introduces new matter into the disclosure of the invention.
35 USC 251(a) prohibits the introduction of new matter into the application for reissue.
The amendment filed on September 9, 2024 is objected to under 35 USC 132(a) and 35 USC 251(a) because it improperly introduces new matter for the reasons given below.
New reissue claim 21 recites “where a fastener positioner is mounted on said angled accessory-mount bracket or on said accessory mount leg”. This introduces new matter because the original disclosure fails to provide support for a fastener positioner mounted on the accessory-mount leg of either one of the curved mounting-clamp units illustrated in Fig. 10.
New reissue claim 22 recites “placing the curveable fastener around the structure while threading the curveable fastener through the fastener slot on said accessory mount leg, then tightening said curveable fastener to place said positioner leg against the structure” (ll. 9-11). This introduces new matter because the original disclosure does not describe a procedure by which a curveable fastener is placed around the structure while threading the fastener through the fastener slot on the accessory mounting leg and then tightening the fastener.
New reissue claim 23 recites “said steps includes the step of mounting said fastener positioner to said accessory-mount leg and an accessory being mounted to the fastener positioner”. This introduces new matter because:
The original disclosure fails to provide support for a fastener positioner mounted to the accessory-mount leg of either one of the curved mounting-clamp units illustrated in Fig. 10.
It encompasses a method in which the accessory is mounted to the fastener positioner separately from the mounting of the fastener positioner to the accessory-mount leg. The illustrated embodiments only provide support for a fastener extending through the fastener positioner and an element of the accessory such that the fastener mounts both the fastener positioner and the element of the accessory to the accessory-mount bracket.
New reissue claim 24 recites “said steps further includes the step of mounting said fastener positioner to said angled mount bracket and an accessory being mounted to the fastener positioner”. This introduces new matter because it encompasses a method in which the accessory is mounted to the fastener positioner separately from the mounting of the fastener positioner to the angled accessory-mount bracket. The illustrated embodiments only provide support for a fastener extending through the fastener positioner and an element of the accessory such that the fastener mounts both the fastener positioner and the element of the accessory to the accessory-mount bracket.
New reissue claim 27 introduces new matter because the original disclosure fails to provide support for a structure having an ovoid shape. While the disclosure mentions an oval profile, such a profile is not necessarily the same as an ovoid shape.
New reissue claims 29 and 30 introduce new matter because the original disclosure fails to provide support for an accessory mounted “in” the lengthwise slot of the accessory-mount bracket or the accessory-mount leg. While the fastener extends through the slot, the accessory is not mounted “in” the slot.
Applicant is required to cancel the new matter in response to this Office action.
Reissue Oath/Declaration
The reissue declaration filed on September 9, 2024 is defective because it fails to specifically identify at least one error which can be properly relied upon to support the reissue application, i.e., an error that can properly serve as the basis for reissue. See 37 CFR 1.175 and MPEP 1414-1414.01.
As required by 37 CFR 1.175(a), the reissue oath/declaration must specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. It is not sufficient to merely state that applicant seeks to broaden or narrow the scope of a patent claim. Further, a statement in the reissue oath/declaration of “…failure to include a claim directed to…” and then reciting all the limitations of a newly added claim would not be considered a sufficient error statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa.
In the present case, the error statement in the reissue declaration:
Inaccurately characterizes the subject matter of patent claim 1. For example, patent claim 1 does not recite “an angled mounting clamp system” or “a Curved Mounting Clamp System” or “lamps”.
It identifies the error in patent claim 1 as requiring two clamp types in combination rather than reciting the clamp types individually and separately. For patent claim 1, this does not constitute an error that can properly serve as the basis for reissue. Amending claim 1 to claim the curved mounting-clamp unit individually and separately from the angled mounting-clamp unit violates the recapture rule for the reasons explained in GROUND 3 below. That is, amending patent claim 1 to make the recited surrender-generating limitations optional/ alternative limitations rather than required limitations cannot serve as the basis for reissue.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(b) MULTIPLE REISSUED PATENTS.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(c) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS. No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
GROUND 1: Claims 1-30 are rejected under 35 U.S.C. 251 as being based upon a defective reissue oath/declaration. See 37 CFR 1.175. The nature of the defect(s) in the reissue oath/declaration is explained above.
GROUND 2: Claims 8, 18, 21-24, 27, 29 and 30 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. See the explanation above. Claims 8 and 18 are included in the rejection because of their dependencies.
GROUND 3: Claims 1-10, 17-21 and 24-26 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). See also MPEP 1412.02.
A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Step 1: Claims 1-10, 17-21 and 24-26 of the instant reissue application are broader in scope than patent claims 1-10 at least because they claim the curved mounting-clamp unit individually and separately from the angled mounting-clamp unit. As a result, the following limitations (which were required by patent claims 1-10) are now recited as alternative/optional limitations: at least one angled mounting-clamp unit, comprising: an angled accessory-mount bracket having a first leg extending at a right angle to a second leg, adapted to provide area for mounting accessories; and a clamping bracket four straight sections extending at right angles to one another in a zigzag pattern, adapted for mounting to said angled accessory-mount bracket using fasteners.
Step 2: During the original prosecution (Application No. 17/367,534), the following subject matter was added to claim 1 by way of examiner’s amendment in order to secure allowance of patent claims 1-10:
Claim 1 was amended to require that the angled accessory-mount bracket of the at least one angled mounting-clamp unit has “a first leg extending at a right angle to a second leg”.
Claim 1 was amended to require that the clamping bracket of the at least one angled mounting-clamp unit has “four straight sections extending at right angles to one another in a zigzag pattern”.
See the Notice of Allowability along with the attached Examiner’s Amendment and Examiner-Initiated Interview Summary mailed on May 6, 2022.
Based on the amendments made to secure allowance, the following limitations constitute surrender-generating limitations:
A first leg extending at a right angle to a second leg.
Four straight sections extending at right angles to one another in a zigzag pattern”.
The broader aspects of reissue claims 1-10, 17-21 and 24-26 relate to subject matter surrendered in the original prosecution because the surrender-generating limitations of patent claims 1-10) are now recited as alternative/optional limitations rather than as required limitations.
Overlooked Aspects Inquiry: When an examiner determines in Step 2 that the broadening aspects of reissue claims relate to subject matter that applicant previously surrendered during the prosecution of the original application, the overlooked aspects inquiry may be applicable. See MPEP 1412.01, subsection II, and MPEP 1412.02, subsection II.B. The term “overlooked aspects” refers to claims to separate inventions/embodiments/species that were never presented (i.e., were not claimed) in the original application. Since overlooked aspects were never claimed, they were never surrendered. Thus, claims to overlooked aspects are not subject to recapture because the claims are, by definition, unrelated to subject matter that was surrendered during the prosecution of the original application.
In this case, the patent claims cover both clamp types, i.e., both the angled mounting-clamp unit and the curved mounting-clamp unit. Since both clamp types were claimed in the original application, claiming one or both of these clamp types in this reissue application does not constitute an overlooked aspect.
Step 3: It must be determined whether the reissue claims omit or broaden any limitation that was added or argued during the original prosecution to overcome the prior art, i.e., whether any surrender-generating limitation is omitted or broadened. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. See Pannu v. Storz Instruments Inc., 258 F.3d at 1371-72, 59 USPQ2d at 1600. However, if the patentee modifies the added or argued limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue. See In re Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4.
In this case, reissue claims 1-10, 17-21 and 24-26 violate the recapture rule because the surrender-generating limitations of patent claims 1-10) are now recited as alternative/optional limitations rather than as required limitations.
For the above reasons, claims 1-10, 17-21 and 24-26 of the instant reissue application improperly recapture broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
GROUND 4: Claims 8, 18, 21-24, 27, 29 and 30 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because these claims recite new matter. See the explanation above. Claims 8 and 18 are included in the rejection because of their dependencies.
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.
GROUND 5: Claims 1-30 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.
In claim 1, the recitations “A universal mounting clamps” (l. 1) and “the universal clamps” (l. 2) are confusing since the singular “A” is contradicted by the plural “clamps”. Further, these recitations are inaccurate since the claim does not require plural “clamps”. Rather, the claim has been amended to recite the curved mounting-clamp unit as an alternative to the angled mounting-clamp unit.
In claim 1, the recitation “an angled accessory-mount bracket having a first leg extending at a right angle to a second leg, adapted to provide area for mounting accessories” (ll. 3-5) is indefinite because it is unclear whether the phrase “adapted to provide area for mounting accessories” defines a characteristic of the bracket as a whole, or whether it defines a characteristic of the first leg or the second leg.
In claim 1, the recitation “a clamping bracket comprising four straight sections extending at right angles to one another in a zigzag pattern, adapted for mounting to said angled accessory-mount bracket using fasteners” (ll. 6-7) is indefinite because it is unclear whether the phrase “adapted for mounting to said angled accessory-mount bracket using fasteners” defines a characteristic of the bracket as a whole, or whether it defines a characteristic of one or more of the straight sections.
In claim 1, the recitation “four straight sections extending at right angles to one another” (l. 6) is not completely accurate since each of the straight sections does not extend at a right angle to each of the other straight sections. Rather, the first and third sections extend in the same direction, and the second and fourth sections extending in the same direction.
In claim 1, the recitation “a curved mounting-clamp unit” (l. 10) is indefinite because the adjective “curved” fails to accurately characterize the claimed mounting-clamp unit. As demonstrated by dependent claim 9, claim 1 is intended to encompass the right embodiment of Fig. 10 in which the positioning leg is flat (not curved). That embodiment does not constitute a “curved” mounting-clamp unit.
In claim 1, the recitation “a structure” (l. 12) is indefinite because it is unclear whether this term refers to the same “structure” previously introduced at line 1, or whether it refers to a different structure.
In claim 1, the term “the structure” (ll. 14 and 15) is indefinite because it is unclear whether it refers to the structure introduced at line 1, or the structure introduced at line 12.
In claim 1, the term “said positioning _ leg” (l. 17) lacks proper antecedent basis. Note that the claim has been amended to recite a positioner leg.
In claims 2-10, the recitation “The universal mounting clamps…” (l. 1) is indefinite. See the explanation with respect to claim 1 above.
In claims 2-6, the term “said angled or curved mounting-clamp units” is indefinite because the alternative “or” is contradicted by the plural “units”. See the further explanation with respect to claim 1 above.
In claim 7, the recitation “where said angled accessory-mount bracket has teeth” is indefinite because it further defines an alternative/optional limitation of claim 1. Since the limitation is alternative/optional according to claim 1, it is unclear whether claim 7 explicitly requires the recited “teeth” limitation, or whether this limitation should be viewed as only optional.
In claim 9, the recitation “where said…positioner leg is flat” is indefinite because it further defines an alternative/optional limitation of claim 1. Since the limitation is alternative/optional according to claim 1, it is unclear whether claim 9 explicitly requires the recited “flat” limitation, or whether this limitation should be viewed as only optional.
In claim 10, the recitation “where said…positioner leg is curved” is indefinite because it further defines an alternative/optional limitation of claim 1. Since the limitation is alternative/optional according to claim 1, it is unclear whether claim 10 explicitly requires the recited “curved” limitation, or whether this limitation should be viewed as only optional.
In claim 11, the recitation “A method of mounting an angular mounting clamp unit…to a [tow-bar] structure having an angled shaped profile, having corners, each associated with a diagonally opposed corner” is indefinite because it is unclear whether the phrase “having corners, each associated with a diagonally opposed corner” defines a characteristic of (i) the mounting clamp unit or the structure having an angled profile, or (ii) the structure as a whole or the angled shaped profile only.
In claim 11, the recitation “A method of mounting an angular mounting clamp unit…to a [tow-bar] structure having an angled shaped profile, having corners, each associated with a diagonally opposed corner, where the angular mounting clamp unit…is…to be located” is indefinite because it is unclear what location is referred to or specified by the phrase “where the angular mounting clamp unit…is…to be located”. Does this refer to a location on the structure as a whole? Does it refer to a location defined by the angled shaped profile? Does it refer to a location at one or more of the corners?
In claim 11, the recitation “an angled mounting-clamp unit” (l. 5) is indefinite because it is unclear whether this term refers to the same “angular mounting clamp unit” previously introduced at line 1, or whether it refers to a different mounting clamp unit. Further, the “angled” term at line 5 is inconsistent with the “angular” term at line 1.
In claim 11, the recitation “four straight sections extending at right angles to one another” (ll. 9-10) is not completely accurate since each of the straight sections does not extend at a right angle to each of the other straight sections. Rather, the first and third sections extend in the same direction, and the second and fourth sections extending in the same direction.
In claim 11, the recitations “comprising the steps of” (l. 4) and “the method further comprising the steps of” (l. 17) are indefinite because neither of these recitations is followed by the recitation of plural “steps”. Rather, each one is followed by the recitation of one step.
In claims 12 and 14-16, the term “said angle mounting-clamp units” (ll. 1-2) lacks proper antecedent basis since claim 11 does not recite plural mounting-clamp “units”. Further, the “angle” term of claims 12 and 14-16 is inconsistent with both the “angular” term and the “angled” term of claim 11.
In claim 13, the term “said angled mounting-clamp units” (ll. 1-2) lacks proper antecedent basis since claim 11 does not recite plural mounting-clamp “units”. Further, the “angled” term of claim 13 is inconsistent with the “angular” term of claim 11.
In claims 17 and 18, the recitation “The universal mounting clamps…” (l. 1) is indefinite. See the explanation with respect to claim 1 above.
In claim 17, the recitation “where said angled accessory-mount bracket has teeth” is indefinite because it further defines an alternative/optional limitation of claim 1. Since the limitation is alternative/optional according to claim 1, it is unclear whether claim 17 explicitly requires the recited “teeth” limitation, or whether this limitation should be viewed as only optional.
In claim 18, the recitation “where…fastener positioner” is indefinite because it is unclear whether this refers to the fastener positioner introduced in prior claim 21, or whether it refers to a different fastener positioner.
In claims 19 and 20, the term “The curved universal mounting clamps…” (l. 1) lacks proper antecedent basis. Further, this recitation is indefinite. See the explanation with respect to claim 1 above.
In claim 19, the recitation “where said…positioner leg is flat” is indefinite because it further defines an alternative/optional limitation of claim 1. Since the limitation is alternative/optional according to claim 1, it is unclear whether claim 19 explicitly requires the recited “flat” limitation, or whether this limitation should be viewed as only optional.
In claim 20, the recitation “where said…positioner leg is curved” is indefinite because it further defines an alternative/optional limitation of claim 1. Since the limitation is alternative/optional according to claim 1, it is unclear whether claim 20 explicitly requires the recited “curved” limitation, or whether this limitation should be viewed as only optional.
In claim 21, the recitation “The universal mounting clamps…” (l. 1) is indefinite. See the explanation with respect to claim 1 above.
In claim 22, the recitations “a curved universal mounting clamp unit” (l. 1) and “a curved mounting clamp unit” (l. 3) are indefinite because the adjective “curved” fails to accurately characterize the claimed mounting clamp unit. Claim 22 appears to be intended to encompass both embodiments of Fig. 10, including the right embodiment in which the positioning leg is flat (not curved). That embodiment does not constitute a “curved” mounting clamp unit.
In claim 22, the recitation “a curved mounting clamp unit” (l. 3) is indefinite because it is unclear whether this term refers to the same “curved universal mounting clamp unit” previously introduced at line 1, or whether it refers to a different mounting clamp unit.
In claim 22, the recitations “comprising the steps of” (ll. 1-2) and “the method further comprising the steps of” (l. 8) are indefinite because neither of these recitations is followed by the recitation of plural “steps”. Rather, each one is followed by the recitation of one step.
In claim 23, the term “said curved mounting-clamp unit” (l. 1) is indefinite because it is unclear whether this refers to the “curved universal mounting clamp unit” (claim 22, l. 1) or the “curved mounting clamp unit” (claim 22, l. 3). Further, “mounting-clamp” in claim 23 is inconsistent with the terminology in claim 22.
In claim 24, “The method of claim 1” (l. 1) is indefinite because claim 1 is not directed to a method.
In claim 24, the recitation “where said angled mounting-clamp unit further includes a fastener positioner” (ll. 1-2) is indefinite because it further defines an alternative/optional limitation of claim 1. Since the limitation is alternative/optional according to claim 1, it is unclear whether claim 24 explicitly requires the recited “fastener positioner” limitation, or whether this limitation should be viewed as only optional.
In claim 24, the term “said steps” (l. 2) lacks proper antecedent basis.
In claim 24, the term “said angled mount bracket” (ll. 2-3) lacks proper antecedent basis and is inconsistent with the terminology of prior claim 1.
In claim 25, the recitation “The curved mounting clamp unit of claim 1” (l. 1) is indefinite because claim 1 is not specifically directed to a “curved” mounting clamp unit, and claim 1 is not explicitly limited to a “curved” mounting clamp unit. Further, “mounting clamp” in claim 25 is inconsistent with the terminology in claim 1.
In claim 25, the recitation “where the curveable fastener comprises a hose clamp” is indefinite because it further defines an alternative/optional limitation of claim 1. Since the limitation is alternative/optional according to claim 1, it is unclear whether claim 25 explicitly requires the recited “hose clamp” limitation, or whether this limitation should be viewed as only optional.
In claim 26, the recitation “The curved mounting claim unit of clam1” (l. 1) is indefinite because of the confusing and inaccurate phrase “claim unit of clam1”. Further, claim 1 is not specifically directed to a “curved” mounting clamp unit, and claim 1 is not explicitly limited to a “curved” mounting clamp unit.
In claim 26, the recitation “where the curveable fastener comprises at least one zip tie” is indefinite because it further defines an alternative/optional limitation of claim 1. Since the limitation is alternative/optional according to claim 1, it is unclear whether claim 26 explicitly requires the recited “zip tie” limitation, or whether this limitation should be viewed as only optional.
In claim 27, the term “said structure profile” (l. 1) lacks proper antecedent basis.
Duplicate Claims
Applicant is advised that should claims 7-10 be found allowable, claims 17-20 will be objected to under 37 CFR 1.75 as being substantial duplicates thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference used for each document (listed alphabetically):
“Choi”
KR Publication No. 20-2009-0006615 U (with translation)
“Harrison”
US Patent No. 4,138,055
“Law”
GB Publication No. 2 249 816 A
“Levine”
US Patent No. 4,019,704
“Merritt”
US Patent No. 2,706,023
“Murphy”
US Patent No. 2,383,881
“Petitjean”
GB Publication No. 1,020,472 A
“Putnam”
US Patent No. 5,288,094
“Schaffer”
US Patent No. 3,530,996
“Tesar”
US Patent No. 4,993,670
“Thayer”
US Patent No. 5,601,263
“Toll et al.”
US Publication No. 2019/0036314 A1
“Wunderli”
DE Publication No. 30 47 973 A1 (with translation)
Claim Rejections - 35 USC § 102
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.
GROUND 6: Claims 1, 2, 9, 19, 22 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petitjean.
Petitjean discloses a mounting clamp unit comprising:
A flexible strapping 2 constituting a curveable fastener that wraps around a post 1 having a curved profile, with ends of the strapping 2 secured by a clamp 3. See Figs. 1-3; p. 1, ll. 64-68; p. 1, l. 86 to p. 2, l. 9.
A Y-shaped bracket 4 including:
An accessory mount leg (see Fig. 5) provided with a fastener bore 18 such that the leg provides an area for mounting accessories such as a sign 6. See Figs. 1 and 5; p. 1, ll. 69-75; p. 2, ll. 16-21.
A positioner leg 19 extending at an angle from one end of the accessary mount leg (see Fig. 5) and adapted to be held against the post 1. See Figs. 1 and 5; p. 1, ll. 73-75; p. 2, ll. 20-21.
A fastener slot 5 on the accessory mount leg (see Fig. 5) and adjacent to the positioner leg 19, with the slot 5 receiving the strapping 2 such that the accessory mount leg is connected to the strapping 2 and the positioner leg 19 is held against the post 1. See Figs. 1 and 5; p. 1, ll. 69-72; p. 2, ll. 16-18.
Figs. 2 and 6 of Petitjean show an alternative embodiment having a generally U-shaped bracket 8 with a positioner leg 20 and a fastener slot 9. See p. 1, ll. 76-85; p. 2, ll. 22-28.
With respect to claim 2, Petitjean’s mounting clamp unit is made of either stainless steel, or structural steel made non-corrodible by appropriate surface treatment. See p. 2, ll. 29-34
With respect to claims 9 and 19, the positioner leg 19 is flat. See Figs. 1 and 5. The embodiment of Figs. 2-6 has a flat positioner leg 20.
With respect to claim 22, the mounting clamp unit is installed on the post 1 by threading the strapping 2 through the fastener slot 5, placing the strapping 2 around the post 1, tightening the strapping 2, and securing the strapping 2 with the clamp 3. See p. 1, ll. 64-72; p. 1, l. 86 to p. 2, l. 9.
With respect to claim 27, the post 1 is round.
GROUND 7: Claims 1, 10, 20, 22, 26, 27 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thayer.
Thayer discloses a mounting clamp unit comprising:
A flexible strap (or cable tie or other known fastener) 110 constituting a curveable fastener that wraps around a structure 30 having a curved profile, with ends of the strap 110 secured by a closure 112. See Figs. 1-2; col. 3, ll. 38-46.
A bracket 15 including:
An accessory mount leg 116, 130 (having a neck portion 116 and a support portion 130) provided with grips 135 such that the leg provides an area for mounting accessories such as a tubing 202 of a spray nozzle 204. See Figs. 1-2; col. 3, ll. 24-31 and 56-65; col. 4, ll. 9-31.
A flexible base 100 having an end 102 (or 103) defining a positioner leg extending at an angle from one end of the accessary mount leg 116, 130 and adapted to be held against the curved structure 30. See Figs. 1-2; col. 3, ll. 32-43 and 50-51; col. 4, ll. 5-8.
A fastener slot 118 on the accessory mount leg 116, 130 and adjacent to the positioner leg 102 (or 103), with the slot 118 receiving the strap 110 such that the accessory mount leg 116, 130 is connected to the strap 110 and the positioner leg 103 (or 103) is held against the curved structure 30. See Figs. 1-2; col. 3, ll. 60-65; col. 3, l. 66 to col. 4, l. 8.
With respect to claims 10 and 20, the positioner leg 102 (or 103) is curved, i.e., it matches the curved profile of the structure 30 when mounted on the structure 30. See Figs. 1-2.
With respect to claim 22, the mounting clamp unit is installed on the curved structure 30 by threading the strap 110 through the fastener slot 118, placing the strap 110 around the structure 30, tightening the strap 110, and securing the strap 110 with the closure 112. See Figs. 1-2; col. 3, l. 66 to col. 4, l. 8.
With respect to claim 26, the fastener 110 can be a cable tie (i.e., a zip tie). See col. 3, ll. 43-46.
With respect to claim 27, the structure 30 is round.
With respect to claim 30, at least the topmost grip 135 defines a lengthwise slot (see Fig. 1) in the accessory mount leg 116, 130, and the tubing 202 is mounted in the lengthwise slot.
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.
GROUND 8: Claims 3-6 are rejected under 35 U.S.C. 103 as obvious over Petitjean.
Petitjean’s mounting clamp unit is made of either stainless steel, or structural steel made non-corrodible by appropriate surface treatment. See p. 2, ll. 29-34. The skilled artisan would appreciate that paint, epoxy, bonded powder coating, and rubberized coating are conventional forms of surface treatment for making a material (such as steel) non-corrodible. Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Petitjean by using any of these surface treatments to achieve the stated goal of making the structural steel non-corrodible.
GROUND 9: Claims 10 and 20 are rejected under 35 U.S.C. 103 as obvious over Petitjean in view of Levine and Murphy.
Petitjean fails to teach that the positioner leg is curved.
Levine teaches a mounting bracket 24 including a positioner leg 38 that is arched (curved) in order to more readily conform to the curved profile of a structure 10 that the mounting bracket 24 is mounted on. See Figs. 1-2; col. 2, ll. 35-42; col. 2, l. 68 to col. 3, l. 11.
Murphy teaches a mounting bracket 10 including a positioner leg 20 that is curved such that it permits the mounting bracket 10 to be attached securely to any post 30 having a curved profile. See Figs. 1-5; p. 1, right column, ll. 4-13.
From the teachings of Levine and Murphy, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Petitjean by replacing the flat positioner leg with a curved positioner leg because such a curved leg can more readily conform to the curved profile of the support structure and permits the mounting clamp unit to the attached securely to different support structures having curved profiles.
GROUND 10: Claim 21 is rejected under 35 U.S.C. 103 as obvious over Petitjean in view of Choi.
Petitjean teaches a bore 18 for receiving a threaded fastener 7. However, Petitjean lacks a fastener positioner mounted on the accessory-mount leg.
Choi teaches that it was known to secure a nut 20 to a mount leg 18 via a weld P, with the nut 20 receiving a threaded fastener 30. See Fig. 4(a) and the 2nd paragraph on the 1st page.2 Such a weld nut constitutes a fastener positioner, as broadly claimed, since it functions to position the fastener 30.
From the teachings of Choi, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Petitjean by welding a nut adjacent to the fastener bore in order to simplify attachment of a sign while providing for a more secure attachment of the sign.
GROUND 11: Claim 25 is rejected under 35 U.S.C. 103 as obvious over Petitjean in view of Levine and Merritt.
Petitjean fails to teach that the fastener is a hose clamp.
Levine teaches a mounting bracket 24 secured to a curved structure 10 by a band-type clamp (i.e., hose clamp) 16 threaded through a slot (see Figs. 1-2) in the bracket 24. See Figs. 1-2; col. 2, ll. 3-26 and 43-52.
Merritt teaches a mounting bracket 20 secured to a curved structure M by a tension band (i.e., hose clamp) 18 threaded through a slot 28 in the bracket 20. See Figs. 1, 4, 6 and 10-11; col. 2, l. 50 to col. 3, l. 3; col. 3, ll. 70-82.
From the teachings of Levine and Merritt, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Petitjean by replacing the strapping and separate clamp with a conventional hose clamp because hose clamps are readily available and cost effective. Further, the use of a hose clamp reduces the number of parts (since the clamp is integrated with the strap) while providing convenience of use and a secure connection.
GROUND 12: Claim 26 is rejected under 35 U.S.C. 103 as obvious over Petitjean in view of Toll et al.
Petitjean fails to teach that the fastener is a zip tie.
Fig. 1 of Toll et al. shows a mounting bracket secured to a curved structure by a cable tie (i.e., zip tie) threaded through a slot in the bracket. See ¶ 0004 and the abstract. Fig. 14A shows a mounting bracket 10 secured to a curved structure 12 by a zip tie threaded through a slot 36 in the bracket 10. See ¶¶ 0018, 0075. Figs. 16A-16B show a mounting bracket 46A secured to a curved structure 12 by a zip tie 74 threaded through a slot 90 in the bracket 46A. See ¶¶ 0020, 0083, 0088. Figs. 35A-35B show a mounting bracket 10 secured to a curved structure 12 by a zip tie threaded through a slot in the bracket 10. See ¶¶ 0042-0043, 0091-0092.
From the teachings of Toll et al., it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Petitjean by replacing the strapping and separate clamp with a conventional zip tie because zip ties are readily available and cost effective. Further, the use of a zip tie reduces the number of parts (since the clamp is integrated with the strap) while providing convenience of use and a secure connection.
GROUND 13: Claim 30 is rejected under 35 U.S.C. 103 as obvious over Petitjean in view of Levine and Wunderli.
Petitjean teaches that the accessory-mount leg (see Fig. 5) has a fastener bore 18 for mounting an accessory. Petitjean fails to teach that the accessory-mount leg has a lengthwise slot.
Levine teaches a mounting bracket 24 including an accessory-mount leg 40 having a lengthwise slot 36 that enables considerable range in the positioning of the fastener to be secured through the slot 36. See Figs. 1-4; col. 2, ll. 17-34; col. 3, ll. 4-11.
Wunderli teaches a mounting bracket 2 adjustably connected to an accessory support 3, with the mounting bracket 2 including an accessory-mount leg 8 (or 9) having a lengthwise slot 11 that receives a threaded fastener 19 and allows for adjustable positioning of the accessory support 3 along the slot 11. See Fig. 1; ¶¶ 0008-0011.3
From the teachings of Levine and Wunderli, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Petitjean by replacing the fastener bore with a lengthwise slot in order to enable considerable range in the positioning of the fastener to be secured through the slot and thereby enable adjustment in the mounting of the accessory.
Pertinent Prior Art
The following prior art is considered pertinent to applicant’s disclosure.
Harrison teaches a mounting clamp unit including curveable fasteners 19, 21 threaded through fastener slots 17, 18 in an accessory-mount leg 12, 13, and positioner legs 22, 23 located at an angle at one end of the accessory-mount leg 12, 13.
Law teaches a mounting bracket 1 having a lengthwise slot 4 bounded by teeth 7, and a fastener positioner 12 having teeth 13 engaging the teeth 7 on the bracket 1.
Putnam teaches an angular mounting bracket 12 mounted on a tow bar structure 10.
Schaffer teaches a mounting clamp unit including clamping brackets 4-6 that comprises four sections in a zigzag pattern.
Tesar teaches a mounting clamp unit including an accessory-mount leg 14 having a lengthwise slot 18, and a positioner leg 16 located at an angle at one end of the leg 14.
Specification
The specification is objected to under 37 CFR 1.75(d)(1) as failing to provide proper antecedent basis for the claimed subject matter. See MPEP 608.01(o). The specification fails to provide proper antecedent basis for the subject matter of claims 2-6 and 12-16. Correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a) for failing to show every feature of the invention specified in the claims. The features listed below must be shown or canceled from the claims. No new matter should be entered.
A fastener positioner mounted on the accessory-mount leg of a curved mounting-clamp unit (claims 21 and 23).
A structure having an ovoid shape (claim 27).
The objection to the drawings will not be held in abeyance.
The drawings are objected to because Fig. 10 fails to comply with 37 CFR 1.84(h), (i) and (u) since it contains modified forms combined in a single view and overlapping each other.
All views must be clearly separated from one another. See 37 CFR 1.84(h).
Modified forms of construction must be shown in separate views. See 37 CFR 1.84(h)(5).
One view must not be placed upon another or within the outline of another. See 37 CFR 1.84(i).
The different views must be numbered in consecutive Arabic numerals. See37 CFR 1.84(u)(1).
The drawing objections will not be held in abeyance.
Allowable Subject Matter
Claims 7, 8, 17, 18 and 24 appear to recite allowable subject matter, assuming that these claims explicitly require the angled mounting clamp unit recited in claim 1, including a clamping bracket comprising four straight sections extending at right angles to one another in a zigzag pattern. Claims 7, 8, 17, 18 and 24 require amendment in order to overcome the rejection under 35 USC 112(b). Claim 21 (from which claims 8 and 18 depend) and claim 24 require amendment in order to overcome the rejections under 35 USC 251 and 35 USC 112(a) based on new matter. Claim 1 (from which claims 7, 8, 17 and 18 depend) requires amendment in order to overcome the rejection under 35 USC 251 for violation of the recapture rule. As noted above, claims 17 and 18 are substantial duplicates of claims 7 and 8.
Claims 11-16, 28 and 29 recite allowable subject matter at least because the prior art fails to teach a mounting clamp unit including a clamping bracket comprising four straight sections extending at right angles to one another in a zigzag pattern, with the mounting clamp unit mounted on a structure in the manner required by claim 11. Claims 11-16, 28 and 29 require amendment in order to overcome the rejection under 35 USC 112(b). Claim 29 requires amendment in order to overcome the rejection under 35 USC 112(a).
Claims cannot be allowed until an acceptable reissue declaration is filed to overcome the rejection under 35 USC 251 based on a defective declaration.
Response Period
A shortened statutory period for reply is set to expire THREE MONTHS from the mailing date of this action.
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Amendments in Reissue Applications
Applicant is notified that any subsequent amendment to the specification, claims or drawings must comply with 37 CFR 1.173(b)-(g).
Failure to fully comply with 37 CFR 1.173(b)-(g) will generally result in a notification to applicant that an amendment before final rejection is not completely responsive. Such an amendment after final rejection will not be entered.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
Disclosure Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the patent for which reissue is sought is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP 1404, 1442.01 and 1442.04.
Filing and Contact Information
All correspondence relati