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 .
Information Disclosure Statement
The information disclosure statement filed on September 12, 2024 has been considered by the Examiner.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15, of U.S. Patent No. 12,119,630. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-15 of U.S. Patent No. 12,119,630 disclose a wallbox system comprising: a housing having an internal space defined by: a peripheral wall having a front edge and a back edge, the peripheral wall having a plurality of recesses formed therein; a back cover coupled to the back edge of the peripheral wall; and a flange at least partially surrounding the front edge of the peripheral wall; a plurality of channels (claim 11) formed on an external surface of the peripheral wall, wherein each of the channels includes a circular channel having a first diameter and an open throat portion having a width less than the first diameter; a plurality of threaded fasteners (claim 12), each of the plurality of threaded fasteners disposed at least partially within a respective one of the plurality of channels; a plurality of retention members (claim 13) reversibly rotatable between a first position in which the retention member is disposed within one of the plurality of recesses formed in the peripheral wall to a second position in which at least a portion of the retention member extends at an angle from the external surface of the peripheral wall of the housing; wherein each of the plurality of retention members includes a drum portion a wing portion attached to the drum portion (claim 14) and a plurality of glands (claim 1).
Claim Objections
5. Claim 12 is objected to because of the following informalities:
a) In claim 12 line 1, change the dependency from “4” to --5--. To provide the proper antecedent basis for “the membrane portion”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
6. 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Gretz (US 8,686,287) in view of Gretz (US 8,076,575; hereinafter Gretz'575).
Regarding claim 1, Gretz discloses a wallbox system (see figure 1) comprising: a housing (32) having an internal space defined by; a peripheral wall having a front edge and a back edge; the peripheral wall having a plurality of recesses formed therein (see figure 1); a back cover (36) coupled to the back edge of the peripheral wall, a flange (22) coupled to at least a portion of the front edge of the peripheral wall (see figure 1); a plurality of channels (66) formed on an external surface of the peripheral wall, wherein each of the channels (66) includes a circular channel having a first diameter and an open throat portion having a width less than the first diameter (see figure 6); a plurality of threaded fasteners (not shown), each of the plurality of threaded fasteners disposed at least partially within respective one of the plurality of channels (column 4 lines 43- 48); but Gretz lacks a plurality of retention members reversibly rotatable between a first position in which the retention member conforms to an external surface of the peripheral wall of the housing to a second position in which at least a portion of the retention member extends at an angle from the external surface of the peripheral wall of the housing. Gretz'575 teaches a wallbox system (20) wherein the housing (24) further comprises: aa plurality of channels (66); and a plurality of retention members (34) reversibly rotatable between a first position in which the retention member conforms to an external surface of the peripheral wall of the housing to a second position in which at least a portion of the retention member (34) extends at an angle from the external surface of the peripheral wall of the housing (see figure 1 and 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide to Gretz's wallbox system with a plurality of retention members as taught by Gretz'575 to provide means for facilitating the mounting of the wallbox to a wall surface.
Regarding claim 2, the modified Gretz discloses the wallbox system (see figure 1) wherein each of the plurality of retention members (34; as taught by Gretz'575) includes a drum portion (44; as taught by Gretz'575) and a wing portion (46; as taught by Gretz'575) attached to the drum portion; wherein drum portion (44) of each of the plurality of retention members (34) comprises a female threaded, hollow, cylindrical member having an outside diameter less than the first diameter of the circular channel and greater than the width of the open throat portion of the channel such that the drum portion of the retention member is trapped within the channel; and wherein the wing portion of each of the plurality of retention members comprises a member having a thickness less than the width of the open throat portion of the channel (see figures 1 and 2).
Regarding claim 3, the modified Gretz discloses the wallbox system (see figure 1) wherein the drum portion (44; as taught by Gretz'575) of each of the plurality of retention members (34) receives a respective one of the plurality of screws (30) such that the drum portion (44) travels along a length of the screw as the screw is rotated in either direction (see figure 1 and 2).
Regarding claim 4, Gretz discloses the wallbox system (see figure 1) wherein the back cover (36) of the housing comprises: a back cover member that defines a perimeter continuously coupled to the back edge of the peripheral wall, the back cover (36) having a plurality of apertures (50) formed therethrough (see figure 1).
7. Claims 5 , 6 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gretz (US 8,686,287) in view of Gretz (US 8,076,575; hereinafter Gretz'575); as applied in claim 4, and further in view of Schlegel (DE 102011018758; cited in the IDS; hereinafter Schlegel).
Regarding claim 5, the modified Gretz discloses the claimed invention except for a plurality of glands, each of the plurality of glands inserted into a respective one of the plurality of apertures to seal the aperture and prevent air incursion into the internal space of the housing; each of the plurality of glands including a sidewall, an open end, and a closed end; and each of the plurality of glands formed of a resilient material having a first thickness; wherein the closed end of each of the plurality of glands includes a membrane portion having a second thickness less than the first thickness, the membrane portion to accommodate a penetration and a bidirectional passage of an electrical conductor while the resilient material forming the gland maintains contact with an exterior surface of the electrical conductor to form an air-tight seal therebetween. Schlegel teaches a plurality of glands (1), each of the plurality of glands (1) inserted into a respective one of a plurality of apertures to seal the aperture and prevent air incursion into the internal space of the housing; each of the plurality of glands (1) including a sidewall, an open end, and a closed end (see figures 1a-1d); and each of the plurality of glands (1) formed of a resilient material (elastomeric material) having a first thickness; wherein the closed end of each of the plurality of glands (1) includes a membrane portion (2) having a second thickness less
than the first thickness (see figure 1a-1d), the membrane portion (2) to accommodate a penetration and a bidirectional passage of an electrical conductor while the resilient material forming the gland (1) maintains contact with an exterior surface of the electrical conductor to form an air-tight seal therebetween (see abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide to the modified Gretz’s wallbox with a plurality of glands, each of the plurality of glands inserted into a respective one of the plurality of apertures to seal the aperture and prevent air incursion into the internal space of the housing; each of the plurality of glands including a sidewall, an open end, and a closed end; and each of the plurality of glands formed of a resilient material having a first thickness; wherein the closed end of each of the plurality of glands includes a membrane portion having a second thickness less than the first thickness, the membrane portion to accommodate a penetration and a bidirectional passage of an electrical conductor while the resilient material forming the gland maintains contact with an exterior surface of the electrical conductor to form an air-tight seal therebetween as taught by Schlegel to provide means for sealing the apertures and prevent dust, dirt and moisture from entering the wallbox.
Regarding claim 6, the modified Gretz discloses the wallbox system (see figure 1) wherein each of the plurality of apertures (50) comprises a circular aperture; and wherein each of the plurality of glands (as taught by Schlegal) comprises a generally cylindrical structure insertable into a respective one of the plurality of apertures.
Regarding claim 12, the modified Gretz discloses the wallbox system (see figure 1) wherein the membrane portion (2, as taught by Schlegal) comprises a membrane portion centered on the closed end of each of the plurality of glands (see figures 1a).
Regarding claim 13, the modified Gretz discloses the wallbox system (see figure 1) wherein the membrane portion (2) comprises a polygonal membrane portion centered on the closed end of the gland (see figure 1a).
Regarding claim 14, the modified Gretz discloses the wallbox system (see figure 1) wherein the membrane portion (2) comprises a star-shaped membrane portion centered on the closed end of the gland (see figure 1a).
Regarding claim 15, Gretz discloses the wallbox system (see figure 1), further comprising: a thermostat insertable into the wallbox (see figure 1).
Conclusion
8. Any inquiry concerning this communication should be directed to Angel R. Estrada at telephone number (571) 272-1973. The Examiner can normally be reached on Monday-Friday (8:30am -5:00pm).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani N. Hayman can be reached on (571) 270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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June 13, 2026
/ANGEL R ESTRADA/Primary Examiner, Art Unit 2841
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