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
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 are 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.
With regard to claim 1: Lines 11-12 of the claim, it’s unclear as to how a first flange extends from the first inwardly protruding guide (emphasis added). It appears that the first flange is part of the first inwardly protruding guide and not a separate element. As described in par. [0060] of the instant specification, the guides (1604) can extend into the cavity (1608). Further, it’s unclear as to what the element the limitation “a second flange“ found in line 20 of the claim is referring to. It appears applicant is referring to a portion of the second protruding guide?
With regard to claim 7: Lines 8-10 of the claim, it’s unclear as to how a first flange extends from the first inwardly protruding guide (emphasis added). It appears that the first flange is part of the first inwardly protruding guide and not a separate element. As described in par. [0060] of the instant specification, the guides (1604) can extend into the cavity (1608).
Claims 1-14 are examined as best understood.
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) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over McPheeters (US 2019/0068110 A1) in view of Ledford (US 2017/0121960 A1).
With regard to claim 1: McPheeters discloses a solar panel mount apparatus comprising:
a first rail (track 139) having a first moment capacity (maximum bending moment that can be resisted before failure) and a substantially u-shaped first cross-section (fig. 4D), the first rail (139) including:
a first inwardly protruding guide (X) (fig. 4D);
a second inwardly protruding guide (Y) opposite the first inwardly protruding guide (X) (fig. 4D), the first inwardly protruding guide (X) and the second inwardly protruding guide (Y) at distal ends of the substantially u-shaped first cross-section (fig. 4);
a plurality of wall sections (A, B), wherein a first wall section of the plurality of wall sections adjacent to the first inwardly protruding guide (X) has a greater thickness than another wall section (B) of the plurality of wall sections (A, B) (fig. 4D);
a first flange (139t) extending into a cavity of the substantially u-shaped first cross-section from the first inwardly protruding guide (139t) (fig. 4D); and a second flange (139d) (fig. 4D).
McPheeters does not disclose a splice having a second moment capacity and a substantially u-shaped second cross-section that fits into the substantially u-shaped first cross-section of the first rail, the splice including: a first distal edge that cooperates with the first inwardly protruding guide and the first flange of the first rail; and a second distal edge opposite the first distal edge that cooperates with the second inwardly protruding guide and the second flange of the first rail.
However, Ledford discloses a splice (coupler 23) having a second moment capacity and a substantially u-shaped second cross-section that fits into a substantially u-shaped first cross-section of a first rail (16), the splice (23) including: a first edge that cooperates with a first inwardly protruding guide (at top of right vertical wall) of the first rail; and a second edge that cooperates with a second inwardly protruding guide (at top of left vertical wall) of the first rail (16) (fig. 7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the solar panel mount apparatus of McPheeters to have a splice having a second moment capacity and a substantially u-shaped second cross-section that fits into the substantially u-shaped first cross-section of the first rail, the splice including: a first edge that cooperates with the first inwardly protruding guide of the first rail; and a second edge that cooperates with the second inwardly protruding guide of the first rail such as taught by Ledford in order to provide a means of coupling a second rail to the first rail for combined rail of extended length. McPheeters as modified by Ledford would result in a splice having a second moment capacity and a substantially u-shaped second cross-section that fits into the substantially u-shaped first cross-section of the first rail, the splice including: a first distal edge that cooperates with the first inwardly protruding guide and the first flange of the first rail; and a second distal edge opposite the first distal edge that cooperates with the second inwardly protruding guide and the second flange of the first rail.
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Fig. 4D: McPheeters (US 2019/0068110 A1)
With regard to claim 2: McPheeters discloses that the at least one channel flange (139e) is configured to engage with a fastener that secures the first rail to a mount (figs. 4C and 5A).
With regard to claim 3: McPheeters in view of Ledford does not disclose the first moment capacity and the second moment capacity being similar.
However, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the solar panel mount apparatus of McPheeters previously modified by Ledford to have the first moment capacity and the second moment capacity being similar in order to maintain substantially the same load bearing characteristics at a formed joint when connected to one another. No new or unpredictable results would be obtained from modifying from having the first rail and the splice to comprise similar load bearing capacities. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
With regard to claim 4 McPheeters in view of Ledford does not disclose the splice provides an electrical bonding path when the splice is installed in the first rail and a second rail.
However, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the solar panel mount apparatus of McPheeters previously modified by Ledford to have the splice provide an electrical bonding path when the splice is installed in the first rail and a second rail in order to provide a means of distributing an electrical change for mitigating electrical shock. No new or unpredictable results would be obtained from modifying from having the splice to provide an electrical bonding path when the splice is installed in the first rail and a second rail. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
With regard to claim 5: McPheeters as modified by Ledford would result in the splice further including an external wall that substantially coincides with an internal wall of the first rail when the splice is inserted into the first rail.
With regard to claim 6: Ledford discloses that the splice (23) has a substantially uniform wall thickness (fig. 7).
With regard to claim 7: McPheeters discloses that the first inwardly protruding guide (X) or the second inwardly protruding guide (Y) extends into the u-shaped cross-section of the first rail (144) (fig. 4D).
With regard to claims 8-14: The claimed method for connecting rails of a solar panel mount assembly would have been an obvious method of assembling the solar panel mount apparatus of claims 1-7 as being unpatentable under 35 U.S.C. 103 over McPheeters in view of Ledford.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,608,627 in view of McPheeters (US 2019/0068110 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims can be found within the patented claims.
The claims of U.S. Patent No. 11,608,627 does not disclose at least one flange extending from an opposite distal end of the first rail, the at least one flange to engage with a fastener that secures the first rail to a mount.
However, McPheeters discloses a solar panel mount apparatus comprising at least one flange (139e) extending from an opposite distal end of a first rail (144) from a first inwardly protruding guide (139t) (fig. 4), the at least one flange (139e) to engage with a fastener that secures the first rail to a mount (figs. 4C and 5A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the solar panel mount apparatus of U.S. Patent No. 11,608,627 to include at least one flange extending from an opposite distal end of the first rail, the at least one flange to engage with a fastener that secures the first rail to a mount such as taught by McPheeters in order to provide a means of support for securing the solar panel to a support structure.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,139,905 in view of McPheeters (US 2019/0068110 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims can be found within the patented claims.
The claims of U.S. Patent No. 12,139,905 does not disclose at least one flange extending from an opposite distal end of the first rail, the at least one flange to engage with a fastener that secures the first rail to a mount.
However, McPheeters discloses a solar panel mount apparatus comprising at least one flange (139e) extending from an opposite distal end of a first rail (144) from a first inwardly protruding guide (139t) (fig. 4), the at least one flange (139e) to engage with a fastener that secures the first rail to a mount (figs. 4C and 5A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the solar panel mount apparatus and the method of U.S. Patent No. 12,139,905 to include at least one flange extending from an opposite distal end of the first rail, the at least one flange to engage with a fastener that secures the first rail to a mount such as taught by McPheeters in order to provide a means of support for securing the solar panel to a support structure.
Response to Arguments
The objection of claims 1-7 has been withdrawn in view of the amendment filed 6/22/26.
The previous rejection of claims 1-7 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of the amendment filed 6/22/26.
Applicant submits that the Office Action argues that element 139e of McPheeters discloses the previous recitation regarding a 'flange' as claimed. Applicant argues that as illustrated in FIG. 4D of McPheeters, element 139e of McPheeters extends from a wall section of "track 139" rather than 'extending from the first inwardly protruding guide' as claimed. McPheeters, [0048]. Further, Applicant argues that element 139e of McPheeters does not extend 'into a cavity of the u-shaped cross section' as claimed.
Examiner respectfully submits that rejection now designates elements X, Y as being functionally equivalent to the first and second inwardly protruding guides, where flanges 139d, 139t extend in the cavity. It is submitted that the flanges 139d, 139t extend inwardly and downwardly into the cavity as shown in figure 4D of McPheeters.
Regarding the double patenting rejections of claims 1-14, the rejections remains in view the claims being interpreted as best understood. As best understood, Examiner notes that inwardly protruding guides are considered functionally equivalent to the claimed flanges.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633
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