DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “slide plate positioned in the aperture of the rearward plate and in the aperture of the forward plate in the second position” must be shown or the feature canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 15 and 17 are objected to because of the following informalities:
Claim 15, line 3 – 4 recites the limitation “housing ¶ to engage” which should be changed to “housing to engage”.
Claim 17, lines 2 – 3 recites the limitation “trailer hitch ¶ assembly” which should be changed to “trailer hitch assembly”.
Claim 17, lines 15 – 16 recites the limitation “the ¶ forward plate” which should be changed to “the forward plate”.
Claim 17, line 17 recites the limitation “is positioned in the aperture” which should be changed to “is positioned in the passage defined by the aperture”
Appropriate correction is required.
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 17 – 20 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.
Claim 17, lines 17 – 18 recites the limitation “and is positioned in the aperture of the rearward plate and in the aperture of the forward plate in the second position of the slide plate”. However, paragraph [0040] of the Specification explicitly states “a first portion of the edge surface is positioned between the forward plate 22 and the rearward plate 24 and extends across the upper right hand corner of the passage defined by the aligned apertures 34, 60”. Therefore, it is unclear and indefinite as to how the slide plate is positioned within the respective apertures of the rearward plate and forward plate. Rather it is understood the slide plate extends across the passage and is not positioned in the apertures themselves as shown in Figs. 3 and 11.
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 – 4 and 6 – 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 3, 6 – 12, 15 – 19 of copending Application No. 18/654,760 in view of US 6,105,989. The copending Application 18/654,760 fails to explicitly disclose the housing or part of the housing being integrally attached to the receiver tube of the trailer hitch assembly. Linger discloses an anti-rattle device 10 comprising a collar 26, [to allow the collar to be adjusted and tightened, a threaded throughbore 36 extends through a center wall 32 to accommodate an adjustment bolt 38; the throughbore is positioned on the center wall so that the adjustment bolt will contact a receiver tube 14 behind a reinforcing lip 24 once the bolt is inserted] (col. 3, lines 6 – 12). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to additionally use the integral attachment of Linger with the anti-rattle device of copending Application 18/654,760 with a reasonable expectation of success because it would allow for a more secure attachment of the overall assembly, thus reducing unwanted vibration and detachment and reduction in overall replacement and maintenance costs.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 5 and 20 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to disclose
For claim 5: the housing is welded to a rearward end of the receiver tube;
For claim 20: the forward plate is welded to an end of the receiver tube and integrally attaches the housing to the receiver tube.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-11465458 – comprising a hitch receiver; a receiver cover; and a hitch insert;
US-7823904 – comprising a receiver tube; a hitch shank; a wedge member; a support block provides a support surface that contacts a distal surface of the wedge member in an engaged position;
US-20070052206 – comprising a receiver tube; a shank; and an anti-radial tilt device comprising a collar and a center bar;
US-20040195802 – comprising a hitch receiver; a shank; a pair of stop plates; and upper and lower clamp bars; and
US-20010038191 – comprising a support unit; a slide bracket; a support plate; and a hitch ball.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jacob D. Knutson whose telephone number is (571)270-5576. The examiner can normally be reached 8:00 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at (571)-272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB D KNUTSON/Primary Examiner, Art Unit 3611
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