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.
Claim(s) 2-19, 20-28 and 30 is/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.
MPEP 2173.05(p), which recites in part: “II. PRODUCT AND PROCESS IN THE SAME CLAIM A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).” (emphasis in bold added). For more info, see also Federal Circuit’s analysis of claim indefiniteness under 35 U.S.C. § 112 ¶ 2 in IPXL Holdings, L.L.C. v. Amazon.com, Inc. – that a single claim covering both an apparatus and a method of use of that apparatus is indefinite.
Claim 2 in lines 3-10 recites in part: “wherein the first leg and the second leg are compressed towards one another in the compressed configuration; ……. and wherein first and second edges of each of the first receiver slot and second receiver slot are configured to approximate the structure and the base assembly when the first leg and the second leg are move towards the engaged configuration”.
As best understood by Examiner, the above recited limitations include specific actions achieved when using the apparatus (clamp) with respect to “a structure” and “a base assembly” to switch between a compressed configuration and an engaged configuration in a method for connecting a structure to a base assembly using the clamp, rather than reciting structural features and limitations for the apparatus of the clamp itself.
In other words, for the sake of better understanding and clarity, Examiner is interpreting the above set of limitations taken from claim 2 to be the same as the following:
Step 1 as follow: “the clamp comprising: a first leg and a second leg, ……… and a first receiver slot integrally formed in and extending into the first leg, and a second receiver slot integrally formed in and extending into the second leg, wherein the first receiver slot and the second receiver slot are configured to receive a portion of the structure and a portion of the base assembly therein” is a method step of configuring the clamp to be in an unused/standalone configuration, prior to usage thereof in the field. (see Figs 5 and 6 for details).
Step 2 as follow: “a clamp for connecting a structure to a base assembly, …… wherein the first leg and the second leg are compressed towards one another in the compressed configuration” to be equivalent to a method step as follow: “compressing the first leg and the second towards one another in a compressed configuration step” (see Figs 8, 9B and 10B for details).
Step 3 as follow: “approximate the structure and the base assembly when the first leg and the second leg are move towards the engaged configuration” as being equivalent to a method step as follow: “moving the first leg and the second leg towards one another to approximate the structure and the base assembly in an engaged configuration step” (see Figs 11A and 11B for details)
Therefore, drawing reference to above discussions, claimed features for multiple method steps of claim 2 are being directed to the subject matter of a method of using a clamp for connecting a structure to a base assembly involving multiple steps, which are beyond the scope of the apparatus claim of the clamp itself. In other words, as evidenced by express structural changes of the clamp as shown in the figures go from step 1 for an unused/standalone configuration of the clamp (Figs 5 and 6) to step 2 for an compressed configuration of the clamp (Figs 8, 9B and 10B), and to step 3 for an engaged configuration of the clamp (see Figs 11A and 11B), thus the figures directly support the various structural changes or effects to the clamp for a method of using the clamp for connecting a structure to a base assembly involving multiple steps. In other words, the clamp itself does not move or bend inward or outward, without the direct involvement of external objects such as a tool or plier used by a person, nor directly involved in performing a method for connecting a structure to a base assembly.
As a result, in accordance with MPEP 2173.05(p), claim 2 is deemed indefinite because a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite.
Regarding claim 2, which recites in its entirety only feature and limitations directing to a clamp for connecting a structure to a base assembly, but without mention of any particular tool/pliers. However, upon diligently search of entire claim as originally filed, no structural feature or limitation in the claim is found to enable the compressing of the legs towards one another and moving the legs away from each other while approximating the structure and the base assembly. However, as disclosed at least in [039] in specification of instant application as originally filed, specific tool or plier is required to enable the corresponding moving actions of the clamp as recited.
As a result, essential elements, features and limitations are missing in the claim to facilitate or enable various features and limitations (see step 2 and step 3 in above discussion) as recited in claim 2. As a result, claim 2 is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. Correction is required without introducing new matter.
By virtue of dependency upon base claim 2, dependent claims 3-19 are also 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 20 in lines 8-16 recites in part: “wherein the first leg and the second leg are compressed towards one another in the compressed configuration; ……. and wherein first and second edges of each of the first receiver slot and second receiver slot are configured to approximate the panel frame and the base assembly when the first leg and the second leg are move towards the engaged configuration”.
As best understood by Examiner, the above recited limitations taken from claim 20 include specific actions achieved when using the mounting system (clamp, base assembly and panel frame of solar panel assembly combined) with respect to “solar panel assembly” and “a base assembly” to switch or move between a compressed configuration and an engaged configuration in a method for mounting a panel frame of a solar panel assembly to a base assembly using the clamp, rather than reciting structural features or limitations for the clamp system itself.
In other words, for the sake of better understanding and clarity, Examiner is interpreting the above set of limitations taken from claim 20 as following:
Step 1 in the method in “a mounting system for mounting a solar panel assembly to a base assembly, the mounting system comprising: the base assembly; a panel frame of the solar panel assembly; and a clamp configured to approximate the panel frame and the base assembly, the clamp comprising: a first leg and a second leg, the first leg and the second leg configured to move between a compressed configuration and an engaged configuration, …….and a first receiver slot integrally formed in and extending into the first leg, and a second receiver slot integrally formed in and extending into the second leg, wherein the first receiver slot and the second receiver slot are configured to receive a portion of the panel frame and a portion of the base assembly therein” as being a method step of configuring the mounting system in an unused/standalone configuration, prior to usage of the clamp by a tool/plier in the field. (see Figs 5 and 6 for details).
Step 2 in the method which recites “and a clamp configured to approximate the panel frame and the base assembly, ……… wherein the first leg and the second leg are compressed towards one another in the compressed configuration;” to be equivalent to a method step as follow: “compressing the first leg and the second towards one another in a compressed configuration step” (see Figs 8, 9B and 10B for details).
Step 3 in the method which recites “and wherein first and second edges of each of the first receiver slot and second receiver slot are configured to approximate the panel frame and the base assembly when the first leg and the second leg are move towards the engaged configuration.” as being equivalent to a method step as follow: “moving the first leg and the second leg towards one another to approximate the panel frame and the base assembly in an engaged configuration step” (see Figs 11A and 11B for details).
Therefore, drawing reference to above discussions, claimed features for multiple method steps of claim 20 are being directed to the subject matter of a method of using a mounting system involving multiple steps, which are beyond the scope of claim of mounting system itself. In other words, as evidenced by express structural changes of the clamp of the mounting system as shown in the figures to go from step 1 for an unused/standalone configuration of the clamp of the mounting system (Figs 5 and 6) to step 2 for a compressed configuration of the clamp of the mounting system (Figs 8, 9B and 10B), and to step 3 for an engaged configuration of the clamp of the mounting system (see Figs 11A and 11B), thus the figures directly support the various structural changes or effects to the mounting system for a method of using the mounting system for mounting a solar panel assembly to a base assembly involving multiple steps.
As a result, in accordance with MPEP 2173.05(p), claim 20 is deemed indefinite because a single claim which claims both an apparatus system and the method steps of using the apparatus system is indefinite.
Regarding claim 20, which recites in its entirety only feature and limitations directing to a mounting system for mounting a solar panel assembly to a base assembly, without mention of any particular tool/pliers being used. However, upon diligently search of entire claim as originally filed, no structural feature or limitation is found in the claim to enable the compressing of the legs towards one another and moving the legs away from each other while approximating the structure and the base assembly. On the other hand, as disclosed at least in [039] in specification of instant application as originally filed, a specific tool or plier is required to enable the corresponding actions of the clamp in the mounting system.
As a result, essential elements, features and limitations are missing in the claim to facilitate or enable various features and limitations (see step 2 and step 3 in above discussion) as recited in claim 20. As a result, claim 20 is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. Correction is required without introducing new matter.
By virtue of dependency upon base claim 20, dependent claims 21-28 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 30, which recites in lines 1-3: “wherein the structure is a panel frame of a solar panel assembly, the portion of the structure is a panel bracket of the panel frame”. However, upon diligent search of entire disclosure including figures, it is unclear as to what is “wherein the structure is a panel frame of a solar panel assembly” based on support, see [032] which recites in part: “a fixed structure (such as a roof, canopy or ground mounted structure)”. No mention of a structure is a panel frame. Meanwhile, it is unclear what is “the portion of the structure is a panel bracket of the panel frame” as defined in claim, see [032] which recites in part: “panel support bracket 116”. Correction is required without introducing new matter.
Claim(s) 29-34 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Legall et al (US 20190312546, hereinafter referred to as “Legall”).
Regarding claim 29, Legall discloses a method of connecting a structure to a base assembly with a clamp (Figs 4-6, 9 and 10, beam 200 and photovoltaic framework 100 are mounted using a fastening staple 10 (clamp), beam 200 is part of a base assembly, structure (100) is part of a solar panel assembly (Fig. 10, photovoltaic framework 100 in [0051] lines 1-9)), the method comprising: applying an external force a first leg and a second leg to the clamp to compress the first and second legs towards one another (Figs 7 and 14, pair of flexible flanges 23 and lateral wall 18; [0033] lines 1-14; [0077] lines 1-14; [0060] lines 1-8, when flexible flange 23 separated laterally by elastic deformation at compressed configuration), the first leg comprising a first receiver slot integrally formed in and extending into the first leg (Fig. 7, slot formed below hooking teeth 174 and bottom edge of jaw 15, and determined interval 14; one of the determined interval 14 and slot between 174 and 15 can be first receiver slot, integrally formed in and extending into pair of flexible flanges 23 and lateral wall 18 in Figs 7 and 14), and the second leg comprising a second receiver slot integrally formed in and extending into the second leg (Fig. 7, another slot formed below hooking teeth 174 and bottom edge of jaw 15, and determined interval 14; second one of the determined interval 14 and slot between 174 and 15 can be the second receiver slot, integrally formed in and extending into pair of flexible flanges 23 and lateral wall 18 in Figs 7 and 14); receiving a portion of the structure and a portion of the base assembly in the first and second receiver slots (Figs 8 and 10, slots of clamp (10 ) receive part of 201 and 100 in slots of determined interval 14 and between 174 and 15 of legs adjacent to slot 202 of 201); and removing the external force applied to the first and second legs to allow against first and second edges of each of the first and second receiver slots to approximate the portion of the structure and the portion of the base assembly (Figs 6 and 10; [0073] lines 1-9, lateral return of the lateral walls 18 outward in the lateral direction Y).
Regarding claim 30, Legall discloses wherein the structure is a panel frame of a solar panel assembly (Figs 6 and 9, panel frame (100)), the portion of the structure is a panel bracket of the panel frame (Figs 8 and 10, slots of clamp (10 ) receive part of 100 (panel bracket portion of structure) in slots of determined interval 14 and between 174 and 15 of legs), and the portion of the base assembly is a base bracket (Fig 10, support wall 201 of base assembly (200)).
Regarding claim 31, Legall discloses further comprising capturing a first locking tab extending from the first leg and a second locking tab extending from the second leg (Fig. 11, left and right lateral flanges 16 extending from legs ) in one or more clamp slots formed in the portion of the base assembly (Fig. 4, locking tabs 16 engaged to be abutting 200, Fig. 11, 16 formed in foot 12 of 10 with a plurality of clamp slots ([0093] line 1: slots 202, Fig. 4) formed in the bracket (200)).
Regarding claim 32, Legall discloses wherein the first locking tab extends outwards from the first leg, and the second locking tab extends outwards from the second leg (Fig 11, locking tabs (16) extend outward from legs (12)).
Regarding claim 33, Legall discloses further comprising moving the first and second locking tabs between a first orientation and a second orientation when the first and second legs are moved between a compressed configuration and an engaged configuration ([0072] and [0074] for details, elastic displacement of flanges 16 to move between orientations).
Regarding claim 34, Legall discloses further comprising scratching at least one of the portion of the structure or the portion of the base assembly with a plurality of teeth disposed in the first receiver slot and/or the second receiver slot (Fig. 7, hooking teeth 174 disposed in slot formed below hooking teeth 174 and bottom edge of jaw 15, and determined interval 14; [0081] hooking teeth 174 cut into photovoltaic frame 100 segment).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Havener (US 3055686) discloses a clip type fastener adapted to suspend elongated articles from supporting beams and struts. Liefer (US 4557086) discloses a clamp disposed at end of a post with two legs configured to moved between compressed configuration and engaged configuration, and having V-shape. Liu (US 9631654 B2) discloses a fastening member for fastening and unfastening at least two panel members, which including elastic arms. Boville (US 20060102820 A1) discloses an attachment device for be fitted aside a metal support.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DING Y TAN whose telephone number is (303)297-4271. The examiner can normally be reached on Monday-Friday, 8:00 am MT--5:00 pm MT. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terrell McKinnon can be reached on 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DING Y TAN/Examiner, Art Unit 3632
/TERRELL L MCKINNON/Supervisory Patent Examiner, Art Unit 3632
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