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 .
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 21-36 and 38 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/376,038. Although the claims at issue are not identical, they are not patentably distinct from each other because the both claim a vehicle rack system with arms and a mast.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 21 is rejected under 35 U.S.C. 103 as being unpatentable over Allen et al. (US 7,631,791) in view of Kravitz (US 5,219,105).
Regarding claim 21, Allen discloses a rack for carrying recreational equipment on a vehicle, comprising: a stinger (12) receivable by a hitch receiver (abstract) behind a vehicle; a fixed bar (14) extending perpendicular to the stinger, and fixed to the stinger; a pivotable bar (18), having a first end connected to the fixed bar by a pivot joint (at 20), wherein a second end of the pivotable bar is releasably securable to the fixed bar when the pivotable bar is in a closed position; a first pair of arms (32, 34), extending from the pivotable bar and configured to support a first recreational equipment carrier; and a socket (Fig. 1, at 24) fixed to a bar between a first pair of arms. See Figs. 1-3.
Kravitz, which is also drawn to a vehicle rack, discloses a first arm (48) of a first pair of arms mounted to a bar by a first joint (at 49) and a second arm (other 48) of the first pair of arms mounted to the bar by a second joint (at other 49). See Fig. Thus, it 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 to have the arms of Allen, as modified above, be mounted via a joint as disclosed by Kravitz in order to adjust/remove them if necessary.
Claim(s) 22, 23, 26-28 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Allen and Kravitz as applied above in further view of Eichmann (US 5,845,832)
Regarding claim 22, Allen discloses a mast (22), having a lower end portion fastenable in the socket of the pivotable bar; and a crossbar (top of 22) mounted to a top end portion of the mast. See Figs. 1-3. Allen not disclose arms as claimed.
Eichmann, which is drawn to a vehicle rack, discloses a first (54, 55) pair of arms, and a second (58, 59) pair of arms extending from a crossbar and configured to support a second recreational equipment carrier. Thus, it 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 to have two pairs of arms on the rack of Allen, as disclosed by Eichmann, in order to support more items. Moreover, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have more than one pair of arms on the rack, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See, St, Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 23, the stinger extends under the fixed bar, and when the pivotable bar is in the closed position, the pivotable bar is horizontally adjacent and parallel the fixed bar. See Figs. 1-3.
Regarding claim 26, as modified above, each of the first pair of arms extends from a rear face of the pivotable bar.
Claim(s) 27 are rejected under 35 U.S.C. 103 as being unpatentable over Allen as applied above in further view of Eichmann (US 5,845,832)
Regarding claim 27, Allen discloses a rack for carrying recreational equipment on a vehicle, comprising: a stinger (12) receivable by a hitch receiver behind a vehicle; a fixed bar (14) extending perpendicular to the stinger, and fixed to the stinger; a pivotable bar (18), having a first end connected to the fixed bar by a pivot joint (at 20), wherein a second end of the pivotable bar is releasably securable to the fixed bar when the pivotable bar is in a closed position; a mast (22), having a lower end portion connected to the pivotable bar; a crossbar (at top of 22) mounted to a top end portion of the mast; and a pair of arms (32 and 34), extending from the crossbar and configured to support a recreational equipment carrier. See Figs. 1-3. Allen does not disclose another pair of arms as claimed.
Eichmann, which is drawn to a rack, discloses a first pair of arms (54, 55) extending from a pivotable bar and configured to support a first recreational equipment carrier. See Fig. 1. Thus, it 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 to have another pair of arms, as disclosed by Eichmann, on the rack of Allen in order to better support more items. Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have more than one pair of arms on the rack, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See, St, Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Moreover, such a combination would result the first arm of the first pair of arms extending from the second end of the pivotable bar and the second arm of the first pair of arms extending from between the first end of the pivotable bar and the lower end portion of the mast. See Eichman, Figs. 1 and 3. Also, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the arms configured as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art. See In re Japiske, 86 USPQ 70.
Regarding claim 28, as modified above, the lower end portion of the mast is connected to the pivotable bar between the first pair of arms.
Regarding claim 30, the lower end portion and the top end portion of the mast are each linear. See Fig. 1.
Claim(s) 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Allen, Kravitz, and Eichmann as applied above in further view of Stark (US 6,039,227).
Regarding claim 24, Allen discloses a first end of the stinger configured for attachment to a hitch receiver, and a second end, but does not disclose the second end with a ramp as claimed. Stark, which is drawn to a rack, discloses a second end (44) of a stinger that is ramped. See Fig. 1. Thus, it 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 to have the second end of Allen be ramped, as disclosed by Stark, in order to accommodate additional items.
Regarding claim 25, the second end of the stinger extends under the pivotable bar and a lower end portion of the mast when the pivotable bar is in the closed position. See Fig. 1
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Allen and Eichmann as applied above in further view of Workentine (US 4,856,686).
Regarding claim 29, Allen does not disclose the mast as claimed. Workentine, which is drawn to a rack, discloses a mast (4) that is non-linear. See Fig. 1. Thus, it 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 to have the mast of Allen be non-linear, as disclosed by Workentine in order to accommodate various items and have them spaced away from a vehicle.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Allen and Eichmann as applied above in further view of Aikins et al. (US 5,690,260).
Regarding claim 31, Allen does not disclose the arms as claimed. Aikins, which is drawn to a rack, discloses a first pair of arms (54) pivotably connected to a pivotable bar by a joint. See Fig. 1. Thus, it 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 to have the arms of Allen be pivotable, as disclosed by Aikins, in order to accommodate various sized objects.
Claim(s) 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Allen and Eichmann as applied above in further view of Gray (US 8,590,758).
Regarding claim 32, Allen does not disclose the arms as claimed. Gray, which is drawn to a rack, discloses expandable arms. See Fig. 6. Thus, it 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 to have the arms of Allen be expandable, as disclosed by Gray, in order to accommodate different sized objects.
Regarding claim 33, as modified above, each arm of the second pair of arms telescopes between a retracted position and an expanded position. See Gray, Fig. 6.
Claim(s) 34-36 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Allen and Eichmann as applied above in further view of Sumida et al. (US 5,454,496).
Regarding claim 34, Allen does not disclose the rotatable joint as claimed. Sumida, which is drawn to a rack, discloses a crossbar (H) that includes a middle portion between first and second ends, the middle portion of the crossbar being connected to a mast (C) by a rotatable joint. See Fig. 2. Thus, it 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 to have the mast of Allen be rotatable, as disclosed by Sumida, in order to allow access to the rear of the vehicle.
Regarding claim 35, as modified above, the second pair of arms are connected to the crossbar on either side of the rotatable joint.
Regarding claim 36, Allen discloses a rack for carrying recreational equipment on a vehicle, comprising: a stinger (12) receivable by a hitch receiver behind a vehicle; a fixed bar (28) extending perpendicular to the stinger, and fixed to the stinger; a pivotable bar (18), having a first end connected to the fixed bar by a pivot joint, wherein a second end of the pivotable bar is releasably securable to the fixed bar when the pivotable bar is in a closed position; a mast (22), having a lower end portion connected to the pivotable bar; a crossbar (top of 22) having a middle portion connected to the mast, and a pair of arms (32, 34), extending from the crossbar and configured to support a recreational equipment carrier. Allen does not disclose another pair of arms or a rotatable joint as claimed.
Eichmann, which is drawn to a rack, discloses a first pair of arms (54, 55) extending from a pivotable bar and configured to support a first recreational equipment carrier. See Fig. 1. Thus, it 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 to have another pair of arms, as disclosed by Eichmann, on the rack of Allen in order to better support more items. Moreover, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have more than one pair of arms on the rack, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See, St, Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Sumida, which is drawn to a rack, discloses a crossbar (H) having a middle portion connected to a mast (C) by a rotatable joint, the rotatable joint including an upper sleeve (Fig. 4, at 30) fixed to the crossbar and receiving an end of the mast (Fig. 8, at b); and wherein the crossbar is rotatable about a longitudinal axis of the mast. See Figs. 2, 4 and 8. Thus, it 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 to have the mast of Allen be rotatable, as disclosed by Sumida, in order to allow access to the rear of the vehicle.
Regarding claim 38, as modified above, the crossbar is rotatable between a transport position and an access position.
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new grounds of rejection. However, in response to Applicant’s argument that Sumida does not pivot as claimed the Office respectfully disagrees. In Fig. 8 of Sumida it clearly discloses a pivot pin (30) on which header (H) pivots. The downward members (13) are independent from the pivoting of the header (H). More specifically, Sumida discloses “column C is provided with a positioning pin 31 that is spaced radially from pivot pin 30 and projects a short distance from the top face 29 to receive one of a multiplicity of complementary openings in the header to position the same, in order to selectively condition and/or to releasably position said header.” “Referring now to the header H in its retracted clearance position as shown in FIG. 2, the openings 33 are engaged over the pivot pin 30, [...] when a complementary opening 35 engages over the positioning pin 31.” (Emphasis added). See Figs. 4 and 8; and col. 4, ll. 57 – col. 5, ll. 25. It is clearly shown and described in Figs. 4 and 8 that header (H) pivots where opening (35) can engage pin (31).
Allowable Subject Matter
Claims 37, 39 and 40 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 DEREK J BATTISTI whose telephone number is (571)270-5709. The examiner can normally be reached 9:00 am - 5:00 pm M-F.
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, Nathan Newhouse can be reached at 571-272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DEREK J BATTISTI/Primary Examiner, Art Unit 3734
