DETAILED ACTION
This is a final Office action in response to the amendment filed 12/02/2025 and the IDS filed 12/15/2025.
Status of Claims
Claims 1-21 are pending;
Claims 1-6, 8-12, 14-18, and 20 were previously presented; claims 7, 13, and 19 are currently amended; claim 21 is new;
Claims 1-21 are rejected herein.
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 .
Response to Arguments
Applicant's arguments with respect to the prior art objections, based on Seery et al. (US 9,496,820 B2), hereinafter Seery, and Neal et al. (US 2022/0345074 A1), hereinafter Neal, have been fully considered but they are not persuasive.
Firstly, Applicant argues that "Seery already includes the coupling features 215 which allow for multiple locations along two transverse axes (e.g. x and y) for coupling different types of supports to be used with the mount assembly" (remarks, page 7) and so "the combination of Seery with Neal would be redundant" (remarks, page 7). The Examiner respectfully disagrees, since the support coupling elements (Seery: 115, fig 1A) of Seery and the guide (Neal: 316, fig 3) of Neal are structurally different, thereby enabling different types of support structures to be couplable to the anchor system (Seery: 100, fig 1A) of Seery.
Secondly, Applicant argues that "one of ordinary skill in the art would not provide the mount assembly extending upwards from the top portion as taught by Neal with the mount assembly of Seery as Seery is directed to a rail-less mounting system and Neal is directed to a mounting bracket for connecting to a rail segment" (remarks, page 8). The Examiner respectfully disagrees, since one of ordinary skill in the art would have looked into different types of mount assemblies for photovoltaic modules (e.g., Seery: col 1, lines 38-41).
Information Disclosure Statement
The information disclosure statement (IDS) submitted 12/15/2025 has been considered by the Examiner.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-5, 7-13, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Seery et al. (US 9,496,820 B2), hereinafter Seery, in view of Neal et al. (US 2022/0345074 A1), hereinafter Neal.
Regarding claim 1, Seery discloses a mount assembly (100, fig 1A) for securing a solar panel rail or rail-less support structure directly to a roof surface (R, fig 3, col 5, lines 56-67, col 4, lines 1-5), the mount assembly comprising: a base (110, 130, fig 1A) having a top portion (130, fig 1A) and a bottom portion (110, fig 1A), the top portion having a top surface and a bottom surface (see Figures 2 and 3), the bottom portion comprises a cavity (112, fig 2) and a bottom surface (see Figure 1B) including multiple openings (115, fig 1B); the cavity formed within the base (see Figure 2), wherein the base has an open end (see Figures 1B and 2); a sealant (120, fig 2) within the cavity (see Figures 2 and 3); and a through-hole (131, fig 2), wherein the through-hole extends from the bottom surface of the bottom portion to the top surface of top portion of the base (see Figures 2 and 3).
Seery does not disclose the mount assembly, comprising a guide extending upwards from the top surface of the base, wherein the guide forms a pair of members extending from opposing sides of the base and an aperture between the pair of members.
Neal teaches a mount assembly (202, fig 2) for securing a solar panel rail or rail-less support structure (204, fig 2) directly to a roof surface (paragraph 0028, line 15), the mount assembly comprising: a two-part base (206, 310, fig 3) comprising a top portion (310, fig 3) and a bottom portion (206, fig 2); a guide (316, fig 3) extending upwards from the top portion of the base (see Figure 3), wherein the guide forms a pair of members (302(1), 320(2), fig 3) extending from opposing sides of the base and an aperture (318, fig 3) between the pair of members (see Figure 3).
Seery and Neal are analogous art because they are at least from the same field of endeavor, i.e., mounts. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide the mount assembly (Seery: 100, fig 1A) with a guide (Neal: 316, fig 3) extending upwards from the top surface of the top portion (Seery: 130, fig 1A) of the base (Seery: 110, 130, fig 1; Neal: see Figure 3), wherein the guide forms a pair of members (Neal: 302(1), 320(2), fig 3) extending from opposing sides of the base and an aperture (Neal: 318, fig 3) between the pair of members (Neal: see Figure 3), as taught by Neal, with a reasonable expectation of success. The motivation would have been to accommodate different types of supports to be used with the mount assembly. Therefore, it would have been obvious to combine Seery and Neal to obtain the invention as specified in claim 1.
Regarding claim 2, wherein the bottom portion of the base comprises a bottom portion sidewall (Seery: see Figure 2, the sidewall of the sealant receptacle 112).
Regarding claim 3, wherein the bottom portion further comprises an outer rim (Seery: see Figure 2, the upper rim of the sealant receptacle 112), wherein the outer rim surrounds the cavity (Seery: see Figure 2).
Regarding claim 4, wherein the top portion further comprises a top portion sidewall (Seery: see Figure 2, the sidewall portion of the compressing plate 130) which is surrounded by the bottom portion sidewall of the base (Seery: see Figure 1A).
Regarding claim 5, wherein the bottom surface of the bottom portion of the base comprises a first bottom surface portion (Seery: see Figure 1B, the outer bottommost surface portion) and a second bottom surface portion (Seery: see Figure 1B, the inner recessed surface portion), and further wherein the second portion is inset relative to the first portion (Seery: see Figure 1B).
Regarding claim 7, wherein a fastener (Seery: 10, fig 2) passes through the through-hole and into the roof surface thereby coupling the top portion, the bottom portion, and the roof surface (Seery: see Figure 3).
Regarding claim 8, wherein when the roof is coupled to the top portion and the bottom portion of the base by the fastener, the top portion is compressed against the bottom portion and the sealant is compressed against the roof surface (Seery: see Figures 2 and 3).
Regarding claim 9, Seery, as modified by Neal (see above discussions with respect to claim 1), teaches a mount assembly (Seery: 100, fig 1A) for securing a solar panel support structure directly to a roof surface (Seery: R, fig 3, col 5, lines 56-67, col 4, lines 1-5), the mount assembly comprising: a two-part base (Seery: 110, 130, fig 1A) comprising a top portion (Seery: 130, fig 1A) and a bottom portion (Seery: 110, fig 1A), wherein the top portion is nestable within the bottom portion (Seery: see Figures 1A-3), the bottom portion comprises a bottom surface (Seery: see Figure 1B) having multiple openings (Seery: 115, fig 1B); a guide (Neal: 316, fig 3) extending upwards from the top portion of the base (Neal: see Figure 3), wherein the guide forms a pair of members (Neal: 302(1), 320(2), fig 3) extending from opposing sides of the base (Seery: see Figure 2) and an aperture (Neal: 318, fig 3) between the pair of members (Neal: see Figure 3); a through-hole portion (Seery: 131, fig 2), wherein the through-hole portion is formed within the top portion of the base and passes through the top portion and the bottom portion of the two part base (Seery: see Figures 2 and 3); and a fastener (Seery: 10, fig 2), wherein the fastener is sized to pass through the through-hole portion (Seery: see Figures 1A-3).
Regarding claim 10, wherein the bottom portion of the two-part base comprises a bottom portion sidewall (Seery: see Figure 2, the outer peripheral sidewall of the base 110), the bottom portion sidewall being at least partially curved (Seery: see Figures 1B and 2) and defining an opening, a top rim, and a bottom rim (Seery: see Figure 2)
Regarding claim 11, wherein the top portion of the two-part base comprises a top portion sidewall (Seery: see Figure 2, the sidewall portion of the compressing plate 130), wherein a shape and dimension of the top portion sidewall aligns with a shape and dimension of the bottom portion sidewall (Seery: see Figures 1A-3).
Regarding claim 12, wherein the two-part base further comprises an open space (Seery: 112, fig 2) formed within the sidewall of the bottom portion and below a bottom surface of the top portion (Seery: see Figure 2 and 3), the open space including a sealant (Seery: 120, fig 2).
Regarding claim 13, wherein a volume of the open space is variable and dependent on the relationship between the top portion and the bottom portion of the two-part base (Seery: see Figures 1A-3).
Regarding claim 18, wherein the fastener a threaded lag bolt (Seery: 10, fig 2).
Regarding claim 19, Seery, as modified by Neal (see above discussions with respect to claim 1), teaches a mount assembly (Seery: 100, fig 1A) for securing a solar panel rail or rail-less support structure directly to a roof surface (Seery: R, fig 3, col 5, lines 56-67, col 4, lines 1-5), the mount assembly comprising: a two-part base (Seery: 110, 130, fig 1A) comprising a top part (Seery: 130, fig 1A) and a bottom part (Seery: 110, fig 1A), wherein the top part is nestable within the bottom part (Seery: see Figures 1A-3), the bottom part comprises a cavity (Seery: 112, fig 2) and a bottom surface (Seery: see Figure 1B) having multiple openings (Seery: 115, fig 1B); a guide (Neal: 316, fig 3) extending upwards from the top part of the two-part base (Neal: see Figure 3), wherein the guide forms a pair of members (Neal: 302(1), 320(2), fig 3) extending from opposing sides of the two-part base (Seery: see Figure 2) and an aperture (Neal: 318, fig 3) between the pair of members (Neal: see Figure 3); a through-hole (Seery: 131, fig 2), wherein the through-hole is formed within the top part of the two-part base and passes through a bottom surface of the two-part base (Seery: see Figures 1A-3); and a sealant (Seery: 120, fig 2) within the cavity (Seery: see Figure 2); wherein the two-part base has a first state wherein the top part is at a first distance from the roof (Seery: see Figures 1A-3) and a second state, in the second state the sealant is compressed against the roof surface and the top part is at a second distance from the roof surface (Seery: see Figures 1A-3), the second distance being less than the first distance (Seery: see Figures 1A-3).
Claims 6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Seery et al. (US 9,496,820 B2), hereinafter Seery, in view of Neal et al. (US 2022/0345074 A1), hereinafter Neal, and Meine (US 10,171,026 B2).
Regarding claim 6, Seery, as modified by Neal with respect to claim 1, does not teach the mount assembly, further comprising a gasket member, wherein the gasket member surrounds the second bottom surface portion of the bottom portion of the base.
Meine teaches a mount assembly (100, fig 1) for securing a solar panel rail or rail-less support structure directly to a roof surface (col 3, lines 6-12), the mount assembly comprising: a base (110, fig 1); and a gasket member (115, fig 3), wherein the gasket member surrounds a bottom surface portion of a bottom portion of the base (See Figure 3).
Meine is analogous art because it is at least from the same field of endeavor, i.e., mounts. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide the mount assembly (Seery: 100, fig 1A) with a gasket member (Meine: 115, fig 3), wherein the gasket member surrounds the second bottom surface portion of the bottom portion of the base (Seery: 110, 130, fig 1; Meine: see Figure 3), as taught by Meine, with a reasonable expectation of success. The motivation would have been to enhance sealing of the bottom portion of the base. Therefore, it would have been obvious to combine Seery, Neal, and Meine to obtain the invention as specified in claim 6.
Regarding claim 17, Seery, as modified by Neal and Meine (see above discussions with respect to claims 1 and 6), teaches the mount assembly, further comprising a gasket member (Meine: 115, fig 3), wherein the gasket member is at least partially contacted by the bottom rim of the bottom portion of the two-part base (Meine: see Figure 3).
Claims 14-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Seery et al. (US 9,496,820 B2), hereinafter Seery, in view of Neal et al. (US 2022/0345074 A1), hereinafter Neal, and Egigian (US 7,481,610 B1).
Regarding claim 14, Seery, as modified by Neal with respect to claim 1, does not teach the mount assembly, wherein the top portion further comprises a lip extending at least partially around a cavity formed within the bottom portion of the two-part base.
Egigian teaches a mount assembly (see Figure 1) comprising: a base (10, 20, fig 1) comprising a top portion (10, fig 1) and a bottom portion (20, fig 1), wherein the top portion is nestable within the bottom portion (see Figure 1 and 5); wherein the top portion further comprises a lip (10a, fig 1, see annotation) extending at least partially around an exterior sidewall (12, fig 1), and wherein the lip of the top portion is configured to contact a top rim (20a, fig 1, see annotation) of the bottom portion when the top portion and the bottom portion are in a fully nested configuration (see Figures 1 and 5).
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[AltContent: connector]
[AltContent: textbox (10a – Lip)][AltContent: connector]
[AltContent: textbox (20a – Top Rim)]
Egigian is analogous art because it is at least from the same field of endeavor, i.e., mounts. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to form the top portion (Seery: 130, fig 2) with a lip (Egigian: 10a, fig 1, see annotation) extending at least partially around a cavity (Seery: 112, fig 2) formed within the bottom portion (Seery: 110, fig 2) of the two-part base (Seery: 110, 130, fig 1A), as taught by Egigian, with a reasonable expectation of success. The motivation would have been to limit the downward movement of the compressing plate, such that the user could easily know when to stop rotating the threaded bolt. Therefore, it would have been obvious to combine Seery, Neal, and Egigian to obtain the invention as specified in claim 14.
Regarding claim 15, wherein the lip of the top portion is configured to align with a top rim of the bottom portion (Seery: see Figure 3; Egigian: see Figures 1 and 5).
Regarding claim 16, Seery, as modified by Neal and Egigian (see above discussions with respect to claims 1 and 14), teaches the mount assembly, wherein the top portion further comprises a lip (Egigian: 10a, fig 1, see annotation) extending at least partially around a sealant (Seery: 120, fig 2), and wherein the lip of the top portion is configured to contact the bottom portion when the top portion and the bottom portion are in a nested configuration (Seery: see Figure 3; Egigian: see Figures 1 and 5).
Regarding claim 20, Seery, as modified by Neal and Egigian (see above discussions with respect to claims 1 and 14), teaches the mount assembly, wherein at least one of the top portion or bottom portion include a horizontally extending lip (Egigian: 10a, fig 1, see annotation) that contacts a top surface of the top portion or bottom portion (Seery: see Figure 3; Egigian: see Figures 1 and 5).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Seery et al. (US 9,496,820 B2), hereinafter Seery, in view of Neal et al. (US 2022/0345074 A1), hereinafter Neal, and Rubenacker (US 6,282,857 B1).
Regarding claim 21, Seery, as modified by Neal with respect to claim 1, does not teach the mount assembly, wherein the base further comprises a rib extending across the top surface of the top portion of the base.
Rubenacker teaches a mount assembly (see Figure 25) comprising: a base (20, fig 25, also see Figure 1) having an upper surface (22, fig 1); and a fastener (50, fig 25); wherein the base further comprises a crown (28, fig 1), a collar portion (32, fig 1), and a rib (38, fig 1) extending across the top surface of the base (see Figure 1).
Rubenacker is analogous art because it is at least from the same field of endeavor, i.e., mounts. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to form the top portion (Seery: 130, fig 2) of the base (Seery: 110, 130, fig 1A) with a crown (Rubenacker: 28, fig 1), a collar portion (Rubenacker: 32, fig 1), and a rib (Rubenacker: 38, fig 1) extending across the top surface of the top portion of the base (Rubenacker: see Figure 1), as taught by Rubenacker, with a reasonable expectation of success. The motivation would have been to protect the head of the fastener. Therefore, it would have been obvious to combine Seery, Neal, and Rubenacker to obtain the invention as specified in claim 21.
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.
This is a provisional nonstatutory double patenting rejection.
Claims 1-21 of the present application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-33 of copending Application No. 18/559,807 (reference application) in view of Seery et al. (US 9,496,820 B2), hereinafter Seery, Neal et al. (US 2022/0345074 A1), hereinafter Neal, Meine (US 10,171,026 B2), Egigian (US 7,481,610 B1), and/or Rubenacker (US 6,282,857 B1), as discussed above in the current Office action. Although the claims at issue are not identical, they are not patentably distinct from each other. All limitations of claims 1-21 of the present application can be found in or rendered obvious by claims 20-33 of copending Application No. 18/559,807 in view of Seery, Neal, Meine, Egigian, and/or Rubenacker as discussed above in the current Office action.
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 Guang H Guan whose telephone number is (571) 272-7828. The examiner can normally be reached weekdays (10:00 AM - 6:00 PM).
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/G. H. G./Examiner, Art Unit 3631
/JONATHAN LIU/Supervisory Patent Examiner, Art Unit 3631