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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,152,765 in view of Danesh (U.S. 2015/0009676). U.S. Patent No. 12,152,765 discloses the claimed invention except for the fan. Danesh teaches that it is known to construct a junction box with a fan (see element 4; paragraph [0018]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the device of U.S. Patent No. 12,152,765 with the fan, as taught by Danesh, in order to cool the interior space.
Claims 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,152,765 in view of Xie et al. (CN 216086357U). U.S. Patent No. 12,152,765 discloses the claimed invention but also states that the wall is substantially circular. Xie et al. teaches that it is known to construct a junction box that does not have a circular wall (see figures 3 and 4). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the device of U.S. Patent No. 12,152,765 with the wall being non-circular, as taught by Xie et al., in order to snugly fit within a non-circular space.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Masuko et al. (U.S. 2012/0170248) in view of Danesh (U.S. 2015/0009676).
Regarding claim 1, Masuko et al. teaches a junction box, shown in figure 1, comprising a housing comprising a top portion 13, a wall 13b extending from the top portion, comprising an internal coupling region 13d1, and a captured o-ring 14 embedded in the side wall, the attachment 11 comprising a second wall 11b comprising an external coupling region 11d2, and a captive fastener 15f configured to pass through the top portion 13 for mounting of the junction box to a surface (extends through opening of 13), wherein the external coupling region and the internal coupling region are shaped and arranged to be releasably couplable via a twist-and-lock configuration (figure 2).
Further regarding claim 1, Masuko et al. discloses the claimed invention except for the fan. Danesh teaches that it is known to construct a junction box with a fan (see element 4; paragraph [0018]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the device of Masuko et al. with the fan, as taught by Danesh, in order to cool the interior space.
Additionally, the modified device of Masuko et al. teaches a drain and intake port adjacent lead line 11 in figure 7.
Regarding claim 2, the watertight seal is created without the use of tools or other fasteners (figure 2; watertight due to o-rings).
Regarding claim 3, the captive fastener 15f passes through a seal (extends through central opening of 14), wherein the seal is fixedly attached to the top portion when 11 is secured to 13.
Regarding claim 4, the internal coupling region comprises a locking socket (threaded fastener 11d2) and wherein the housing comprises an external locking socket disposed on an exterior portion of the housing.
Regarding claim 5, the external coupling region comprises a locking projection (thread) shaped to fit within the locking socket (thread recess), and wherein the attachment comprises an external locking projection (thread) disposed on an exterior portion of the attachment, the external locking projection shaped to be engaged with the external locking socket.
Regarding claim 6, the junction box is installed in a wet location (capable of being installed in wet location).
Regarding claim 7, one or more conduit hubs located in the substantially circular wall (see W1 in figure 4C).
Regarding claim 8, the conduit hubs are glue-in conduit hubs (the openings receiving w1 are capable of being used as glue-in conduit hubs).
Response to Arguments
Applicant's arguments filed April 22, 2026 have been fully considered but they are not persuasive. The amendment filed April 22, 2026 is sufficient to overcome the rejection under 35 U.S.C. 112, set forth in the previous Office Action. Applicant argues that claim 1 is not anticipated by Masuko et al. because Masuko et al. does not teach a fan, and intake port and a drain. The secondary reference of Danesh (U.S. 2015/0009676) has been added to the rejection for the teaching of providing a housing with a fan. Danesh discloses a fan in paragraph [0018] for cooling the interior of the housing. It is also the examiner’s position that the primary reference of Masuko et al. teaches openings shown in figure 7 at lead line 11 which can be considered ports and drains, to the degree set forth in amended claim 1.
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 NIKI MARINA ELOSHWAY whose telephone number is (571)272-4538. The examiner can normally be reached Monday through Friday 7: 00 a.m. to 3:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Avilés can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIKI M ELOSHWAY/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736
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