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 .
DETAILED ACTION
This is a non-final First Office Action on the Merits in application 18/962,774, filed 11/27/2024, which is a continuing application as disclosed.
Claims 1-15 were canceled and claims 16-35 added in the preliminary amendment filed 1/13/2025.
Claims 16-35 are pending and examined.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/27/24; 1/8/25; 6/25/25; 8/18/25; 12/15/25; 1/29/26; 4/2/26; 4/15/26; 5/28/26; 7/23/26; 7/30/26 12/6/2024 are being considered by the examiner.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 16-18, 20-21, 23-24, 26-27, 29 and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stearns(9,134,044; cited on IDS filed).
Regarding claims 16, 18 and 26-27, Stearns disclosed a mounting device comprising(see Fig. 50):
a base(520) including: a top, a bottom opposite the top, the bottom to be disposed against a mounting surface(via 516 and 594), and a sealant receiving cavity open along the bottom(see Fig. 51), the cavity fluidly connected to the mounting surface(via fastener hole);
a fastener opening(receiving fastener) defined in the top and extending through the top to the sealant receiving cavity, the fastener opening to receive a fastener(522) to secure the mounting device to the mounting surface;
wherein the sealant receiving cavity receives a sealant(530 of membrane 516) directly contacting the mounting surface(see Fig. 51);
a first vertical member(left side of 520) extending upwardly from the top;
a second vertical member(right side of 520) extending upwardly from the top; and
a slot/aperture disposed between the first vertical member and the second vertical member(see Fig. 50), the aperture receives a fastener for securing an element(the fastener is capable of securing a mounting rail meeting the claim limitation, see column 21, lines 9-12).
Regarding claims 32-34, Stearns discloses the device of claims 16 and 27, and further a method of mounting the device comprising boring a hold(fastener 522 is in the roof surface and therefore a hole is inherently “bored” in the structure meeting the claim limitation); the device is place over the hole(see Fig. 51); a first fastener(522) is inserted through the fastener opening and into the hole, and the first fastener is inherently tightened to secure the device to the structure, wherein based on the structure of the device secured to the structure the cavity is sealed against the surface(via the seal and sealant) to form a watertight seal, and securing a mounting rail(considered one of the elements denoted in column 21, lines 10-12), the fastener is considered positionable at various heights as the slot is oblong allowing for positioning of the fastener).
Regarding claim 17, Stearns discloses the mounting device of claim 16, further comprising a seal(594) disposed on an underside of the base and extending around a perimeter of the sealant receiving cavity, the seal directly contacting the mounting surface when the mounting device is secured to the mounting surface(see Fig. 1).
Regarding claims 20 and 29, Stearns discloses the mounting device of claims 18 and 27, wherein the sealant forms a watertight seal with the mounting surface(the sealant in combination with the seal provide a watertight seal meeting the claim limitation).
Regarding claim 21, Stearns discloses the mounting device of claim 18, wherein the sealant(portion of 516 directly contacting surface, see Fig. 51) directly contacts the mounting surface.
Regarding claim 23, Stearns discloses the mounting device of claim 16, wherein the base further includes a sidewall disposed around the bottom(see Fig. 51).
Regarding claim 24, Stearns discloses the mounting device of claim 23, wherein the sidewall(portion of bottom off 520) is disposed against the mounting surface(against via the sealant and seal).
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.
Claims 25 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Stearns.
Regarding claim 25, Stearns discloses the mounting device of claims 16, but lacks the specific fastener
The specific fastener is considered a feature best determined by a skilled artisan given the intended use of the device and design requirements thereof.
Regarding claim 34, in the alternative, Stearns discloses the mounting device of claim 33,
but lacks the fastener specifically positionable at various locations.
The aperture of the device is a slot and therefore considered obvious to a skilled artisan to allow for positioning of the fastener of attachable element allowing for options in the placement of the element given the intended use of the device and design requirements thereof.
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 16-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 18-19 of U.S. Patent No. 11,486,134 in view of 10,781,587.
‘134 discloses a mounting device comprising: a base including: a top, a bottom opposite the top, the bottom to be disposed against a mounting surface, and a sealant receiving cavity open along the bottom; a fastener opening defined in the top and extending through the top to the sealant receiving cavity, the fastener opening to receive a fastener to secure the mounting device to the mounting surface; a vertical member extending upwardly from the top and an aperture disposed in the vertical member(see claim 15 of ‘134).
Regarding claims 27-28, ‘134 discloses a mounting device comprising: a bottom disposed against a mounting surface; a cavity defined in the bottom and fluidly connected to the mounting surface; a fastener opening that receives a fastener to secure the mounting device to the mounting surface, wherein when the fastener secures the mounting device to the mounting surface the bottom mounts against the mounting surface; a flowable sealant disposed within the cavity and directly contacting the mounting surface; a first vertical member; a second vertical member; and an aperture that receives a fastener to secure a mounting rail to the first vertical member and the second vertical member, the aperture disposed at least partially between the first vertical member and the second vertical member(see claim 15).
‘134 lacks first and second vertical members with a slot therebetween.
‘587 discloses a mounting device having a base with an internal cavity and open bottom for receiving a sealant and a first and a second vertical with an aperture to receive a rail(see claim 1).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have substituted the single vertical member of ‘134 with the double vertical member of ‘587 given that KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 82 USPQ.2d 1385 (Fed. Cir. 2005), cert. granted, 547 U.S. __ (2006) has found that the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. The specific aperture shape is considered a feature best determined by a skilled artisan given the intended use of the device and design requirements thereof.
Regarding claims 26 and 27, ‘134 and ‘587 disclose the mounting device of claim 16, but lacks the aperture/slot receives a second fastener to attach a mounting rail to the first vertical member and the second vertical member.
The specific attachment of the rail to the base is considered a feature best determined by a skilled artisan given the intended use of the device and design requirements thereof.
Regarding claim 17, ‘134 and ‘587 disclose the mounting device of claim 16, further comprising a seal disposed on an underside of the base and extending around a perimeter of the sealant receiving cavity, the seal directly contacting the mounting surface when the mounting device is secured to the mounting surface(see claim 15).
Regarding claims 18-19, ‘134 and ‘587 disclose the mounting device of claim 16, wherein the sealant receiving cavity receives a flowable sealant(see claim 15).
Regarding claims 20 and 29, ‘134 and ‘587 disclose the mounting device of claim 18, wherein the sealant forms a watertight seal with the mounting surface(see claim 15).
Regarding claim 21, ‘134 and ‘587 disclose the mounting device of claim 18, wherein the sealant directly contacts the mounting surface(see claim 15).
Regarding claims 22 and 30-31, ‘134 and ‘587 disclose the mounting device of claim 18, with the device having a port for flowable sealant to be disposed within the cavity and a vent/opening in communication with the cavity(see claims 18-19; the vent would inherently allow any excess sealant to escape).
Regarding claim 23, ‘134 and ‘587 disclose the mounting device of claim 16, wherein the base further includes a sidewall disposed around the bottom(considered area around cavity).
Regarding claim 24, ‘134 and ‘587 disclose the mounting device of claim 23, wherein the sidewall(part of bottom) is disposed against the mounting surface.
Regarding claim 25, ‘134 and ‘587 disclose the mounting device of claim 16, wherein the fastener comprises at least one of: a threaded screw; or a threaded bolt(bolt, see claim 15) but lacks the bolt being threaded.
The specific fastener is considered a feature best determined by a skilled artisan given the intended use of the device and design requirements thereof.
Claims 32-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 10,171,026.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims set forth a method of mounting a mounting device to a mounting surface, the mounting device including a bottom, a sealant receiving cavity in communication with the bottom, a fastener opening in communication with the sealant receiving cavity, a first vertical member, a second vertical member, and an aperture disposed at least partially between the first vertical member and the second vertical member, the method comprising: boring a hole in the mounting surface; placing the mounting device over the hole; inserting a first fastener through the fastener opening and into the hole; and tightening the first fastener to secure the mounting device to the mounting surface, wherein based at least in part on the mounting device being secured to the mounting surface, the sealant receiving cavity is sealed against the mounting surface to form a watertight seal and prevent an ingress of liquid into the hole.
Regarding claims 33-34, ‘026 discloses the method of claim 32, further comprising securing a mounting rail to the first vertical member and the second vertical member but lacks the specific securement.
The specific attachment of the rail to the base, such as adjustable, is considered a feature best determined by a skilled artisan given the intended use of the device and design requirements thereof.
Claim 35 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 10,171,026 in view of ‘134.
‘026 discloses the method of claim 32, but lacks the specific liquid used.
‘134 discloses a mounting device with a base having a sealant is disposed within a sealant receiving cavity.
It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have provided the liquid of ‘026 as a sealant such as disclosed by ‘134, with a reasonable degree of success, in order to have provided a watertight seal between the device and structure given the intended use of the device and design requirements thereof.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETH A. AUBREY whose telephone number is (571)272-1851. The examiner can normally be reached M-F 8a-4:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at 571-272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BETH A. AUBREY
Primary Examiner
Art Unit 3633
/Beth A Aubrey/
Prosecution Insights