DETAILED ACTION
Claims 1-20 are pending.
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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to U-bolt spacer for use with a U-bolt, classified in F16B 43/00.
II. Claims 18-19, drawn to a method of using a U-bolt spacer with a U-bolt, classified in F16B 43/00.
III. Claim 20, drawn to a system for coupling a saddle-mount to a frame of a truck with a U-bolt spacer and a U-bolt, classified in F16B 43/00.
The inventions are independent or distinct, each from the other because:
Inventions II and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the method of using a U-bolt spacer with a U-bolt, as defined in claim 18, can be used with another materially different product other than that defined in claim 20. For example, a U-bolt spacer with a U-bolt can be installed to pipe(s), cable(s), or commercial/residential construction framing.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art due to their recognized divergent subject matter. The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
This application contains claims directed to the following patentably distinct species:
Figures 1-7 introduces a V-shaped spacer comprising a chamfer (Species I).
Figures 8-13 introduces a U-shaped spacer with grooves (Species II).
The species are independent or distinct because of the mutually exclusive nature of the relationship between the structural features as introduced in each species. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1, 9-11, and 18-20 are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
The species are mutually exclusive because they are alternative embodiments to each other. Lastly, the search results as applicable to one species would not necessarily be relevant to the others.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with William Dusseau on 07/29/2026 a provisional election was made without traverse to prosecute the invention of groups I & II and species II, claims 1, 3, 9-17, and 18-19. Affirmation of this election must be made by applicant in replying to this Office action. Claims 2, 4-8, and 20 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Drawings
The drawings are objected to because of the following:
The line quality of all the drawings, when zoomed in, illustrate an inconsistent line quality. 37 CFR 1.84 (Standards for Drawings), section L (Character of lines, numbers, and letters) states: “All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined”. The drawings should be viewed in the USPTO’s patent center in order to see this problem.
Figure 6 has a section identifier (i.e., A-A), which should use Roman or Arabic numerals. See 37 CFR 1.84, section “h”, subsection “3”. Furthermore, figure 7 should include the cross-section identifier marking from figure 6.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Reference numerals 212 and 214, as shown in figure 18.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 19 is objected to because of the following informalities and should likely read as follows: “[...] the U-bolt having the substantially parallel arms, [[a]]the connecting portion, and the curved transitions between the connecting portion and the substantially parallel arms, the method...”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 is improper for having an identical limitation in the parent claim without further limiting or properly reference a prior claim, i.e., parent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 3, 9-11, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lie (US Patent Number 5,921,570; hereinafter “Lie”).
In regard to claim 1, Lie discloses: A U-bolt spacer (25) for use with a U-bolt (31), the U-bolt having substantially parallel arms (i.e., arms adjacent 33), a connecting portion (41), and curved transitions between the connecting portion and the substantially parallel arms (as shown in figures 1-2 | see also abstract and column 2, line 60- column 3, line 56), the U-bolt spacer comprising:
a body including a first end and a second end (i.e., as shown in annotated figure 2 below); and
a channel (42) formed in the body (as shown in figure 2), the channel extending along the body from the first end to the second end, the channel at each of the first end and the second end having a complementary curvature configured to cooperate with the curved transitions of the U-bolt, thereby allowing the channel to receive the connecting portion and the curved transitions of the U-bolt (as shown in figures 1-2 | also, see column 2, line 60- column 3, line 56).
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In regard to claim 3, Lie further discloses: wherein the channel includes a substantially U-shaped cross-section (as shown in figures 1-2).
In regard to claim 9, Lie further discloses: wherein the channel extends from the body along the first end and the second end (see claim 1 rejection herein).
In regard to claim 10, Lie further discloses: wherein the channel maintains a substantially uniform depth and extends from the body along the first end and the second end (as shown in figures 1-2 | also, see column 2, line 60- column 3, line 56).
In regard to claim 11, Lie further discloses: wherein the channel is configured to receive the connecting portion, the curved transitions, and the substantially parallel arms of the U-bolt (as shown in figures 1-2 | also, see column 2, line 60- column 3, line 56).
In regard to claim 18, Lie discloses: A method of using a U-bolt spacer (25) with a U-bolt (31), the U-bolt having substantially parallel arms (i.e., arms adjacent 33), a connecting portion (41), and curved transitions between the connecting portion and the substantially parallel arms (as shown in figures 1-2 | see also abstract and column 2, line 60- column 3, line 56), the method comprising:
providing the U-bolt spacer dimensioned to receive the U-bolt (as shown in figure 1), the U-bolt spacer including:
a body including a first end and a second end (i.e., as shown in annotated figure 2 below); and
a channel (42) formed in the body (as shown in figure 2), the channel extending along the body from the first end to the second end, the channel at each of the first end and the second end having a complementary curvature configured to cooperate with the curved transitions of the U-bolt, thereby allowing the channel to receive the connecting portion and the curved transitions of the U-bolt (as shown in figures 1-2 | also, see column 2, line 60- column 3, line 56);
providing the U-bolt (as shown in figures 1-2); and
disposing the channel of the U-bolt spacer on the connecting portion of the U-bolt between the substantially parallel arms (as shown in figure 1).
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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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 12-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lie (US Patent Number 5,921,570; hereinafter “Lie”) in view of Marsh (US Patent Number 4,508,325; hereinafter “Marsh”).
In regard to claim 12, Lie discloses claim 1 above. Lie discloses: wherein the body further includes a bottom surface (i.e., surface contacting top surface of 21 — as shown in figures 1-2).
However, Lie is silent in regard to: wherein the body further includes a bottom surface having a groove.
Nonetheless, Marsh teaches a U-bolt assembly used in automative applications (i.e., axle beam — see at least column 1, lines 11-28 and column 4, lines 26-62), similar to that of Lie. Marsh teaches a spacer element (29) where the bottom surface of the element comprises a groove (i.e., which retains 27) that coupled to the additional elements there below, e.g., spring (20) — see column 4, lines 26-62 and figure 4.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the bottom surface of the spacer body, as taught by Lie, to include for a groove, as taught by Marsh, to allow for combining prior art elements according to known methods to yield predictable results of dampening means to the U-bolt assembly, as this is well-known in the automotive industry (column 1, lines 11-28 — Marsh). See MPEP 2143, section I, subsection A.
In regard to claim 13, in view of the modification, Lei further discloses: wherein the groove extends perpendicular to a longitudinal axis of the bottom surface (as taught by the modification of Lie in view of Marsh in the preceding claim).
In regard to claim 15, in view of the modification, Lei further discloses: wherein the groove (as taught by Marsh) is configured to cooperate (i.e., functionally and/or structurally engage) with a frame (i.e., “21” if Lie and “34” of Marsh) of a truck to form a passageway when the bottom surface contacts the frame of the truck (column 1, lines 7-16 and column 2, lines 29-43 of Lie).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lie (US Patent Number 5,921,570; hereinafter “Lie”) in view of White Mule Company (see at least https://web.archive.org/web/20210511005514/https://www.whitemuleco.com/saddles.html).
In regard to claim 19, Lie teaches the preceding claim. Lie teaches the U-bolt assembly to be used with truck axles and tightening one or more nuts (39) on the U-bolt (as shown in figures 1-2 | see also abstract, column 1, lines 7-16 and column 2, lines 29-43, and column 2, line 60- column 3, line 56).
However, Lie is silent in regard to: “[...] the U-bolt having the substantially parallel arms, [[a]]the connecting portion, and the curved transitions between the connecting portion and the substantially parallel arms, the method comprising: providing a saddle-mount having a base plate; disposing a saddle-mount on a frame of a truck; disposing the U-bolt around the frame of the truck and through the base plate of the saddle-mount; and securing the saddle-mount and the U-bolt spacer to the frame of the truck by tightening one or more nuts on the U-bolt.”
Nonetheless, White Mule Company teaches that U-bolt assemblies with spacer(s) (i.e., as shown in the annotated figure below) can be coupled to truck axles with a saddle-mount and base plate (see at least https://web.archive.org/web/20210511005514/https://www.whitemuleco.com/saddles.html and https://web.archive.org/web/20210511012454/https://www.whitemuleco.com/1inx24in_Hend_Axle_Detail.html).
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Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the U-bolt assembly, as taught by Lie, to be used with a saddle-mount & base plate, as taught by White Mule Company, as this a well-known method to connect U-bolt assemblies to various types of truck axles for mounting purposes (https://web.archive.org/web/20210511010713/https://whitemuleco.com/Saddle_Sizing.html).
Allowable Subject Matter
Claims 14 and 16-17 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references in the PTO-892 relate to U-bolt assemblies comprising spacer(s). Furthermore, the following relevant prior art references:
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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, Tara Schimpf can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NEEL GIRISH PATEL/ Primary Patent Examiner, Art Unit 3676
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