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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12167804. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 are encompassed by and anticipated by the referenced patent.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Regarding claims 13, line 3, “the rail” lacks proper antecedent basis. It appears applicant means “the first rail”. Same issue is found in claim 14, line 1, where “the rail” should be “the first rail” and claim 15, line 2 regarding “the rail”.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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Claims 1-4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hurley (US Publication no. 20220347833). Hurley discloses a storage rail assembly (figure 4) comprising: a first rail (C, see illustration above) extending from a left end to a right end along a first longitudinal axis, the first rail configured to be coupled to a wall (via ears 40, figure 4) ; a first left end cap (L, see illustration above) coupled to the left end of the rail, the left end cap including a concave pocket (54) extending inwardly from a left face (LF) of the first left end cap and having a pocket contact surface (S); and a right end cap (R, see markup above) coupled to the right end of the rail, the right end cap including a projection (52 of R, figure 4) extending outwardly from a right face of the right end cap, wherein the projection (52) is configured to be received in a pocket of a second left end cap (such as L2 in markup above) to form a horizontal rail assembly.
Regarding claim 2, Hurley discloses the storage rail assembly of claim 1, wherein the projection (52 of R above) has a projection contact surface, wherein the projection contact surface is configured to align with a pocket contact surface (54) of the pocket of the second left end cap (L2).
Regarding claim 3, Hurley discloses the storage rail assembly of claim 1, wherein the second left end cap and the right end cap ( R, above) each comprise a wall surface (32) configured to be disposed adjacent to the wall and an outer surface (O) parallel to the respective wall surface (32), wherein when the projection (52) is received within the pocket (54) of the second left end cap (L2), the outer surface of the second left end cap and the outer surface of the right end cap are configured to be coplanar.
Regarding claim 4, Hurley discloses the storage rail assembly of claim 3, wherein the projection (52) is adjacent to the wall surface (32) of the right end cap, and the pocket (54) of the second left end cap (L2) is adjacent to the wall surface (32) of the second left end cap (L2).
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Claims 1-4 and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Roten (US Patent no. 7185770). Roten discloses a storage rail assembly (figure 4) comprising: a first rail (C, see illustration above) extending from a left end to a right end along a first longitudinal axis, the first rail configured to be coupled to a wall (via fasteners through hole 64, figure 7 and hole 74 , figure 10) ; a first left end cap (L, see illustration above) coupled to the left end of the rail, the left end cap including a concave pocket (24, FIGURE 4) extending inwardly from a left face (LF) of the first left end cap and having a pocket contact surface (46, FIGURE 4); and a right end cap (R, see markup above) coupled to the right end of the rail, the right end cap including a projection (26 of R, figure 4) extending outwardly from a right face of the right end cap, wherein the projection (26) is configured to be received in a pocket (24) of a second left end cap (such as L2 in markup above) to form a horizontal rail assembly.
Regarding claim 2, Roten discloses the storage rail assembly of claim 1, wherein the projection (26 of R above) has a projection contact surface, wherein the projection contact surface is configured to align with a pocket contact surface (46, FIGURE 4) of the pocket of the second left end cap (L2).
Regarding claim 3, Roten discloses the storage rail assembly of claim 1, wherein the second left end cap and the right end cap ( R, above) each comprise a wall surface (36, FIGURE 4) configured to be disposed adjacent to the wall and an outer surface (34, FIGURE 4) parallel to the respective wall surface (36), wherein when the projection (26) is received within the pocket (24) of the second left end cap (L2), the outer surface of the second left end cap and the outer surface of the right end cap are configured to be coplanar.
Regarding claim 4, Roten discloses the storage rail assembly of claim 3, wherein the projection (26, FIGURE 4) is adjacent to the wall surface (36) of the right end cap, and the pocket (24) of the second left end cap (L2) is adjacent to the wall surface (36) of the second left end cap (L2).
Regarding claim 15, Roten discloses the storage rail assembly of claim 1, wherein the first left end cap (L, see markup above) comprises a protective cover (14) for the left open end of the rail.
Claims 11-12 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.
Claims 13-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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. Cited prior art of record further demonstrate rails with end caps.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ko (Korie) H Chan whose telephone number is (571)272-6816. The examiner can normally be reached on Monday -Friday, 8:00 - 5:00 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached on 571-272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ko H Chan/Primary Examiner, Art Unit 3631
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