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 .
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 12, 14-18 & 20-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gasser (US patent application publication 2010/0090571) in view of Stijns (US patent 6,231,143).
Regarding claim 1, Gasser discloses a telescopic rail comprising a first rail element (10), a second rail element (11), a third rail element (12), and a drive device (1); wherein the first rail element and the second rail element are mounted together such that the first rail element and the second rail element are linearly displaceable relative to one another in and counter to a pull-out direction; wherein the third rail element and the second rail element are mounted together such that the third rail element and the second rail element are linearly displaceable relative to one another in and counter to the pull-out direction; wherein the drive device is mounted on the first rail element or is mountable on a holding element connectable to the first rail element (Fig. 7a); wherein the drive device is configured such that, in an operation of the telescopic rail, the drive device causes a linear movement of the second rail element relative to the first rail element in or counter to the pull-out direction ([0021]); wherein the telescopic rail comprises a traction element (32); wherein the traction element is fixed to the first rail element and to the third rail element (via 34, 43); wherein the traction element is guided on the second rail element in a direction parallel to the pull-out direction such that a displacement movement of the second rail element relative to the first rail element leads to a displacement movement of the third rail element relative to the second rail element ([0021).
Gasser does not disclose the drive device is selected from a tooth belt drive, a rack-and-pinion drive or a combination thereof. Stijns teaches a toothed belt drive (125). As such, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to replace the drive of Gasser with a toothed belt drive of Stijins because this arrangement would have replaced one known drive with another known drive yielding a predictable result.
Regarding claim 2, Gasser, as modified, teaches a telescopic rail characterized in that the second rail element comprises a first guide element (31) having a first deflection surface (surface of 31) and a second guide element (31) having a second deflection surface (surface of 31), wherein the first guide element is configured such that a pulling force in the pull-out direction can be transmitted from the second rail element to the traction element by means of the first guide element, wherein the second guide element is configured such that a pulling force counter to the pull-out direction can be transmitted from the second rail element to the traction element by means of the second guide element, and wherein the traction element is deflected by the first and second deflection surfaces such that a displacement movement of the second rail element relative to the first rail element causes a transmission of a pulling force from the traction element to the third rail element in or counter to the pull-out direction ([0021]).
Regarding claim 3, Gasser, as modified, teaches a telescopic rail characterized in that at least the first guide element or the second guide element comprises a pair of oppositely disposed traction element guide surfaces (surfaces of 31) which face one another, wherein the traction element guide surfaces are configured such that they guide the traction element in a direction perpendicular to the pull-out direction (as they rotate around the pulley, they are perpendicular).
Regarding claim 12, Gasser, as modified, teaches a telescopic rail characterised in that the traction element is configured in two parts with a first traction element portion guided around the first guide element and a second traction element portion guided around the second guide element, wherein the first and the second traction element portion are respectively fixed on the first rail element and the third rail element (Fig. 3).
Regarding claim 14, Gasser, as modified, teaches a telescopic rail characterised in that the traction element is configured such that both pulling forces and pushing forces can be transmitted by means of the traction element, wherein the second rail element comprises a guide element (34, 43), wherein the guide element is configured such that a pulling force and a pushing force can be transmitted from the second rail element to the traction element by means of the guide element and wherein the traction element is deflected by the guide element such that both a pulling force acting on the traction element and a pushing force acting on the traction element causes a displacement movement of the third rail element in or counter to the pull-out direction relative to the second rail element ([0021]).
Regarding claim 15, Gasser, as modified, teaches a pull-out assembly comprising a holding element and a receiving element ([0015]), which can be moved relative to the holding element, and two telescopic rails which are disposed opposite to one another and with parallel pull-out directions according to claim 1, wherein the first rail element of each telescopic rail is connected to the holding element and the third rail element of each telescopic rail is connected to the receiving element.
Regarding claim 21, Gasser, as modified, teaches a pull-out assembly wherein the holding element is a carcass, and a receiving element is a drawer ([0015]).
Regarding claim 22, Gasser, as modified, teaches a pull-out assembly wherein the holding element is a drawer ([0015]).
Regarding claim 23, Gasser, as modified, teaches a pull-out assembly wherein the receiving element is a drawer ([0015]).
Regarding claim 16, Gasser discloses a telescopic rail comprising a first rail element (10), a second rail element (11), a third rail element (12), and a drive device (1); wherein the first rail element and the second rail element are mounted together such that the first rail element and the second rail element are linearly displaceable relative to one another in and counter to a pull-out direction; wherein the third rail element and the second rail element are mounted together such that the third rail element and the second rail element are linearly displaceable relative to one another in and counter to the pull-out direction; wherein the drive device is mounted on the first rail element or is mountable on a holding element connectable to the first rail element (Fig. 1); wherein the drive device is configured such that, in an operation of the telescopic rail, the drive device causes a linear movement of the second rail element relative to the first rail element in or counter to the pull-out direction ([0021]); wherein the telescopic rail comprises a traction element (32); wherein the traction element is fixed to the first rail element and to the third rail element (via 34, 43); wherein the traction element is guided on the second rail element in a direction parallel to the pull-out direction such that a displacement movement of the second rail element relative to the first rail element leads to a displacement movement of the third rail element relative to the second rail element ([0021]).
Gasser does not disclose the drive device is selected from a belt drive, a flat belt drive, a V-belt drive, or a combination thereof. Stijns teaches a toothed belt drive (125). As such, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to replace the drive of Gasser with a toothed belt drive of Stijins because this arrangement would have replaced one known drive with another known drive yielding a predictable result.
Regarding claim 17, Gasser, as modified, teaches a telescopic rail characterized in that the second rail element comprises a first guide element (31) having a first deflection surface (surface of 31) and a second guide element (31) having a second deflection surface (surface of 31), wherein the first guide element is configured such that a pulling force in the pull-out direction can be transmitted from the second rail element to the traction element by means of the first guide element ([0021]), wherein the second guide element is configured such that a pulling force counter to the pull-out direction can be transmitted from the second rail element to the traction element by means of the second guide element ([0021]), and wherein the traction element is deflected by the first and second deflection surfaces such that a displacement movement of the second rail element relative to the first rail element causes a transmission of a pulling force from the traction element to the third rail element in or counter to the pull-out direction ([0021]).
Regarding claim 18, Gasser, as modified, teaches a telescopic rail characterised in that at least the first guide element or the second guide element comprises a pair of oppositely disposed traction element guide surfaces (surfaces of 31) which face one another, wherein the traction element guide surfaces are configured such that they guide the traction element in a direction perpendicular to the pull-out direction.
Regarding claim 20, Gasser, as modified, teaches a pull-out assembly comprising a holding element, and a receiving element which can be moved relative to the holding element, and two telescopic rails which are disposed opposite to one another and with parallel pull-out directions according to claim 16, wherein the first rail element of each telescopic rail is connected to the holding element and the third rail element of each telescopic rail is connected to the receiving element ([0019]).
Regarding claim 24, Gasser, as modified, teaches a pull-out assembly wherein the holding element is a carcass, and a receiving element is a drawer ([0015]).
Regarding claim 25, Gasser, as modified, teaches a pull-out assembly wherein the receiving element is a drawer ([0015]).
Regarding claim 26, Gasser, as modified, teaches a pull-out assembly wherein the holding element is a carcass, and the receiving element is a drawer ([0015]).
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 1-7, 12, 14-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,290,171 Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite similar features such as telescopic rail comprising a first rail element, a second rail element, a third rail element, a drive device and a traction element.
Response to Arguments
Applicant's arguments filed 8/17/2026 have been fully considered but they are not persuasive.
Regarding the double patenting rejection, the Terminal Disclaimer filed 8/17/2026 was not approved thus the double patenting rejections remains.
Applicant’s arguments, filed 8/17/2026, with respect to the rejection(s) of claim(s) 1 & 16 under 102(a) have been fully considered and are persuasive because Gasser does not disclose the claimed drive device. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Gasser and Stijns.
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 DANIEL J ROHRHOFF whose telephone number is (571)270-7624. The examiner can normally be reached M-F 7:30-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dan Troy can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL J ROHRHOFF/Primary Examiner, Art Unit 3637
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