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 § 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 17-21 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In regards to claim 17, “the first length” in line 11 is indefinite because there is a first length defined for each of the first and second panels. It appears Applicant should recite --the first length of the array of mounting slots of the second panel-- in line 11. Appropriate correction is required.
Claims 18-21 are rejected based on their respective dependencies.
Claim Rejections - 35 USC § 102/103
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.
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 17-21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Horton (US Pat. No. 2,769,553).
Note: Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). The origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make obvious the claimed invention as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979).
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In regards to claim 17, Horton teaches a panel assembly comprising: a first panel (32, Fig. 1) including a mounting surface and an array of spaced apart mounting slots (38) extending through said mounting surface and each having a first length, wherein said array includes a second column of mounting slots (2; see annotation above) positioned near an edge (E) of said first panel and a first column of mounting slots (1) adjacent to said second column of mounting slots, wherein each mounting slot in the second column of mounting slots has a length equal to the first length (see identical lengths in figure above); a second panel (32) including a mounting surface and an array of mounting slots (38) defined through said mounting surface and each having a first length, wherein said array includes a third column of mounting slots (3) positioned near an edge (E) of said second panel and a fourth column of mounting slots (4) adjacent to said third column of mounting slots, wherein each mounting slot in the third column of mounting slots has a length equal to the first length (see identical lengths in figure above); wherein said first panel is attachable to said second panel (via 41, Fig. 3); and wherein when said first panel is attached to said second panel, a distance (d) between said second column of mounting slots and said third column of mounting slots is equal to a distance (d) between said first column of mounting slots and said second column of mounting slots. The annotated figure above illustrates when two panels (32) are attached side-by-side with cooperating half-slots (39) to make the indicating surface continuous (see description in Col 4, Lines 7-28).
In the alternative, since Horton teaches the panels are attached with cooperating half-slots (39), it would be obvious to one of ordinary skill in the art before the effective filing date and with reasonable expectation of success to have a distance between said second column of mounting slots and said third column of mounting slots being equal to a distance between said first column of mounting slots and said second column of mounting slots when said first panel is attached to said second panel. The motivation would be for the purpose of ensuring the indicating surface (and its associated slots) is formed continuous as taught by Horton (Col 4, Lines 7-28).
In regards to claim 18, Horton teaches said arrays of mounting slots (38) includes longitudinal mounting slots and latitudinal mounting slots; and wherein said longitudinal mounting slots are arranged to be substantially perpendicular to said latitudinal mounting slots (Col 8, Lines 15-20).
In regards to claim 19, Horton is silent to the particular dimensions such that the distance between said second column of mounting slots and said third column of mounting slots is approximately 1 inch.
However, Horton teaches example dimensions of the squares defined by the slots 38 may have 1/2 inch sides (Col 4, Lines 7-10), and it would have been obvious to one of ordinary skill in the art before the effective filing date and with reasonable expectation of success to dimension Horton’s panel assembly such that the distance between said second column of mounting slots and said third column of mounting slots is approximately 1 inch. Such a modification would involve routine skill of a worker in the art with a motivation for the purpose of sizing the panel assembly as desired, and it would have been recognized that Horton’s example dimensions are not exhaustive.
In regards to claim 20, Horton teaches said first panel includes a support flange (33) extending from the mounting surface of said first panel and wherein said second panel includes a support flange (33) extending from the mounting surface of said second panel; and wherein said support flange of said first panel connects to said support flange of said second panel to attach said first panel to said second panel (Col 4, Lines 22-28).
In regards to claim 21, Horton teaches said arrays of mounting slots (38) do not include any mounting slots which are located on both said first panel and said second panel. Note slots 39 are sperate from the array of slots 38.
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 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-18 of U.S. Patent No. 11,576,486 in view of Horton (US Pat. No. 2,769,553). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 17-21 of the instant application are encompassed by claims 15-18 of the patent by broadening the subject matter of the claims. In addition, Horton teaches arrays of mounting slots having equal lengths, and when said first panel is attached to said second panel, a distance (d) between said second column of mounting slots and said third column of mounting slots is equal to a distance (d) between said first column of mounting slots and said second column of mounting slots; and said arrays of mounting slots (38) do not include any mounting slots which are located on both said first panel and said second panel as discussed above. Such modifications would be obvious to one of ordinary skill in the art before the effective filing date with the motivation being for the purpose of ensuring the indicating surface (and its associated slots) is formed continuous as taught by Horton (Col 4, Lines 7-28).
NOTE: The Terminal Disclaimer filed 29 April 2026 was disapproved in the Office correspondence dated 05 Mar 2026.
Response to Arguments
Applicant's arguments filed 29 April 2026 have been fully considered but they are not persuasive. Applicant’s arguments are directed to the newly added limitations in claim 17. Examiner disagrees with Applicant’s arguments based on the interpretation of Horton as discussed in the rejections of claims 17-21 above.
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 STANTON L KRYCINSKI whose telephone number is (571)270-5381. The examiner can normally be reached Monday-Friday, 10:00AM-5:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached at (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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/Stanton L Krycinski/Primary Examiner, Art Unit 3631
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