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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,576,486 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are fully encompassed by claim 1-18 of the patent by broadening the subject matter of the claims.
Claim Objections
Claim 11 is objected to because of the following informalities: it appears “support” in line 12 should read --a support--. Appropriate correction is required.
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 8 and 11-16 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.
In regards to claims 8 and 14, “each square” lacks proper antecedent basis. Appropriate corrections are required.
In regards to claim 11, “said hook or peg” in line 14 lacks proper antecedent basis. Appropriate correction is required.
Claims 12, 13, 15 and 16 are rejected based on their respective dependencies.
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 1-9, 11-14, 17, 18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horton (US Pat. No. 2,769,553).
In regards to claim 1, Horton teaches a storage panel for mounting items using a plurality of brackets comprising: a planar mounting surface (32) having a longitudinal axis and a latitudinal axis; a means (35) for securing the panel to a wall or other substantially vertical surface; and an array of spaced apart mounting slots (38) extending through said mounting surface, wherein said array of mounting slots includes longitudinal mounting slots and latitudinal mounting slots; and wherein said longitudinal mounting slots are each arranged to be parallel to said longitudinal axis and said latitudinal mounting slots are each arranged to be parallel to said latitudinal axis (e.g.; see Fig. 1; Col 4, Lines 7-9; Col 8, Lines 15-20).
In regards to claim 2, Horton teaches the spacing between the longitudinal mounting slots is fixed and equal to the spacing between the latitudinal mounting slots (i.e.; as defined by the 1/2 inch sides; Col 4, Lines 7-9).
In regards to claim 3, Horton teaches said longitudinal mounting slots (38) are the same size as said latitudinal mounting slots (38).
In regards to claim 4, Horton teaches said longitudinal mounting slots (38) and said latitudinal mounting slots (38) form a grid pattern spanning the entire mounting surface (see Fig. 14).
In regards to claim 5, Horton teaches said longitudinal mounting slots are perpendicular to said latitudinal mounting slots (Col 8, Lines 15-20).
In regards to claim 6, Horton teaches said longitudinal mounting slots extend across substantially the entire length of the longitudinal axis of said mounting surface, and wherein said latitudinal mounting slots extend across substantially the entire length of the latitudinal axis of said mounting surface (see Fig. 14).
In regards to claim 7, Horton teaches one or more mounting openings (41) extending through said mounting surface.
In regards to claim 8, Horton teaches said longitudinal mounting slots and said latitudinal mounting slots form a grid pattern and the mounting openings are located in the center of each square formed within the grid (Col 4, Lines 29-35).
In regards to claim 9, Horton teaches said means for securing the panel includes one or more support flanges (35) extending from said mounting surface.
In regards to claim 11, Horton teaches a storage panel for mounting items using a plurality of brackets comprising: a planar mounting surface (32) having a longitudinal axis and a latitudinal axis; a means (35) for securing the panel to a wall or other substantially vertical surface; an array of spaced apart mounting slots (38) extending through said mounting surface, wherein said array of mounting slots includes longitudinal mounting slots and latitudinal mounting slots; wherein said longitudinal mounting slots are each arranged to be parallel to said longitudinal axis and said latitudinal mounting slots are each arranged to be parallel to said latitudinal axis (e.g.; see Fig. 1; Col 4, Lines 7-9; Col 8, Lines 15-20); and a plurality of brackets (e.g.; 64) each for insertion into one or more of said mounting slots, each bracket comprising: a bracket body (64) having support extending therefrom (65); and an attachment mechanism including an upper tab (66) and a lower tab (66) extending from said bracket body in a direction opposite of said hook or peg, wherein said upper tab and said lower tab are spaced apart so as to fit within two adjacent mounting slots.
In regards to claim 12, Horton teaches said longitudinal mounting slots are perpendicular to said latitudinal mounting slots (Col 8, Lines 15-20).
In regards to claim 13, Horton teaches one or more mounting openings (41) extending through said mounting surface.
In regards to claim 14, Horton teaches said longitudinal mounting slots and said latitudinal mounting slots form a grid pattern and the mounting openings are located in the center of each square formed within the grid (Col 4, Lines 29-35).
In regards to claim 17, Horton teaches a panel assembly comprising: a first panel including a mounting surface (32) and an array of spaced apart mounting slots (38) extending through said mounting surface, wherein said array includes a second column of mounting slots (39) positioned near an edge of said first panel and a first column of mounting slots (38) adjacent to said second column of mounting slots; a second panel including a mounting surface (32) and an array of mounting slots (38) defined through said mounting surface, wherein said array includes a third column (39) of mounting slots positioned near an edge of said second panel and a fourth column of mounting slots (38) adjacent to said third column of mounting slots; wherein said first panel is attachable to said second panel (Col 4, Lines 22-28); and wherein when said first panel is attached to said second panel, and as best understood with respect to the 112b rejection above, a distance between said second column of mounting slots and said third column of mounting slots is equal to a distance between said first column of mounting slots and said second column of mounting slots.
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 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).
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 10, 15, 16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Horton (US Pat. No. 2,769,553).
In regards to claims 10, 15 and 19, Horton is silent to the particular dimensions such that a distance between adjacent longitudinal mounting slots is 1 inch, and wherein a distance between adjacent latitudinal mounting slots is 1 inch (claim 10); the spacing between said upper tab and said lower tab is approximately 1 inch on center (claim 15); and the distance between said second column of mounting slots and said third column of mounting slots is approximately 1 inch (claim 19).
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 to have a distance between adjacent longitudinal mounting slots as 1 inch, and wherein a distance between adjacent latitudinal mounting slots is 1 inch (claim 10); the spacing between said upper tab and said lower tab is approximately 1 inch on center (claim 17); and the distance between said second column of mounting slots and said third column of mounting slots is approximately 1 inch (claim 21). 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 16, Horton does not particularly teach an attachment means for attaching one of said plurality of brackets to one of said mounting openings. However, Horton teaches the mounting openings are for the reception of pegs or other suitable indicating devices (Col 4, Lines 29-32), 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 include an attachment means for attaching one of said plurality of brackets to one of said mounting openings. The motivation would have been for the purpose of further securing the brackets.
Conclusion
Please see the PTO-892 for additional prior art related to the Applicant’s disclosure.
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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/Stanton L Krycinski/Primary Examiner, Art Unit 3631