DETAILED ACTION
This Non-Final Office Action is in response to the above identified patent application filed on December 31, 2024. Claim 1 is pending and currently being examined.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,187,234 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,187,234 B2 and the instant patent application 19/006,921 BOTH set forth:
“A pivoting hitch device for a vehicle with a receiver hitch, the pivoting hitch device comprising:
a first support member (104) attached to a vehicle attachment device, the first support member configured to extend from the vehicle attachment device toward a side of the vehicle;
a second support member (106) pivotally attached by a hinge to the first support member near the side of the vehicle and extending therefrom toward the receiver drawbar (102), and substantially parallel to the first support member in a closed position, the second support member pivotable from the closed position to an open position that is substantially non-parallel to the first support member;
an equipment rack attachment device (110) attached to the second support member in proximity to the vehicle attachment device when the second support member is in the closed position;
a latch actuator (114) attached to the second support member in proximity to the equipment rack attachment device;
a latch bar (154) attached to the second support member in proximity to the hinge;
a latch member (144) attached to the first support member in proximity to the hinge, wherein the latch bar engages the latch member in a latched position; and
a biasing mechanism (166) that biases the latch bar toward the latched position.”
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.
Claim 1 is 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.
Claim 1 recites the limitation "the receiver drawbar" in Claim 1, line 5. There is insufficient antecedent basis for this limitation in the claim.
The term “substantially” in Claim 1, lines 5 & 7 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 1, lines 4 – 8 recites: “a second support member pivotally attached by a hinge to the first support member near the side of the vehicle and extending therefrom toward the receiver drawbar, and substantially parallel to the first support member in a closed position, the second support member pivotable from the closed position to an open position that is substantially non-parallel to the first support member;…”
The term “substantially” is a relative term that is UNCLEAR what is encompasses and how much of the second support member is required to have to pivot and extend toward the receiver drawbar in order to be considered “substantially” parallel to the first support member in the closed position.
In addition, the term “substantially” is a relative term that is UNCLEAR what is encompasses and how much of the second support member is required to have to be pivotable from the closed position to an open position in order to be considered “substantially” non-parallel to the first support member.
Claim 1, line 10 recites: “the vehicle attachment device”. However, Claim 1, line 9 sets forth: “an equipment rack attachment device”.
The phrase “the vehicle attachment device” renders the claim to be vague and indefinite because it is UNCLEAR to which aforementioned structure(s) is being encompassed with such language.
It is UNCLEAR if applicant is referring to the same “an equipment rack attachment device” as set forth in Claim 1, line 9 OR if applicant is referring to a different or separate structural element limitation (i.e. “the vehicle attachment device”).
Further clarification is required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESTER L VANTERPOOL whose telephone number is (571)272-8028. The examiner can normally be reached 8:30-5:00.
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, Nathan J. Newhouse can be reached at 571-272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.L.V/Examiner, Art Unit 3734
/NATHAN J NEWHOUSE/Supervisory Patent Examiner, Art Unit 3734
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