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 .
Information Disclosure Statement
The information disclosure statement filed 01/03/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,207,729. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 of the instant application are generic or broader in scope to all that is recited in claims 1-16 of U.S. Patent No. 12,207,729. That is, claims 1-4 of the instant application are anticipated by claims 1-16 of U.S. Patent No. 12,207,729. Specifically, because claims 1-16 of U.S. Patent 12,207,729 includes all the limitations set forth in claims 1-4 of the instant application and further includes other features which are not claimed in this application therefore, claims 1-4 of the instant application are broader in scope than the claims 1-16 of U.S. Patent 12,207,729 and anticipated by U.S. Patent 12,207,729.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the second distance is less than the first distance” (claim 2) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The applicant’s original specification and drawings of both the current application #19/009825, and parent applications #18/420498 & #17/663178 do not have support for “the second teeth #52 of the rail #12 extending a second distance that is less than the first distance of the first teeth #54 or #54b or #54c. The examiner maintains that the applicant’s original specification and drawings of both the current application #19/009825, and parent applications #18/420498 & #17/663178 only has support for “the second teeth #52 of the rail #12 extending a second distance that is greater than the first distance of the first teeth #54 or #54b or #54c. For example claim 1 of US Patent No. 12,207,729 of the parent application (Application #18/420498) claims that the first distance of the first teeth of the front base is less than the second distance of the second teeth of the front wall of the rail. 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.
Claim 2 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.
Regarding claim 2, it is unclear and confusing from the applicant’s original specification and drawings of both the current application #19/009825, and parent applications #18/420498 & #17/663178 how the second teeth #52 of the rail #12 extending a second distance that is less than the first distance of the first teeth #54 or #54b or #54c. The examiner maintains that the applicant’s original specification and drawings of both the current application #19/009825, and parent applications #18/420498 & #17/663178 only has support for “the second teeth #52 of the rail #12 extending a second distance that is greater than the first distance of the first teeth #54 or #54b or #54c. For example claim 1 of US Patent No. 12,207,729 of the parent application (Application #18/420498) claims that the first distance of the first teeth of the front base is less than the second distance of the second teeth of the front wall of the rail. Appropriate correction is required.
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 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker 2016/0296038.
Regarding claim 1, Walker discloses a system comprising:
a base (Fig 2, #42 & #118) & (Fig 1, #64) extending along a first direction (front to rear direction) or (rear to front direction) defining a slot (Fig 2, #54) and a cavity (Figs 2 & 4B, #44) including an engagement mechanism (Figs 2 & 4B, #70) received within the cavity (Figs 2 & 4B, #44), the engagement mechanism (Figs 2 & 4B, #70) including (i) a resilient member (Figs 2 & 4B, #66), (ii) a front engagement element (Fig 2, #48) and (annotated Fig 4B below) disposed at a first end (front end) of the resilient member (Fig 4B, #66) defining a front surface (Fig 1, #64) including a plurality of first teeth (Figs 1 & 2, #62) extending a first distance from the front surface (Fig 1, #64), and (iii) a track (annotated Fig 2 below) (groove or channel of #56) disposed at a second end (rear end) of the resilient member (Fig 4B, #66) and aligned with the slot (Fig 2, #54);
and a rail (Fig 5, #20) including a front wall (Fig 5, #22) including a plurality of second teeth (Fig 5, #24) extending a second distance from the front wall (Fig 5, #22) and engaged with the first teeth (Fig 2, #62) of the base (Fig 2, #42 & #118) & (Fig 1, #64), a rear wall (Fig 5, #26) having a first portion received (annotated Fig 3A below) within the slot (Fig 2, #54) of the base and a second portion (annotated Fig 3A below) received within the track (annotated Fig 2 below) (groove or channel of #56) of the engagement mechanism (Figs 2 & 4B, #70) [0036], and a bottom wall (Fig 6, #26) cooperating with the front wall (Fig 5, #22) and the rear wall (Fig 5, #26) to define a channel (Fig 5, #28) extending in a second direction (vertical direction) or (left to right direction) and configured to receive the base (Fig 2, #42 & #118) & (Fig 1, #64).
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Regarding claim 3, Walker discloses the system wherein the each of the first teeth (Figs 1 & 2, #62) defines a first cross-sectional shape (shown in Fig 2) extending in the first direction (front to rear direction) or (rear to front direction), and wherein the each of the second teeth (Fig 5, #24) defines a second cross-sectional shape (shown in Fig 5), different than the first cross-sectional shape (as shown in Figs 2 & 5), extending in the first direction (vertical direction) or (left to right direction).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Walker 2016/0296038 in view of Shaw 6,332,547.
Regarding claim 2, as best understood, Walker discloses the system wherein at least one of the first teeth (Fig 2, #62) or the second teeth (Fig 5, #24) are configured to or capable of flexing when a force is applied to the base (Fig 2, #42 & #118) & (Fig 1, #64) in the second direction to allow the base (Fig 2, #42 & #118) & (Fig 1, #64) to translate in the second direction (vertical direction) or (left to right direction) along the rail (Fig 5, #20).
Walker has been discussed above but does not explicitly teach the system wherein the second distance is less than the first distance.
Shaw teaches that it is old and well known for a divider or base (Fig 9, #84) to comprise a wall (annotated Fig 9 below) and first teeth (Fig 9, #90) extending a first distance from the wall (annotated Fig 9 below); and a rail (Fig 7, #41) including a second teeth (Fig 7, #76) configured to selectively engage the first teeth (Fig 9, #90), the second teeth (Fig 7, #76) extending a second distance from the rail (Fig 7, #41); the second distance being greater than the first distance (as shown in Fig 7).
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It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the second teeth (Walker, Fig 5, #24) of Walker to be slightly longer than the first teeth (Walker, Fig 2, #62) of Walker using the teachings of Shaw (which teaches that it is old and well known in the art for a second tooth (Shaw, Fig 7, #76) of a rail (Shaw, Fig 7, #41) to be longer than a first tooth (Shaw, Figs 7 & 9, #90) of a base (Shaw, Fig 9, #84)) because such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Walker 2016/0296038 in view of Bhatt 2003/0029765.
Regarding claim 4, Walker has been discussed above but does not explicitly teach the system wherein the first teeth are formed from a first material having a first coefficient of friction, and the second teeth are formed from a second material having a second coefficient of friction different than the first coefficient of friction.
Bhatt teaches that it is old and well known for two matting parts (i.e. Fig 1, #102 & #104) to be made of a first and second material respectively having a first and second coefficient of friction respectively, wherein the second coefficient of friction different than the first coefficient of friction [0011].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fabricate the first teeth (Walker, Fig 1, #62) of Walker from a first material having a first coefficient of friction, and to fabricate the second teeth (Walker, Fig 5, #24) of Walker from a second material having a second coefficient of friction different than the first coefficient of friction using the teaches of Bhatt since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN K BARNETT whose telephone number is (571)270-1159. The examiner can normally be reached Monday-Friday 11am-7:30pm.
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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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/DEVIN K BARNETT/Primary Examiner, Art Unit 3631