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 .
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 1-10 and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 16-19 of U.S. Patent No. 12194795. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, the claimed subject matter is also anticipated by claim 1 of US Patent 12194795, to include the hitch portion, the vertical member and the ball portion.
Regarding claims 2-10, the claimed subject matter has been anticipated by claims 2-20 in US Patent 12194795.
Regarding claims 16-19, the claimed subject matter has been anticipated by claims 11,12,16 and 17 of US Patent 12194795.
Regarding claim 20, the claimed subject matter has been anticipated by claims 18 and 19 of US Patent 12194795.
Claim Objections
Claim 2 objected to because of the following informalities: the phrase “the retention pin is oriented with an end thereof pin proximate…” should be replaced with “the retention pin is oriented with an end thereof proximate….” Appropriate correction is required.
Claim 15 is objected to because of the following informalities: the word “squar” in line 2 should be replaced with “square”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-9,13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weipert (US 8979112).
Regarding claim 1, Weipert discloses a ball mount (see figure 2), comprising:
a hitch portion (18) for interfacing with a hitch receiver (22) associated with a vehicle;
a vertical member (20) coupled to said hitch portion at a first end and operable to couple with a ball portion at a second end (see figure 2); and
a ball portion (see figure 2) comprising:
a support structure (14,16) having a side configured to couple with the vertical member and a socket (66, see figure 9) operable to receive a lower portion of a hitch ball (see figure 2 and 9);
a hitch ball (60) configured to couple with a tongue of a trailer, the hitch ball having a retention opening (opening where pin 72 is placed, see figure 9) operable to receive a retention pin (72); and the retention pin (72) engaging the support structure (16) and received within the retention opening of the hitch ball to capture the hitch ball in the socket and secure the hitch ball to the support structure (see figure 2 and 9).
Regarding claim 2, wherein the retention pin (72) is oriented with an end thereof pin proximate the vertical member such that the retention pin is hidden from view when the ball portion is coupled to the vertical member (see figure 2 as the retention pin is hidden under the hitch balls).
Regarding claim 3, wherein the retention pin (72) is easily accessible upon separating the ball portion (16) from the vertical member (20), when removing a second pin (44, see figure 2).
Regarding claims 4 and 5, wherein the retention pin (72) comprises a grasping feature (see pull ring on the pin 72 in figure 9) to facilitate removal of the pin.
Regarding claim 6, wherein the support structure (14) comprises a recess (64) configured to accommodate a head of the retention pin (see figures 2 and 8).
Regarding claim 7, wherein the height of the ball portion is adjustable with respect to the hitch portion (18) utilizing a height adjustment mechanism (see figure 2 and 13), the height adjustment mechanism comprising: a plurality of height adjustment openings (40) in the vertical member (20); at least two height adjustment pin openings in the ball portion (see figure 13 as there is two height adjustment pins on the ball portion 14); and at least two height adjustment pins removably extendable at least partially through the at least two height adjustment pin openings in the ball portion and the plurality of height adjustment openings in the vertical member (see figure 13).
Regarding claim 8, wherein at least two height adjustment pins are coupled to one another via a connecting member (under the broadest reasonable interpretation, the vertical member 20 can be seen as a connecting member connecting both pins when the pins are inserted into the ball portion and vertical member).
Regarding claim 9, wherein the retention opening (opening for the retention pin 72) is configured to facilitate vertical movement of the hitch ball in response to a downward force on the hitch ball (wherein the pin holds the hitch ball in place when the user is vertically moving the ball portion relative to the vertical member, by applying a downward force or an upward force to slide the ball portion relative to the vertical member).
Regarding claim 13, wherein the retention opening has a circular cross- sectional shape (see figures 2 and 9).
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.
Claim(s) 10-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Weipert (US 8979112).
Regarding claims 10,11 and 12, Wiepert only shows the retention opening on the sides of the ball portion. However, one of ordinary skill in the art would find it obvious to move the retention pin to middle portion of the hitch ball, a lateral external surface of the hitch ball or proximate a wall of the hitch ball, in order to provide a different design choice that may attract different types of users/buyers, as some users/buyers would prefer for the retention opening to be at different locations.
Regarding claims 14 and 15, Wiepert only shows that the retention opening is circular cross-sectional shape, however, one of ordinary skill in the art would find it obvious to modify the retention opening to be oval cross-sectional shape of square cross-sectional shape, in order to provide a different design choice that may differ from the traditional circular shape, as some users/buyers would prefer a different cross sectional shape for aesthetics.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marlon A Arce whose telephone number is (571)272-1341. The examiner can normally be reached 8AM - 4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at 571-272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARLON A ARCE/Examiner, Art Unit 3611 /VALENTIN NEACSU, Ph.D./Supervisory Patent Examiner, Art Unit 3611
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