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 .
Status of the Application
Claims 1-20 are pending and have been examined in this application. This communication is the first action on the merits. As of the date of this application, the Information Disclosure Statement(s) (IDS) filed on 01/16/2025 and 02/05/2025 has/have been taken into account.
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 claim 1 of U.S. Patent No. 12,256,511 in view of Nelson et al. (US 2,541,434) and Fosburg et al. (US 7,845,501).
In regards to claims 1-10 and 13-20, the claim of the patent encompasses the scope of the subject matter of claims 1-10 and 13-20 with the exception of the recitation of bent ends on its holding and fixed parts; as well as a slot and threaded bolt. However, Nelson teaches parts (Nelson: Fig. 1; 8, 9) having surfaces with bent ends as well as slots (Nelson: Fig. 1; 10, 11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surfaces in the patent with these bent ends and slot and bolt connection, with a reasonable expectation of success, in order to provide adjustable portions having channeled cross sections that telescopically connect together and are securable via registering slots (Nelson: Col. 2, Ln. 18-35), thereby keeping the adjustable components properly aligned prior to tightening in a desired position.
In regards to claims 11-12, the claim of the patent fails to recite mounting openings or slots along each edge, however Fosburg teaches mounting openings/slots (Fosburg: Fig. 1; 17, 19, 21, 23) along edges of a mounting plate. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent with the openings/slots from Fosburg, with a reasonable expectation of success, in order to provide a means of mounting the plate to a structure that allow some adjustment of the plate (Fosburg: Col. 2, Ln. 50-60), thereby increasing the utility of the assembly.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/047,819 in view of Nelson et al. (US 2,541,434).
In regards to claims 1-20, the claim of the patent encompasses the scope of the subject matter of claims 1-10 and 13-20 with the exception of the recitation of bent ends on its holding and fixed parts. However, Nelson teaches parts (Nelson: Fig. 1; 8, 9) having surfaces with bent ends and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surfaces in the patent with these bent ends, with a reasonable expectation of success, in order to provide adjustable portions having channeled cross sections that telescopically connect together and are securable via registering slots (Nelson: Col. 2, Ln. 18-35), thereby keeping the adjustable components properly aligned prior to tightening in a desired position.
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Taylor Morris whose telephone number is (571)272-6367. The examiner can normally be reached M-F: 10AM-6PM PST / 1PM-9PM EST.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Taylor Morris/Primary Examiner, Art Unit 3631
Prosecution Insights