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 02/07/2025 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 1-2, 4, 8, 11-12, 14, and 16-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,256,511. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the patented claim encompasses the scope of the indicated claims as it is a single claim reciting each of the elements of the pending claims.
Claims 3, 5-7, 9-10, 13, 15 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 3, 5-7, 13, and 15, the claim of the patent encompasses the scope of the subject matter of claims 1-2, 4, 8, 11-12, 14, and 16-20 with the exception of the recitation of a securing part extending through a slit; a slot and threaded bolt; and a movable part extending away from another part along a first direction. However, Nelson teaches a securing part (Nelson: Fig. 1; 17) extending through a slit (Nelson: Fig. 1; 16); slots (Nelson: Fig. 1; 10, 11) that receive threaded bolts (Nelson: Fig. 1; 17); and a portion of a movable part (Nelson: Fig. 1; 12) extending away from another part along a first direction. 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 the securing part; slot and bolt connection; and extending portion of a movable part from Nelson, with a reasonable expectation of success, in order to provide adjustable portions having channeled cross sections that telescopically connect together and are securable to each other via registering slots and to a support member via slits as well as an element that can engage over side portions of a received device (Nelson: Col. 2, Ln. 18-35), thereby keeping the adjustable components properly aligned prior to tightening in a desired position as well as ensuring a device is properly secured.
In regards to claims 9-10, 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.
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.
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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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/Taylor Morris/Primary Examiner, Art Unit 3631
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