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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-8, 11-12, and 14-18 of U.S. Patent No. 11,807,089 in view of Maimin et al. (US Pat 7,537,264).
Regarding claim 1, Dylewski II, et al. disclose at least one clamp assembly configured to be clampable to at least one longitudinally extending rail; wherein the at least one clamp assembly includes: a clamp mount; a clamp back located opposite the clamp mount to form a space located therebetween; and at least one shim located in the space between the clamp mount and the clamp back; wherein the at least one shim includes an opening located at a side of the at least one shim (see claims 1 and 11).
Dylewski II, et al. fail to disclose a tonneau cover assembly that selectively covers a cargo box of a truck, the tonneau cover assembly comprising: a cover; at least one longitudinally extending rail configured to be located adjacent a sidewall of the cargo box and the cover.
Maimin et al. disclose a tonneau cover assembly 20 that selectively covers a cargo box 34 of a truck 30, the tonneau cover assembly 20 comprising: a cover 100; at least one longitudinally extending rail 60 configured to be located adjacent a sidewall 50 of the cargo box 34 and the cover 100 (see Figures 1-5; Col. 2, lines 39-56); at least one clamp assembly 90 configured to be clampable to at least one longitudinally extending rail 60 (see Figures 1-5; Col. 2, lines 50-56); wherein the at least one clamp 90 assembly includes: a clamp mount 94; a clamp back 92 located opposite the clamp mount 94 to form a space located therebetween (see Figures 4-5; Col. 3, lines 21-34).
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to use the clamp assembly of Dylewski, II et al. with a tonneau cover assembly having a cover and at least one longitudinally extending rail configured to be located adjacent a sidewall of a cargo box of a truck and the cover, with a reasonable expectation of success, as taught by Maimin et al., to provide a simple and adjustable means of attaching the side rail and cover to the sidewall without damaging or modifying the sidewall.
Regarding claim 2, Dylewski, II et al., as modified by Maimin et al., disclose the tonneau cover assembly of claim 1, wherein the at least one clamp assembly further includes a clamp fastener extended through the space between the clamp mount and the clamp back (see claims 1 and 11).
Regarding claim 3, Dylewski, II et al., as modified by Maimin et al., disclose the tonneau cover assembly of claim 2, wherein the clamp fastener couples the clamp mount to the clamp back (see claim 1).
Regarding claim 4, Dylewski, II et al., as modified by Maimin et al., disclose the tonneau cover assembly of claim 2, wherein the clamp fastener extends through a slot in the at least one shim (see claims 1 and 11).
Regarding claim 5, Dylewski, II et al. as modified by Maimin et al., disclose the tonneau cover assembly of claim 2, wherein the at least one clamp assembly includes a cut out disposed through the at least one shim and extends from a slot (see claims 2 and 12).
Regarding claim 6, Dylewski, II et al., as modified by Maimin et al., disclose the tonneau cover assembly of claim 1, further comprising a second shim, wherein the second shim includes an opening located at a side and extends to a slot in the second shim, wherein the second shim is located adjacent the at least one shim between the clamp mount and the clamp back (see claims 4 and 14).
Regarding claim 7, Dylewski, II et al., as modified by Maimin et al., disclose the tonneau cover assembly of Claim 6, wherein the at least one shim has a first thickness and the second shim has a second thickness, wherein the first thickness is different than the second thickness (see claims 5 and 15).
Regarding claim 8, Dylewski, II et al., as modified by Maimin et al., disclose the tonneau cover assembly of claim 7, wherein the first thickness of the at least one shim is greater than the second thickness of the second shim (see claims 6 and 16).
Regarding claim 9, Dylewski, II et al., as modified by Maimin et al., disclose the tonneau cover assembly of claim 7, wherein the first thickness of the at least one shim is less than the second thickness of the second shim (see claims 7 and 17).
Regarding claim 10, Dylewski, II et al., as modified by Maimin et al., disclose the tonneau cover assembly of claim 1, further comprising a plurality of shims, wherein each of the plurality of shims includes an opening located at a side and extends to a slot disposed through the each of the plurality of shims, wherein the plurality of shims is located between the clamp mount and the clamp back (see claims 8 and 18).
Regarding claim 11, Dylewski et al., as modified by Maimin et al., disclose the tonneau cover assembly of claim 1, wherein at least a portion of the at least one shim is configured to fit between flanges of the sidewall of the cargo box (see claim 1).
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.
Claims 1-3, 11, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wheatley (US Pat 6,811,203).
Regarding claim 1, Wheatley discloses a tonneau cover assembly that selectively covers a cargo box of a truck, the tonneau cover assembly comprising: a cover 22; at least one longitudinally extending rail 30 configured to be located adjacent a sidewall 18 of the cargo box 12 and the cover 22 (see Figure 1; Col. 3, lines 2-20); at least one clamp assembly configured to be clampable to the at least one longitudinally extending rail 30 (see Figure 2; Col. 3, lines 21-37); wherein the at least one clamp assembly includes: a clamp mount 40; a clamp back 42 located opposite the clamp mount 40 to form a space located therebetween (see Figure 2; Col. 3, lines 34-44; Col. 4, lines 24-36); and at least one shim 56 located in the space between the clamp mount 40 and the clamp back 42 (see Figure 2; Col. 3, lines 54-64); wherein the at least one shim 56 includes an opening 72 located at a side of the at least one shim 56 (see Figure 2; Col. 4, lines 24-36).
Regarding claim 2, Wheatley discloses the tonneau cover assembly of claim 1, wherein the at least one clamp assembly further includes a clamp fastener 74 extended through the space between the clamp mount 40 and the clamp back 42 (see Figure 2; Col. 4, lines 24-36, 56-58).
Regarding claim 3, Wheatley discloses the tonneau cover assembly of claim 2, wherein the clamp fastener 74 couples the clamp mount 40 to the clamp back 42 (see Figure 2; Col. 4, lines 56-64).
Regarding claim 11, Wheatley discloses the tonneau cover assembly of claim 1, wherein at least a portion of the at least one shim 56 is configured to fit between flanges 36 of the sidewall 18 of the cargo box 12 (see Figure 2; Col. 3, lines 21-33, 54-64).
Regarding claim 20, Wheatley discloses a clamp bracket assembly for use on a tonneau cover assembly located on a cargo box of a pickup truck, the clamp bracket assembly comprising: a bracket member 44 configured to extend from a sidewall 34 of the cargo box 12 (see Figure 2; Col. 3, lines 21-53); and a clamp assembly 40; wherein the bracket member 44 extends to the clamp assembly 40 and attaches to the clamp assembly 40 to limit movement of the clamp assembly (see Figure 2; Col. 4, lines 9-36).
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boulard (US Pat 7,407,141).
Regarding claim 1, Boulard discloses a tonneau cover assembly that selectively covers a cargo box of a truck, the tonneau cover assembly comprising: a cover 78; at least one longitudinally extending rail 62 configured to be located adjacent a sidewall of the cargo box and the cover 78 (see Figures 6 and 12; Col. 5, lines 3-16); at least one clamp assembly 10 configured to be clampable to the at least one longitudinally extending rail 62 (see Figure 12; Col. 5, lines 3-16); wherein the at least one clamp assembly 10 includes: a clamp mount 12; a clamp back 16 located opposite the clamp mount 12 to form a space located therebetween (see Figures 1-4 and 12; Col. 4, lines 3-23); and at least one shim 14 located in the space between the clamp mount 12 and the clamp back 16; wherein the at least one shim 14 includes an opening 44 located at a side of the at least one shim 14 (see Figures 1, 5 and 12; Col. 4, lines 24-45).
Regarding claim 2, Boulard discloses the tonneau cover assembly of claim 1, wherein the at least one clamp assembly 10 further includes a clamp fastener 30 extended through the space between the clamp mount 12 and the clamp back 16 (see Figures 1 and 12; Col. 4, lines 3-23).
Regarding claim 3, Boulard discloses the tonneau cover assembly of claim 2, wherein the clamp fastener 30 couples the clamp mount 12 to the clamp back 16 (see Figures 1 and 12; Col. 4, lines 3-23).
Regarding claim 4, Boulard discloses the tonneau cover assembly of claim 2, wherein the clamp fastener 30 extends through a slot 44 in the at least one shim 14 (see Figures 1 and 12; Col. 4, lines 63-67).
Regarding claim 5, Boulard discloses the tonneau cover assembly of claim 2, wherein the at least one clamp assembly 10 includes a cut out 44 disposed through the at least one shim 14 and extends from a slot (see Figures 1 and 5; Col. 4, lines 24-45).
Regarding claim 6, Boulard discloses the tonneau cover assembly of claim 1, further comprising a second shim 14, wherein the second shim 14 includes an opening 44 located at a side and extends to a slot in the second shim 14, wherein the second shim 14 is located adjacent the at least one shim 14 between the clamp mount 12 and the clamp back 16 (see Figures 1 and 12; Col. 4, lines 24-45).
Regarding claim 7, Boulard discloses the tonneau cover assembly of claim 6, wherein the at least one shim 14 has a first thickness and the second shim 14 has a second thickness, wherein the first thickness is different than the second thickness (see Figure 12; Col. 4, lines 24-27).
Regarding claim 8, Boulard discloses the tonneau cover assembly of claim 7, wherein the first thickness of the at least one shim 14 is greater than the second thickness of the second shim 14 (see Figure 12; Col. 4, lines 24-27).
Regarding claim 9, Boulard discloses the tonneau cover assembly of claim 7, wherein the first thickness of the at least one shim 14 is less than the second thickness of the second shim 14 (see Figure 12; Col. 4, lines 24-27).
Regarding claim 10, Boulard discloses the tonneau cover assembly of claim 1, further comprising a plurality of shims 14, wherein each of the plurality of shims 14 includes an opening 44 located at a side and extends to a slot disposed through the each of the plurality of shims 14, wherein the plurality of shims 14 is located between the clamp mount 12 and the clamp back 16 (see Figures 1 and 12; Col. 4, lines 24-55).
Regarding claim 11, Boulard discloses the tonneau cover assembly of claim 1, wherein at least a portion of the at least one shim 14 is configured to fit between flanges of the sidewall 106 of the cargo box 82 (see Figures 6 and 12; Col. 5, lines 3-36).
Claims 12-13, 16-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Facchinello et al. (US Pat 10,406,900).
Regarding claim 12, Facchinello et al. disclose a clamp bracket assembly for use on a tonneau cover assembly located on a cargo box of a pickup truck, the clamp bracket assembly comprising: a bracket member 50 configured to extend from a sidewall surface 32 of the cargo box 14 (see Figure 1; Col. 3, lines 37-54); a clamp assembly which includes a clamp mount 72, and a clamp back 90 (see Figure 2A; Col. 4, lines 3-29); wherein the bracket member 50 extends to a clamp base of the clamp mount 72 and attaches to an underside of the clamp base to limit movement of the clamp assembly (see Figure 2A and annotated Figure 2A below; Col. 3, lines 55-67); and an adjustment screw 80 disposed through the bracket member 50 and into the clamp base of the clamp mount 72 (see Figure 2A and annotated Figure 2A below; Col. 4, lines 3-14).
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Regarding claim 13, Facchinello et al. disclose the clamp bracket assembly of claim 12, wherein the clamp assembly is configured to clamp onto a rail 30, and wherein the clamp assembly is configured not to pivot about an axis with respect to the rail 30 (see Figure 2A; Col. 3, lines 37-54).
Regarding claim 16, Facchinello et al. disclose the clamp bracket assembly of claim 12, wherein the adjustment screw 80 extends through a nut 82 which assists to secure the bracket member 50 to the clamp base of the clamp mount 72 (see Figure 2A; Col. 4, lines 3-14).
Regarding claim 17, Facchinello et al. disclose the clamp bracket assembly of claim 12, wherein the adjustment screw 80 abuts the clamp back 90 (see Figure 2A; Col. 4, lines 15-23).
Regarding claim 18, Facchinello et al. disclose the clamp bracket assembly of claim 13, further comprising a plurality of clamp bracket assemblies, wherein each clamp assembly of the plurality of clamp bracket assemblies is configured to clamp onto the rail 30 at separate locations along the rail 30 (see Figure 1; Col. 4, lines 44-48).
Regarding claim 20, Facchinello et al. disclose a clamp bracket assembly for use on a tonneau cover assembly located on a cargo box of a pickup truck, the clamp bracket assembly comprising: a bracket member 50 configured to extend from a sidewall 32 of the cargo box 14 (see Figure 1; Col. 3, lines 24-54); and a clamp assembly 90; wherein the bracket member 50 extends to the clamp assembly 90 and attaches to the clamp assembly 90 to limit movement of the clamp assembly 90 (see Figures 1-2B; Col. 3, line 55-Col. 4, line 23).
Claims 12, 15, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Voegele et al. (US Pat 10,746,209).
Regarding claim 12, Voegele et al. disclose a clamp bracket assembly for use on a tonneau cover assembly located on a cargo box of a pickup truck, the clamp bracket assembly 30 comprising: a bracket member 40 configured to extend from a sidewall surface of the cargo box 152 (see Figures 2-3; Col. 13, lines ; a clamp assembly 60 which includes a clamp mount 62, and a clamp back 70 (see Figures 2-3; Col. 13, lines 19-30); wherein the bracket member 40 extends to a clamp base of the clamp mount 62 and attaches to an underside of the clamp base to limit movement of the clamp assembly 60 (see Figures 2-3; Col. 13, lines 1-7, 16-19, 28-36); and an adjustment screw 64 disposed through the bracket member 40 and into the clamp base of the clamp mount 62 (see Figures 2-3; Col. ). The bracket member 40 extends from the sidewall surface by the support arm 80 (see Figures 2-3; Col. 13, lines 1-7, 30-36).
Regarding claim 15, Voegele et al. disclose the clamp bracket assembly of claim 12, wherein the clamp back 70 secures to the clamp mount 62 by a clamp fastener 64 extending through both the clamp back 70 and the clamp mount 62 (see Figures 2-4; Col. 13, lines 37-42).
Regarding claim 19, Voegele et al. disclose the clamp bracket assembly of claim 12, wherein a portion 50 of the bracket member 40 is bent transversely with respect to the bracket member 40 and configured to receive a fastener 80 to secure the bracket member 40 to a sidewall 154 of the cargo box 152 (see Figures 2-3 and 6A-6B; Col. 12, line 60-Col. 13, line 7; Col. 13, lines 51-58).
Regarding claim 20, Voegele et al. disclose a clamp bracket assembly for use on a tonneau cover assembly located on a cargo box of a pickup truck, the clamp bracket assembly comprising: a bracket member 40 configured to extend from a sidewall of the cargo box 152; and a clamp assembly 60; wherein the bracket member 40 extends to the clamp assembly 60 and attaches to the clamp assembly 60 to limit movement of the clamp assembly 60 (see Figures 2-3; Col. 13, lines 8-36).
Allowable Subject Matter
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 14 recites a clamp bracket assembly for use on a tonneau cover assembly located on a cargo box of a pickup truck, the clamp bracket assembly comprising: a bracket member configured to extend from a sidewall surface of the cargo box; a clamp assembly which includes a clamp mount, and a clamp back; wherein the bracket member extends to a clamp base of the clamp mount and attaches to an underside of the clamp base to limit movement of the clamp assembly; and an adjustment screw disposed through the bracket member and into the clamp base of the clamp mount. The bracket member is configured to be attached to a sidewall of the cargo box by a fastener disposed through the bracket member and the sidewall of the cargo box. Facchinello et al. (US Pat 10,406,900) disclose a clamp bracket assembly having a bracket member, a clamp assembly including a clamp mount and a clamp back, and an adjustment screw disposed through the bracket member and a clamp base of the clamp mount; however, Facchinello et al. fail to disclose the bracket member is attached to a sidewall of a cargo box by a fastener disposed through the bracket member and the sidewall. Voegele et al. (US Pat 10,746,209) disclose a clamp bracket assembly having a bracket member, a clamp assembly including a clamp mount and a clamp back, and an adjustment screw disposed through the bracket member and a base of the clamp mount; however, Voegele et al. fail to disclose a fastener is disposed through the bracket member and a sidewall of a cargo box. Facchinello (US PG Pub 2020/0384838) discloses a clamp bracket assembly having a bracket member, a clamp mount, a clamp back, and a fastener disposed through the bracket member and a sidewall of a cargo box; however, Facchinello fail to disclose an adjustment screw disposed through the bracket member and into a clamp base of the clamp mount. Boulard (US Pat 7,407,141) disclose a clamp bracket assembly having a bracket member, a clamp assembly with a clamp mount and a clamp back, and an adjustment screw; however, Boulard fails to disclose that adjustment screw is disposed through the bracket member or a fastener disposed through the bracket member and a sidewall of a cargo box. Isaksson et al. (WO 2008/076070) disclose a clamp assembly, a bracket member, and a shim; however, Isaksson et al. fail to disclose a fastener extending through the bracket member and a sidewall of a cargo box. Shi et al. (US Pat 11,148,512) disclose a clamp bracket assembly having a bracket member, a clamp assembly, and a few fasteners; however, Shi et al. fail to disclose the fasteners extend through a sidewall of a cargo box. The prior art does not properly teach or suggest the recited configuration, making claim 14 allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dylewski, II (US Pat 12,533,935) discloses a clamp assembly having a clamp mount, a clamp back, and a clamp fastener. Talbert et al. (US Pat 12,570,130) disclose a tonneau cover assembly having a clamp assembly with a clamp mount, a clamp back, and a clamp fastener. Dylewski, II et al. (US Pat 11,084,361) disclose a tonneau cover assembly having a side rail, a clamp assembly, and a shim. Fu et al. (US Pat 11,007,856) disclose a tonneau cover assembly having a clamp assembly with a clamp mount, a clamp back, a clamp fastener, and an adjustment screw. Facchinello et al. (US Pat 9,533,555) disclose a tonneau cover assembly having a clamp assembly with a clamp mount, a clamp back, and a clamp fastener. Luo et al. (US Pat 10,994,648) disclose a tonneau cover assembly having a bracket member and a clamp assembly with a clamp mount, a clamp back, and a clamp fastener. Xu (US Pat 11,186,151) discloses a tonneau cover assembly having a bracket member and a clamp assembly with a clamp mount, a clamp back, and a clamp fastener. Spencer et al. (US Pat 7,604,282) disclose a tonneau cover assembly having a bracket member and a clamp assembly with a clamp mount, a clamp back, and a clamp fastener. Derecktor (US Pat 6,547,311) discloses a tonneau cover assembly having a bracket member and a clamp assembly with a clamp mount, a clamp back, and a clamp fastener. Love (US Pat 5,765,902) discloses a clamp assembly having a clamp mount, a clamp back, a clamp fastener, and a shim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VERONICA M CONDO whose telephone number is (571)272-9415. The examiner can normally be reached Mon-Fri 8am-3pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Weisberg can be reached at (571) 270-5500. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VERONICA M CONDO/ Examiner, Art Unit 3612
/AMY R WEISBERG/ Supervisory Patent Examiner, Art Unit 3612
