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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a coupling element, classified in F16B5/0685.
II. Claims 11-14, drawn to a couplable baffle, classified in E04B1/8227.
III. Claims 15-19, drawn to a baffle coupling system, classified in E04B9/242.
IV. Claim 20, drawn to a method for installing a baffle coupling system, classified in E04B2001/8263.
The inventions are independent or distinct, each from the other because:
Inventions I-III are related as two different combinations and a subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combinations as claimed do not require the particulars of the subcombination as claimed because they at least do not require structural elements such as the upper and lower contact surfaces. The subcombination has separate utility such as being a coupling element for a system of non-baffle elements.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Inventions I-III and IV are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the process can be practiced with another materially different product (e.g. one without the contact surfaces and channels required by the product) and/or as the product as claimed can be used in a materially different process of using that product (e.g. coupling a non-baffle element), etc.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification (see above)
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes /subclasses (see above) or electronic resources, or employing different search strategies or search queries) (e.g. searching for coupling elements that cannot couple baffles would not be required for Inventions II-IV, searching for specific method of installation would not be required for Inventions I-III, searching for a strut/track type mounting system would only be required for Invention III, etc.).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Andrew Macdonald on 04 September 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 and 5-10 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tinwala et al. (US 11,519,170).
With regard to claim 1, Tinwala discloses a coupling element (either 700 or the combination of 500, 600, and 700) comprising: a first upper contact surface (as labeled in Examiner annotated Fig. 4 below, which Examiner notes can be considered a upper or lower surface as it is lower with respect to other surfaces with certain frames of reference and as Applicant has not defined/claimed any directions. Alternatively the portion labeled “first lower contact surface” can also be interpreted as such) and a second upper contact surface (as labeled in Examiner annotated Fig. 4 below, which Examiner notes can be considered a upper or lower surface as it is lower with respect to other surfaces with certain frames of reference and as Applicant has not defined/claimed any directions. Alternatively the portion labeled “second lower contact surface” can also be interpreted as such); a first lower contact surface (as labeled in Examiner annotated Fig. 4 below, which Examiner notes can be considered a upper or lower surface as it is lower with respect to other surfaces with certain frames of reference and as Applicant has not defined/claimed any directions. Alternatively the portion labeled “first upper contact surface” can also be interpreted as such) and a second lower contact surface (as labeled in Examiner annotated Fig. 4 below, which Examiner notes can be considered a upper or lower surface as it is lower with respect to other surfaces with certain frames of reference and as Applicant has not defined/claimed any directions. Alternatively the portion labeled “second upper contact surface” can also be interpreted as such); and a receiving slot (as labeled in Examiner annotated Fig. 4 below) defined by a first arm (as labeled in Examiner annotated Fig. 4 below) having a first aperture (i.e. the aperture receiving fastener 712a) and a second arm (as labeled in Examiner annotated Fig. 4 below) having a second aperture (i.e. the aperture receiving fastener 712a); wherein: the first upper contact surface and the first lower contact surface define a first channel (as labeled in Examiner annotated Fig. 4 below), and the second upper contact surface and the second lower contact surface define a second channel (as labeled in Examiner annotated Fig. 4 below).
PNG
media_image1.png
814
616
media_image1.png
Greyscale
With regard to claim 2, Tinwala discloses a third upper contact surface (as labeled in Examiner annotated Fig. 4 above, which Examiner notes can be considered a upper or lower surface as it is lower with respect to other surfaces with certain frames of reference and as Applicant has not defined/claimed any directions) and a fourth upper contact surface (as labeled in Examiner annotated Fig. 4 above, which Examiner notes can be considered a upper or lower surface as it is lower with respect to other surfaces with certain frames of reference and as Applicant has not defined/claimed any directions).
With regard to claim 3, Tinwala discloses that the coupling element is defined by a first body member (500), a second body (600) member and, a third body member (700) wherein the second body member is secured between the first body member and the third body member with a fastener (612).
With regard to claim 5, Tinwala discloses that the first and second lower contact surfaces are angled to relative to a horizontal plane (as seen in Fig. 4 as they are arcuate they are angled as they comprise a plurality of angled sections defining such a curve).
With regard to claim 6, Tinwala discloses that the first and second lower contact surfaces are configured to plastically deform during an installation (i.e. as they are disclosed as made of metal (e.g. see the cross-hatching of Fig. 4) they are capable/configuration of this as such is a material property of metals. Additionally Examiner notes that a narrower interpretation would not be reasonable as this claim is the only reference to such in Applicant’s disclosure).
With regard to claim 7, Tinwala discloses a threaded connector (714, 612, 204, etc.) disposed on a top side of the coupling element (i.e. as seen in Fig. 4 there portion where any of these threaded connectors is can be considered a top side relative to other elements/surfaces).
With regard to claim 8, Tinwala discloses that the first aperture and second aperture align to allow for a substantially linear fastener to pass through both the first aperture and second aperture (as seen in Fig. 4 they are aligned to allow for linear fastener 712 to pass through).
With regard to claim 9, Tinwala discloses that the first upper contact surface does not vertically align with the first lower contact surface (i.e. as seen in Fig. 4 and as Applicant has not defined a vertical direction or axis for such to not occur along there is some line vertical with respect to another element/surface that exists that does not pass through both).
With regard to claim 10, Tinwala discloses that the first channel and second channel are substantially perpendicular to the receiving slot (as seen in Fig. 4).
Allowable Subject Matter
Claim 4 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and provides additional examples of similar coupling elements.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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, Kristina Fulton can be reached at (571) 272-7376. 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.
/NICHOLAS L FOSTER/ Primary Examiner, Art Unit 3675
Prosecution Insights