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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 19/110209 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘209 is substantially similar as an obvious variation claiming an anchoring system with frame piece, gripper, elastic material, screws, channel, and tongues.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, “such as” is not clear as to what is encompassed, “the form” lack antecedent basis, “the opposite upper side” lacks antecedent basis.
Claims 2-10 are rejected for depending from claim 1.
Claim Rejections - 35 USC § 103
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application No. US 2006/0123722 to Stenvall in view of U.S. Patent Application No. 2022/0064955 to Nelson Jr.
Regarding claim 1, Stenvall discloses a system of mounting a building element of two parallel sheets (13, 14), with joint (fig. 3a: 3) with elastic material (fig. 1: 16 and 11), a frame piece (9) and anchoring device (2) comprising an anchor (2) in the frame and a gripper (portion of 2 which contacts 12) engaging the joint, the frame is hollow, with a channel (fig. 3s: space where 21 generally points) for inserting the anchor, the channel has an opening (anchor passes through) on the upper side and two channel walls (walls that are between channel and component 11) running parallel in longitudinal direction between bottom and upper side, the walls may be effective for absorbing various forces, the channel walls are interconnected be a bottom segment (bottom of frame piece).
However, the use of roll formed steel sheets is not disclosed. Nelson discloses an anchor [0044] and roll forming [0036] and steel sheets [0051]. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Stenvall by using such materials and methods as a mere design choice since stamping is well known in the art of construction and provides a strong and inexpensive product.
Regarding claim 2, the bottom segment is coupled to the bottom side (middle section between support beams is coupled to both outer sides) at several locations (left and right side) along the length of the hollow profile.
Regarding claim 3, the opening to the channel is defined by two opposite tongues (see tongue approximately above from where 9 points in fig. 1. The left tongue is inward leaning and the right tongue is inward leaning).
Regarding claim 4, the anchor has an elongated body (long hook shape) with a symmetrical cross sectional shape (at base of hook) and has its largest width corresponding to the distance between the channel walls (see largest portion of anchor being between channel walls as in fig. 1).
Regarding claim 5, the anchor has an upper side comprising a flat surface (flat hook at top) limited by two parallel ridges (see ridges where 7 and 2 point to, fig. 1).
Regarding claim 6, the anchor has two uniform sides (portions inside frame piece) each comprising a side segment (one of the sides) which passes into a bottom surface (a side that extends to the bottom of the anchor) via a radius (curvature of bottom portion (fig. 1: 5).
Claim Objections
Claim 7 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 prior art of record does not disclose the structural limitations of claims 7, 4, and 1 combined. Claim 8 is objected to for depending from claim 7.
Claims 9 and 10 are objected to because the prior art of record does not disclose the structural limitations of claims these and 1 combined.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Basil Katcheves whose telephone number is (571)272-6846. The examiner can normally be reached Monday-Thursday, 8:00 am to 6:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached on (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/BASIL S KATCHEVES/Primary Examiner, Art Unit 3633
