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 .
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.
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 13 and 16-18 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.
Claims 13, 16 and 17 all claim dependency back to claim 11. It appears from the claim structure as well as the limitations of the claims that claims 13, 16 and 17 should all depend from independent claim 12 and not dependent claim 11. For the purpose of examination, it has been treated as such.
Claim 18 is rejected as being dependent upon a rejected base claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 6, 9-12, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eliasson (US 2020/0166305) in view of King (US 6,971,657).
Regarding Claims 1 and 12, Eliasson discloses a sub-frame assembly comprised of a sub-frame 10 capable of installation on a chassis 9 of a truck (Fig. 2). Eliasson is not clear if it discloses the use of a step or not on the frame assembly. King discloses at least one step assembly 60 connected to a frame system (steps can be attached to any frame rail including a sub-frame rail) at a height that allows access by a user standing thereon to a bed 50 of the truck (Fig. 3). Before the effective filing date of the present application, it would have been obvious to one having ordinary skill in the art to use the step of King on the sub-frame of Eliasson to give the operator better access to the storage lockers, bed portion and workings that are located above the height of the truck frame.
Regarding Claims 6 and 16, the sub-frame is below portions of the chassis and cab.
Regarding Claim 9, Eliasson discloses the use of toolboxes 8 on the sub-frame.
Regarding Claim 10, both Eliasson and King disclose flatbed portions of the trucks; use of the combination on a flatbed tow truck is merely an obvious matter of design choice for one having ordinary skill in the art as the chassis of heavy trucks (tow/tractor/military/heavy hauling) are interchangeably used.
Regarding Claim 11, King discloses the use of a horizontal platform portion (step; see Fig. 3) which the user steps on top to access the bed area of the combination truck.
Regarding Claim 19, the combination of Eliasson and King may be used as an aftermarket add-on kit.
Regarding Claim 20, the combination of Eliasson and King discloses a method including installing a sub-frame (Eliasson) and connecting a step assembly (King).
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 claims 1-18 of U.S. Patent No. 12,319,233. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the present application is fully anticipated by Claim 1 of the ‘233 patent.
Claim 2 of the present application is fully anticipated by Claim 2 of the ‘233 patent.
Claim 3 of the present application is fully anticipated by Claim 3 of the ‘233 patent.
Claim 4 of the present application is fully anticipated by Claim 4 of the ‘233 patent.
Claim 5 of the present application is fully anticipated by Claim 5 of the ‘233 patent.
Claim 6 of the present application is fully anticipated by Claim 6 of the ‘233 patent.
Claim 7 of the present application is fully anticipated by Claim 1 of the ‘233 patent.
Claim 8 of the present application is fully anticipated by Claim 7 of the ‘233 patent.
Claim 9 of the present application is fully anticipated by Claim 8 of the ‘233 patent.
Claim 10 of the present application is fully anticipated by Claim 9 of the ‘233 patent.
Claim 11 of the present application is fully anticipated by Claim 10 of the ‘233 patent.
Claim 12 of the present application is fully anticipated by Claim 11 of the ‘233 patent.
Claim 13 of the present application is fully anticipated by Claim 12 of the ‘233 patent.
Claim 14 of the present application is fully anticipated by Claim 13 of the ‘233 patent.
Claim 15 of the present application is fully anticipated by Claim 14 of the ‘233 patent.
Claim 16 of the present application is fully anticipated by Claim 15 of the ‘233 patent.
Claim 17 of the present application is fully anticipated by Claim 11 of the ‘233 patent.
Claim 18 of the present application is fully anticipated by Claim 16 of the ‘233 patent.
Claim 19 of the present application is fully anticipated by Claim 17 of the ‘233 patent.
Claim 20 of the present application is fully anticipated by Claim 18 of the ‘233 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON S DANIELS whose telephone number is (571)270-1167. The examiner can normally be reached Monday - Thursday 7:00 am - 5:00 pm.
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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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/JASON S DANIELS/Primary Examiner, Art Unit 3612
