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
Applicant's election with traverse of Invention I and Species I in the Remarks filed 8/11/2026 is acknowledged. The traversal is based on the grounds that the embodiments are directed to a unitary concept and based on various policy arguments. These arguments are unpersuasive. The argument set forth by the applicant (i.e., a want of a serious burden on the examiner) is an argument commonly set forth when traversing a restriction of the invention. (See MPEP 803). Applicant argues that the Examiner has not presented a prima facie showing of burden but the Examiner contends that based on the divergent subject matter of the groupings of inventions, the Examiner would be forced to search different classes/subclasses and resources to applicable prior art, thus presenting a serious burden as previously discussed. Further, the examiner is requiring the applicant to elect between several disclosed species. A proper traversal of an election of species includes arguments that the species are not patentable over one another. Applicant contends that the Examiner has erred in indicating generic claims, the Examiner disagrees. Applicant argues that the term generic is defined in MPEP 806.04(d) as having multiple species read on them. However, that is not what MPEP 806.04(d) states. MPEP 806.04 states that a generic claim must read on each of the identified embodiments to be generic. As Applicant has pointed out by mapping the independent claims to some of the embodiments, the claims are not generic since they do not read on each (i.e. all) of the identified species. Further, Applicant has again argued that there is no significant burden pointed out by the Examiner but again the Examiner maintains that the divergent subject matter of the species and the shear number of species would present a burdensome search since the Examiner would be forced to search different classes/subclasses and resources to applicable prior art. Since the applicant has not submitted persuasive arguments that the embodiments are not distinct from one another, the requirement is still deemed proper. Therefore, the Examiner maintains the restriction as set forth previously and is made FINAL.
Claims 13-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention II-III and Species II-VIII, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/11/2026. Further, claim 8 will also be withdrawn since it does not correspond to the elected embodiment (species I). Claim 8 refers to first and second elongate saddle portions which is discussed in Paragraph 0050 of the specification and shown in Fig.11. Since Fig. 11 is not part of species I, claim 8 will be withdrawn as non-elected.
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.
Claim 12 is 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.
Re. Cl. 12, the limitation “the object support connector” renders the claim indefinite in the Examiner’s position. Applicant’s elected embodiment is drawn towards a mount which is intended to be used with an object support connector. Applicant defines the mount as (200) and the object support as (380) and as seen in Fig. 3-4, they are distinct structures usable together. Therefore, it is unclear how the mount, being that it is a distinct structure from the object support can include the object support as required by claim 12 currently. For the purpose of examination, the Examiner will interpret claim 12 to functionally refer to the object support and it is suggested that the Applicant amend claim 12 to functionally refer to the object support (similar to claims 6-7) to overcome this issue. The Examiner further notes that Applicant, in response to the Examiner’s restriction requirement, did not elect the combination object support and mount (Invention III) which would have covered the subject matter form claim 12.
Claim Rejections - 35 USC § 102
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 1-7, 9 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lane US 674868 (hereinafter Lane).
Re. Cl. 1, Lane discloses: A mount (Fig. 1) comprising: an elongated base (2, Fig. 1) portion configured to attach to a structure (see Fig. 1-2, via hole 3); and an elongated saddle portion (7, Fig. 1) having a plurality of connector regions (regions of 7 between 5’s and 6, Fig. 1) spaced apart from the elongated base portion (see Fig. 1-2) and extending along a portion of the elongated base portion (see Fig. 1), the connector regions configured to receive at least one object support connector for attachment of an object to the mount (see Fig. 1-2, the regions are configured to receive an object support in the same manner as lids 8).
Re. Cl. 2, Lane discloses: at least one connector region of the connector regions is configured to receive the object support connector at variable locations to vary an attachment position of the object on the mount with respect to the elongated saddle portion (see Fig. 1-2, the connector region is configured to be used in the claimed intended use in the same manner as adjusting the position in which 8 fits between 7 and 2).
Re. Cl. 3, Lane discloses: at least one of the connector regions is discretely spaced apart on the elongated saddle portion from the other connector regions (see Fig. 1, left and right spacing between the connector regions, the spacing created by 6).
Re. Cl. 4, Lane discloses: the elongated base portion includes a top side (see Fig. 1-2) and the elongated saddle portion includes a plurality of supports (5, 6, Fig. 1) that space the top side from the elongated saddle portion (see Fig. 2).
Re. Cl. 5, Lane discloses: at least one connector region of the connector regions further comprises: a passageway defined through the elongated saddle portion between two opposing supports (see Fig. 1-2, passageway between 2 and 7 and laterally bound by supports 5 and 6), the passageway configured to receive the object support connector (see Fig. 1-2, the passageway is configured to receive the object support in the same manner as 8).
Re. Cl. 6, Lane discloses: the object support connector comprises a strap configured to extend through the passageway of the connector region (see Fig. 1-2, the mount is configured to receive an object support as discussed above, by having 7 spaced from 2 as shown, the mount is configured to be used with a strap passing through the passageway in the same manner as 8).
Re. Cl. 7, Lane discloses: the object support connector comprises a slot configured to slide onto the elongated saddle portion at the connector region (see Fig. 1-2, as having the saddle portion structured as shown, the portion 7 is configured to receive an object with a slot passing over the portion 7).
Re. Cl. 9, Lane discloses: the elongated base portion further comprises: a mount portion (see Fig. 1, portion of 2 with 3) configured to connect the elongated base portion to the structure (using a fastener passing through 3).
Re. Cl. 11, Lane discloses: the elongated base portion includes a top side opposite a bottom side (see left and right sides of 2, Fig. 2) and the mount portion further comprises: a fastener aperture (3, Fig. 2) defined through the base portion from the top side to the bottom side (see Fig. 2), the fastener aperture configured to receive a fastener therethrough to attach the base portion to the structure (see Fig. 1-2).
Re. Cl. 12, Lane discloses: the object support connector, which is configured to attach the object to the mount at variable locations relative to at least one connector region of the connector regions to vary a position of the object with respect to the elongated saddle portion (see Fig. 1-2, the mount is configured to have various object support connectors attach to 7 at various locations and adjust their positions as one would adjust the position of 8).
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lane in view of Janina US 3023991 (hereinafter Janina).
Re. Cl. 10, Lane does not disclose an adhesive portion configured to adhere to a mount surface of the structure. Janina discloses a mount (Fig. 1) which includes an elongated base portion (40, Fig. 1) that includes a mount portion (back side surface of 40 with adhesive 46) configured to connect the elongate base portion to a support structure (see Fig. 2); an adhesive portion (46, Fig. 2) configured to adhere to a mount surface of the structure (see Fig. 2).
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 Lane device to have the adhesive as disclosed by Janina with reasonable expectation of success to provide a manner of attaching or securing which does not penetrate into the supporting surface, thus maintaining the integrity of the supporting surface. Such a modification would give the user more options to secure the device to a supporting surface.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hurley US 9681781, Moreno US 4300692, and Streit 2403834 disclose other known mounts which are presented to the Applicant for their consideration.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER E GARFT whose telephone number is (571)270-1171. The examiner can normally be reached Monday-Friday 8:00 a.m. to 5:00 p.m..
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, Terrell McKinnon can be reached at (571)272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER GARFT/Primary Examiner, Art Unit 3632
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