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 .
Claim Objections
Claim 21 is objected to because of the following informalities: On line two “of to” appears to be a grammatical or phrasing error. Appropriate correction is required.
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 1-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12,323,087. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims contain all of the limitations of the instant claims with only phrasing variances or obvious terminology changes.
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 21 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.
Claim 21 recites the limitation "the respective rail” in line 3. There is insufficient antecedent basis for this limitation in the 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.
Claim(s) 1-5, 8-10, 13, 19-21, 24, 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marley (US 8,544,221) in view of Ramos (US 2013/0232757).
Regarding claims 1-3, Marley (hereafter “D1”) discloses a ground mounting system (figure 1A/) for mounting solar photovoltaic panels (102) on a sloped surface (col. 4, lines 58-62), comprising: an array of soil fasteners (at pole 105 – figure 2A), inserted into said sloped surface, each one of said array of soil nails comprising a rigid rod (col. 5, lines 16-35, col. 7, lines 18-31); a plurality of adapting regulating apparatuses (cap 300, 103, yoke 500), positioned respectively on top of said array of soil nails (figures 3A/5A); and a plurality of elongated racks (support frames 600), respectively coupled with said array of soil nails via said plurality of regulating apparatuses (figure 6), configured for mounting said solar photovoltaic panels (703) (col. 11, lines 41-50) between at least a first height and a second height (base bracket 502A and panel bracket 502B allow panel angle to be adjusted – col. 11, lines 23-28).
D1 does not specifically disclose a geomembrane through which nails or support posts pass through. Marley teaches use where environmental impact is not critical (col. 5, lines 47-48). Marley teaches wherein persons skilled in the art may readily adapt dimensions to suit any particular need (col. 8, lines 20-22). Marley teaches use in heavy, compact soil or light, loose soil (col. 8, lines 33-35).
Ramos (hereafter “D2”) discloses a photovoltaic panel mounting system (figure 1) having nails/screws (68/69 – figure 8) which pass through a geomembrane (title; polymer liner 10 / 72). D2 discloses teaches use of mounting fasteners (68, 69) passing through a resilient washer (61 - polymer base - [0074]) above the geomembrane (72) (figure 7).
It would have been obvious to one of ordinary skill in the art at the time of filing to provide a geomembrane with support/nail/post openings (corresponding to poles/nails of D1) and resilient washers as taught by D2, for use with the system of D1 such as when utilized on a sloping surface to mitigate erosion.
Regarding claims 4-5, D1 as modified per the discussion of claim 2 discloses a mounting solar photovoltaic panels for use at a greenfield site (D1 discloses soil field), which would require for installation the steps of: laying a covering layer (from D2) on a greenfield ground surface; inserting soil fasteners through said covering layer inwardly into the greenfield ground (as taught in D2 at 68/69 – figure 9), creating an array of spaced soil fasteners (abstract – D1); installing regulating apparatus for interconnecting each respective soil fastener to a rail; mounting solar photovoltaic panels to the rails, adjusting the connection of a respective regulating apparatus to the respective rail for positioning said mounted solar photovoltaic panel selectively between a fist height and second height relative to the greenfield ground surface, said first height being lower than second height, whereby the soil fasteners support the solar photovoltaic panels for generating energy while resisting wind uplift loading. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to perform the claimed process steps, given D1 in view of D2, in order to necessarily make and use the combined device.
Regarding claim 8, in addition to the discussions of claims 1-5 above, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize the system of modified D1 in an arrangement for lower to the ground arrays with soil nails in said array of soil nails having a diameter ranging between 5 mm to 30 mm and length ranging between 0.5 meters to 2 meters and a height above the ground between 5-50 cm as D1 already discloses use on sloped surfaces and with loose soil. D2 does not discloses the thickness of the geomembrane, however, it would have been obvious to one of ordinary skill in the art at the time of filing to select an optimal range when applying the feature to D1 with the thickness being in the range from 0.5 mm to 3 mm.
Regarding claims 9 and 19, D1 does not disclose comprising at least one helix flight attached to the elongated rod intermediate opposing ends thereof. D2 teaches helix arrangement at an engaging end (figure 9) of fasteners (68, 69). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to add the helix flight taught in D2 to the rod/nail of D1 for ground engagement.
Regarding claim 10, D1 as modified discloses comprising a plate (106) attached proximate a driving end of the elongated rod (figure 2A – D1).
Regarding claims 13 and 20, D1 as modified discloses wherein the regulating apparatus comprises an annular sleeve (at 131) received by the soil fastener vertically spaced from the geomembrane, said annular sleeve having a laterally extending support plate (132) to which a rail connects for supporting a solar photovoltaic module (figure 2D – D1).
Regarding claim 21, 24, 26-27, D1 discloses wherein the regulating apparatus (300, 103, 500) comprises a threaded member (504) that receives a pair of nuts (not indexed – seen in figure 5a) thereon for adjusting the connection to the respective rail. D1 discloses mounting of a threaded member (504) with a pair of nuts and the process of tightening/loosening the nuts will alter the height of a supported solar panel to a degree.
Claim(s) 6-7, 12, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marley (US 8,544,221) in view of Ramos (US 2013/0232757) and Almy et al. (US 2021/0115642).
Regarding claims 6 and 12 and 22, D1 as modified by D2 does not specifically teach the step of printing an array of marks such as on the geomembrane.
Almy et al. teaches marking the locations for solar array anchors (240) by placing markers at installation points ([0029]).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to apply marks to the geomembrane of D1 as suggested in D2 to locate the installation locations for the holes for the soil fasteners to pass through.
Regarding claim 7, D1 as modified discloses the holes in the geomembrane for the soil fasteners. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to create the holes by punching, a well-known process for easily making holes in a specific place in an object.
Claim(s) 11, 23, 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marley (US 8,544,221) in view of Ramos (US 2013/0232757) and Ehman et al. (US 2019/0222162).
D1 as modified by D2 does not disclose a sealant at geomembrane openings. Ehman et al. teaches a solar panel mounting system with geosynthetic ground cover (116) utilizing fasteners (122) and providing a sealant to prevent water infiltration at fastener locations ([0078]). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to utilize a sealant as taught by Ehman et al. for the geomembrane rod openings to prevent undesired water infiltration.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See notice of references cited form PTO-892. References not applied but cited are relevant as disclosing or suggesting at least one feature in the claims or disclosure of the present application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D HAWN whose telephone number is (571)270-5320. The examiner can normally be reached Monday - Friday 9-6.
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, Jonathan Liu can be reached at 5712728227. 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.
/PATRICK D HAWN/Primary Examiner, Art Unit 3631
Prosecution Insights