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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 12,009,648 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Maintenance Fee
Applicant is reminded during the prosecution of the instant reissue patent application, maintenance fees must be kept up to date for the Patent No. 12,009,648 (“the ‘648 patent”). A review of the maintenance fee status for the ‘648 patent shows the first day to pay the 3.5 year fee opens June 11, 2027, the surcharge starts December 14, 2027, and the last day to pay is June 12, 2028.
Consent of Assignee
The person who signed the submission establishing ownership interest is not recognized as an officer of the assignee, and the person who signed it has not been established as being authorized to act on behalf of the assignee. See MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012). While MPEP § 325(V) states Manager is an appropriate title for an applicant filed by a foreign applicant, such a title is not acceptable for an application filed by a US applicant, as is with the instant application. As such, a MPEP § 325(V) should be consulted for appropriate titles and appropriate actions to establish the person signing the consent as being authorized to act on behalf of the assignee.
Specification Amendments
37 CFR 1.173 (b) (1) (i), in part, states, “The precise point in the specification where any added or rewritten paragraph is located must be identified.”
37 CFR 1.173 (g), in part, states, “All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.”
As such the specification amendment filed May 29, 2025, does not comply with 37 CFR (b) (1) (i) and (g) as it refers to the precise location with a paragraph number, which the patent specification does not have. The precise location of the paragraph being amended should be given by the column and line number in the patent specification at which the paragraph being amended is located.
Claim Amendments
The claim amendments of May 29, 2025 do not comply with 37 CFR 1.173(b)-(g). 37 CFR 1.173(d)(1) “The matter to be omitted by reissue must be enclosed in brackets”. 37 CFR 1.173(d)(2) states “The matter to be added by reissue must be underlined”. The Applicant is also reminded that 37 CFR 1.173(g) states that all amendments must be made relative to the patent.
The deletions in claims 1 and 14 are shown with double brackets instead of single brackets.
Further, in claim 1, the limitation, “generally flat” in line 4 is not in the original patent claims, is matter added by reissue, and must be underlined.
Claim Rejections - 35 USC § 251
Claims 1-29 are NOT rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Claims 1-29 are broader than patent claims 1-16. Claims 1-29 does not require “one or more attachment tabs extending down from the base member, the attachment tabs being configured to straddle the support beam”, “one or more attachment slots”, “one or more flanged tabs extending down from the side walls, the flanged tabs being configured to be received within the attachment slots, so as to secure the housing to the base plate”, and “a locking mechanism”.
Therefore step 1 of the three-step test is met for claims 1-29.
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘648 patent, the Examiner objected to claim 1 for the informality of “adjustment tabs” should be “attachment tabs” and rejected claims 1-16 as unpatentable under double patenting in view of US Patent 11,515,695 in a non-final rejection mailed October 5, 2023. The Applicant responded with arguments and amendments. The Applicant amended “adjustment tabs” to “attachment tabs” and filed a terminal disclaimer in a response field January 4, 2024. The Examiner mailed a notice of allowance on February 12, 2024 indicating claims 1-16 as allowed.
Therefore, the Patent Owner did not amend the claims or make any arguments to overcome any prior art rejections.
Therefore, there is no surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
As there is no surrendered subject matter, step 2 of the three-part test is not met.
Claims 1-29 are NOT rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the base plate having a circular shape (Claim 3) and the junction box with more than 4 walls (Claim 26) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 173 (b) (3) are required in reply to the Office action to avoid abandonment of the application. See also MPEP 1453 III and 1413.
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 4-6, 11-13, 15-16 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 4 recites the limitation "the peripheral edge" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the upper edge" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the walls of the base plate" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the attachment tabs" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the attachment tabs" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the attachment tabs" in line 4. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-2, 7, 17-25, and 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Conway et al. (US-8962997). Regarding Claim 1, Conway et al. discloses a junction box 1 for attachment to a support beam (see Column 5, Lines 56-60) to conceal wires, comprising: a base plate 3 comprising: a generally flat base member (top of 3); and a housing 2 comprising: one or more side walls 2 and a top 8; and at least one flexible tab 13 disposed on at least one of the side walls, the at least one flexible tab being configured to flex inwardly and press against the wires when the housing is connected to the base plate (see Column 3, Lines 4-7); wherein the base plate is configured for attachment to the support beam (see Column 5, Lines 56-60 (Figures 1-6).
Regarding Claim 2, Conway et al. discloses the housing and the base plate have four side walls (housing: walls 2, base plate: four edges of 3 form side walls) (Figures 1-6).
Regarding Claim 7, Conway et al. discloses the top of the housing is removable (from a closed position in Figure 3 to an open position in Figures 1-2) (Figures 1-6).
Regarding Claim 8, Conway et al. discloses the top of the housing is hingedly (via 10, see also Column 4, lines 32-34) coupled to the side wall (Figures 1-6).
Regarding Claim 17, Conway et al. discloses a junction box 1 for electrical wires, the junction box comprising: a housing 2 having one or more side walls 2; a top fastened to one of the side walls by a hinge 10 (see also Column 4, Lines 32-34) having an axis generally parallel to a top edge of such side wall (see Figure 1); at least one opening 12 being disposed on one of the side walls and being configurable to allow at least one electrical wire to be passed into the housing (see Column 2, Lines 33-55); a base plate 3 secured to the side walls opposite the top; and one or more tabs 64,66 for releasably securing the junction box in a closed configuration (Figures 1-6).
Regarding Claim 18, Conway et al. discloses at least one tab 13 coupled to the housing, the at least one tab being configured to at least partially cover at least one of the openings (see Column 3, Lines 1-7) (Figures 1-6).
Regarding Claim 19, Conway et al. discloses the at least one tab is flexibly connected to the sidewall (see Column 3, Lines 1-7) (Figures 1-6).
Regarding Claim 20, Conway et al. discloses wherein the at least one tab is configured to retain the at least one electrical wire, while the at least one electrical wire is passed within the housing (see Column 3, Lines 1-7) (Figures 1-6).
Regarding Claim 21, Conway et al. discloses the tabs for releasably securing the junction box in a closed configuration are flanged tabs 64,66 (Figures 1-6).
Regarding Claim 22, Conway et al. discloses the flanged tabs 64,66 are at least partially carried by the top and at least partially carried by at least one of the side walls (Figures 1-6).
Regarding Claim 23, Conway et al. discloses one or more apertures (at 78, see Column 5, Lines 56-60) through which fasteners may be passed to secure the junction box to a support structure (Figures 1-6).
Regarding Claim 24, Conway et al. discloses the side walls are at least partially slanted (horizontally as shown in Figures 1-3) (Figures 1-6).
Regarding Claim 25, Conway discloses the housing 2 is generally square (it has four sides that are generally the same length) (Figures 1-6).
Regarding Claim 28, Conway discloses the housing and the base plate are made of plastic material (see Column 4, Lines 36-40) (Figures 1-6).
Claim Rejections - 35 USC § 103
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 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) 3 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conway et al. (US-8962997) in view of Reiker (US-5938157). Regarding Claim 3, Conwy et al. discloses the junction box according to claim 1, as advanced above, but does not expressly disclose the base plate having a circular shape.
However, Reiker teaches a junction box 30 comprising a base plate (bottom of 30 attached to 14) having a circular shape (Figures 1-8). It would have been an obvious design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to make the base plate of the junction box of Conway et al. any shape, including circular as taught by Reiker, to achieve the predictable result of providing a box to make splice connections for wires in the desired shape for the particular application.
Regarding Claim 10, Conway et al. discloses the junction box according to claim 1, as advanced above, but does not expressly disclose a telescoping hanger bar.
However, Reiker discloses a junction box 30 further comprising a telescoping hanger bar 14 (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the telescoping hanger bar of Reiker to mount the junction box of Conway et al. as taught by Reiker to allow the junction box to be mounted in a location between to studs or joists as taught by Reiker.
Claim(s) 9, 14, 26-27 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conway et al. (US-8962997) in view of Reiker (US-6207894). Regarding Claim 9, Conway et al. discloses a junction box according to claim 1, as advanced above, but does not expressly disclose the housing is a two-piece housing.
However, Reiker teaches a junction box 150 comprising a housing (depicted in Figures 7 and 8) that is a two-piece housing (Figure 8 shows one piece and Figure 7 shows the two pieces combined) (Figures 1-39). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the housing of Conway et al. two pieces as taught by Reiker to achieve the predictable result of allowing the pieces to be stacked together when not in use and take up less storage space.
Regarding Claim 14, Conway et al. discloses a method of securing electrical wire having a spliced connection to a support beam (see Column 5, Lines 56-60), comprising proving a junction box 1 having a housing 2 and a base plate 3; wherein the base plate comprises a base member (top of 3); and wherein the housing comprises one or more side walls 2 and a top 8; at least one flexible tab 13 disposed on at least one of the side walls (see Column 3, Lines 1-7), the at least one flexible tab being configured to flex inwardly and press against the wire when the housing is connected to the base plate (see Column 3, Lines 1-7); inserting the base plate between the support beam and the spliced connection (inherent operation of Conway et al. in its normal and expected fashion); and securing the base plate relative to the support beam (see Column 5, Lines 56-60); but does not expressly disclose connecting the housing to the base plate (as they are integral and already connected) (Figures 1-6).
However, Reiker teaches a junction box having a separate housing 252 and base member 264; wherein the base member is connected to the support beam (via 288,290) and then secured to the housing 252 (via horizontal screw passing through 264 and 242 in Figure 11) (Figures 1-39). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the separate housing and base member of Reiker in the junction box of Conway et al. to achieve the predictable result of taking less storage space when the junction box is not in use and to attach and stabilized the base on the support before adding the housing.
Regarding Claim 26, Conway et al. discloses the junction box according to claim 17, as advanced above, but does not expressly disclose the housing has more than four walls.
However, Reiker teaches a junction box that has more than four walls 20 (Figures 1-39). It would have been an obvious design choice to one of ordinary skill in the art before the effective filing date of the claimed invention make the junction box housing of Conway et al. with any number of walls, including more than four as taught by Reiker, to achieve the predictable result of having a junction box to fit a particular space.
Regarding Claims 27 and 29, Conway et al. discloses the junction box according to claim 17, as advanced above, but does not expressly disclose the base plate is releasably secure to at least one of the side walls and the base plate comprises an upraised peripheral ridge configured to mate with the side walls.
However, Reiker teaches a junction box having a base plate 264 that is releasably secured to at least one of the housing 252 side walls via screw 292 and comprises an upraised peripheral edge (vertical portion parallel to 252 through which 292 passes) configured to mate with the side walls (via 292) (see particularly Figure 11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the base releasably secured to the housing with an upraised peripheral edge configured to mate with the side walls as taught by Reiker to stabilize the base plate mount to the support before mounting the housing, to take up less space when in storage, and/or to support the side walls of the housing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Slater et al. (US-4424406) is cited for disclosing a junction box with flexible tabs in the openings to hold the wire. Weeks (US-6720496) is cited for disclosing a junction box with more than four walls. Pritchard (US-10381414) and Walsh et al. (US-10490987) are cited for disclosing junction boxes with hinged lids.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM E DONDERO whose telephone number is (571)272-5590. The examiner can normally be reached Monday-Friday 6 am - 4 pm ET, Alternate Fridays.
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, EILEEN D LILLIS can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
CONFEREES: /WILLIAM C DOERRLER/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/ SPRS, Art Unit 3993