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 without traverse of Species II, claims 1-4 and 6-9, in the reply filed on 7/30/2026 is acknowledged. Therefore, claims 1-9 remain pending with claim 5 withdrawn from consideration. Claims 1-4 and 6-9 are treated on their merits.
Claim Objections
Claim 6 is objected to because of the following informalities: “the retaining” in lines 12-13) should be “the retainer”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claims 6-9 are nonenabling because one having ordinary skill in the art could not make or use the invention from the disclosure coupled with information known in the art without undue experimentation. Specifically, claim 6 recites features from two separate and mutually exclusive embodiments (the connection assembly including a connector and an adapter; and an elastomeric insert). These features were not described as usable together in applicant’s specification as filed.
An analysis of the Wands factors reveals that the following factors weigh against enablement: the amount of direction provided by the inventor and the existence of working examples. Turning now to the Wands factors, none of applicant’s drawings depict the manner in which both the connection assembly and the elastomeric insert are attached to the base through-hole in the manner recited in claim 6. There does not appear to be any description of a working example as to how both the connection assembly and the elastomeric insert are connected with the base through-hole as claimed. As stated above, these limitations are only described with respect to distinct embodiments (e.g. Figures 10A-10E and Figures 33B and 33C, respectively). Thus, there is only a minimal amount of direction provided by the inventor. In re Wands, 858 F.2d 731 (Fed. Cir. 1988); MPEP § 2164.01 (a). It is noted that the determination of undue experimentation is reached by weighing all the factors and that no single factor is dispositive (MPEP 2164.01 (a)). Upon the weight of all of these factors, one of ordinary skill in the art would not have been enabled by the originally filed disclosure to make and/or use the claimed invention without undue experimentation and therefore claim 6 is not enabled. It is noted that claim 9 recites further limitations of the adapter which are not disclosed as usable with the elastomeric insert.
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 6-9 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.
As described with respect to the rejections of claim 6 above, this claim recites features from mutually exclusive embodiments (the connection assembly including a connector and an adapter; and an elastomeric insert). Therefore, because applicant’s specification as filed does not describe these features used together, it is unclear which features are intended to be required.
Claim 8 recites the limitation "the wall" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites further limitations of the adapter, including a plurality of longitudinally-extending protrusions such that a plurality of the grooves of the base align and attach with a plurality of grooves of the base. It is unclear how these features are used in combination with the elastomeric insert set forth in claim 6.
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 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) 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beele (US Patent 9,528,636).
Regarding Claim 6, Beele discloses an outlet box assembly (it is noted that the term “outlet box assembly” is merely the name given to the claimed device in the preamble of the claim and therefore is not accorded patentable weight) comprising: a base 3 that defines a base through-hole (through-hole extending through 3 as shown in Figure 10 especially); a connection assembly (connection assembly defined by a first plug 4 and first blocking element 37 as shown in Figure 10) configured to attach to the base 3 through the base through-hole (the first plug inserted into the base through-hole of 3 as shown in Figure 10), the connection assembly including a connector (first blocking element 37 is seen to define a connector) and an adapter (the first plug 4 is seen to define an adapter) configured to engage the connector 37 (4 and 37 engage each other as shown in Figure 10), the adapter 4 defining a longitudinally-extending adapter through-hole (through-hole extending through the center of 4) configured to receive one of a fitting or a tubing (e.g. pipe 2); an elastomeric insert (the second plug 4 is seen to define an elastomeric insert) configured to be at least partially positioned within the base through-hole (second plug 4 is positioned within the base through-hole of 3 as shown in Figure 10), wherein the elastomeric insert (second plug 4) comprises a plurality of longitudinally-extending ribs (the plurality of inner ribs 11 each extend longitudinally parallel to the axis of pipe 2 for at least the thickness of each rib 11) that extend along a length of an elastomeric insert through-hole (as described above; each rib 11 extends at least partially along the length of the through hole through the second plug 4), and wherein the elastomeric insert (second plug 4) is configured to absorb vibrations and provide acoustic isolation to and from one of the tubing or the fitting when mounted (the flexible plug 4 is configured to absorb vibrations and provide acoustic isolation via the ribs); and a retainer (second connector 37 adjacent to the second plug 4 as shown in Figure 10) defining a retainer through-hole (through-hole through the center of 37 as shown in Figure 10) that is aligned with the base through-hole (as shown in Figure 10), the retaining being configured to attach to the base 3 along an end of the elastomeric insert (as shown in Figure 10, 37 attaches to 3 along an end of insert 4).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakno (US Patent 5,634,304).
Regarding Claim 1, Sakno discloses an outlet box assembly (it is noted that the term “outlet box assembly” is merely the name given to the claimed device in the preamble of the claim and therefore is not accorded patentable weight) comprising (as best shown in Figure 5): a base 17 (including the flange of 17 with the tubular extension of 17) that defines a base through-hole (through-hole extending through the center of 17 as shown in the annotated Figure 5 below), the base having a first base side (on the right side of 17 as shown in the annotated Figure 5 below) and an opposite, second base side (on the left side of 14 as shown in the annotated Figure 5 below), the base including a first circumferential wall (first circumferential wall defining the through-hole as shown in the annotated Figure 5 below) and a second circumferential wall (second circumferential wall defining the tubular extension of 17 as shown in the annotated Figure 5 below), the first and second circumferential walls extending substantially parallel to each other (the first and second walls extend parallel to each other and to the central axis of 17) and are radially spaced apart from each other (such that the second circumferential wall is radially outside of the first circumferential wall), wherein the second circumferential wall of the base has an inner surface and an outer surface (inner surface and outer surface as shown in the annotated Figure 5 below), and wherein the inner surface of the second circumferential wall defines an internal, front cavity that includes a plurality of inner threads 16 (front cavity formed within threaded portion 16); and a firestop packing 20 disposed on the outer surface of the second circumferential wall of the base.
Sakno does not specifically disclose the firestop packing 20 is an intumescent material.
However, Sakno teaches another embodiment in Figure 1 in which an intumescent material 3 is disposed on an outer surface of a circumferential wall 1.
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Sakno in Figure 5 such that the firestop packing is an intumescent material as taught by Sakno in the alternative embodiment for the purpose of providing a material along the exterior of the base which will expand and seal the wall penetration in the event of a fire.
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Regarding Claim 2, Sakno is seen as further disclosing the intumescent material (in the location of packing 20 as described with respect to the proposed modification in claim 1 above) is capable of being carried with the base prior to installation of the outlet box assembly (the limitation of the intumescent material “carried with the base prior to installation of the outlet box assembly” is a product-by-process type limitation which does not define over the final structure of Sakno as modified).
Regarding Claim 3, Sakno further discloses the outer surface of the second circumferential wall (as shown in the annotated Figure 5 above) faces a through-hole extending through a wall (through-hole of wall 2 as shown in Figure 5) when the outlet box assembly is mounted to the wall (as shown in Figure 5, the outer surface of the second circumferential wall faces radially outward toward the surface of wall 2 which forms the through-hole of wall 2).
Regarding Claim 4, Sakno is seen as further disclosing the intumescent material (in the location of packing 20 as described with respect to the proposed modification in claim 1 above) fills a gap between the wall 2 and the second circumferential wall of the outlet box assembly (as shown in the annotated Figure 5 above) to ensure a complete seal (in the same manner as achieved by applicant’s intumescent material).
Claims 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beele (US Patent 9,528,636) in view of Sakno (US Patent 5,634,304).
Regarding Claim 7, Beele does not disclose an intumescent material carried with the base.
Sakno teaches a conduit support device and further teaches (Figure 1 especially) an intumescent material 3 carried with a base 1.
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Beele to include an intumescent material carried with the base as taught by Sakno for the purpose of providing a means of preventing the spread of a fire.
Regarding Claim 8, Beele in view of Sakno further discloses the intumescent material (3 as taught by Sakno as described above) fills a gap between the wall (wall 2 as taught by Sakno) and the base of the outlet box assembly (in the manner taught by Sakno as best shown in Figure 1) to ensure a complete seal (in the same manner as achieved by applicant’s intumescent material).
Allowable Subject Matter
Claim 9 as best understood would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Beele is considered the closest prior art as described above. However, there is not sufficient evidence that it would have been obvious to one of ordinary skill in the art to have modified Beele such that “the base includes a plurality of grooves and at least one elevated portion that are configured to align and attach with the plurality of longitudinally-extending protrusions and the at least one notch of the adapter”. However, it is noted that, as described with respect to the rejections under 35 U.S.C. 112 above, applicant’s specification as filed does not provide an enabling description of the combination of features set forth in claim 9.
Conclusion
The prior art of record and not relied upon is considered pertinent to applicant's disclosure. Lee (US Patent 9,656,622) teaches an elastomeric insert 140 having longitudinal ribs. Mentink (US Patent 10,190,706) teaches a conduit with an intumescent material. Zahuranec et al. (US Patent 10,060,102) teaches a plumbing box with an intumescent pad.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN MURPHY whose telephone number is (571)270-5243. The examiner can normally be reached Monday - Friday 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider can be reached on (571) 272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN F MURPHY/Primary Examiner, Art Unit 3753
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