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 .
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,435,818. Although the claims at issue are not identical, they are not patentably distinct from each other. For example, the instant claim 1 reads on reference claims 1-3. The reference claims 1-3 recite first and second retainer clips that, when attached, define first and second apertures with an opening therebetween, and third and fourth apertures with a second opening therebetween. The first and third apertures are generally rectangular, and the second and fourth apertures are generally round. The reference claims do not recite how a single clip base divides that structure. Instant application claim 1 is drawn to one retainer clip of that patented assembly.
The reference claims 1-3 do not explicitly recite “a base defining a first rectangular slot located adjacent to a first arch-shaped wall and a second rectangular slot adjacent to a second arc-shaped wall”. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to divide the patented assembly into halves at the mating plane between the first and second retainer clips. Each clip base would then define a portion of each rectangular aperture (a rectangular slot) and a portion of each round aperture (an arc-shaped wall).
Claim Objections
Claim 2 is objected to because of the following informalities: the claim uses both “side wall” and “sidewall” for the same kind of structure. Consistent terminology is suggested. Appropriate correction is required.
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 2 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.
Regarding claim 2, the comparison between a height to a wall (“has a height equal to an outer side wall” and “a height greater than the outer side wall”) rather than to the height of a wall has rendered the claim indefinite. For examination, the claim is interpreted as comparing the heights of the respective walls.
Further, claim 2 recites the limitation "the height of the outer side wall of the second rectangular slot" in line 5. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Izawa, US 2017/0175932.
Regarding claim 1, Izawa discloses a retainer clip (10) [configured to be attached to another retainer clip to form a first aperture and a second aperture with a first opening therebetween and form a third aperture and a fourth aperture with a second opening therebetween], comprising: a base (11) defining a first rectangular slot (left insertion space 13) located adjacent to a first arc-shaped wall (left arc-shaped receding portion 12) and a second rectangular slot (right insertion space 13) adjacent to a second arc-shaped wall (right arc-shaped receding portion 12).
Claim language set in brackets [] set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of the retainer clip, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the clip device disclosed by Izawa, is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Regarding claim 4, Izawa discloses the retainer clip according to claim 1, wherein the base (11) defines a straight wall (top surface of right space 13; see the annotated figure 6) that is arranged tangent to the second arc-shaped wall (right 12; the straight top surface of 13 leads up to arc-shaped wall 12 and meets it at a single point at the arc’s terminal edge, without intersecting the arc in figures 5-7).
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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) 2, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Izawa, US 2017/0175932 in view of Jobin et al., US 5,794,897.
Regarding claim 2, Izawa discloses the retainer clip according to claim 1, wherein an outer side wall (arc-side wall bounding left insertion space 13; see the annotated figure 6) of the first rectangular slot (left 13) has a height equal to an outer side wall (arc-side wall bounding right insertion space 13) of the second rectangular slot (right 13), an inner sidewall (central wall of holding portion 11 bounding left 13) of the first rectangular slot has a height greater than the outer side wall of the first rectangular slot (figure 6).
Izawa does not disclose wherein an inner sidewall of the second rectangular slot has a height less than the height of the outer side wall of the second rectangular slot.
Jobin teaches structurally identical gripping elements (10, 12), each having a first end (15) different from its second end (17). The first end of one element aligns with the second end of the other when the gripping elements are reversed and joined.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the holding portion (11) of Izawa so that the inner sidewall of the rectangular slot is short than its outer side wall, making the slot walls complementary at opposite ends of the base as taught by Jobin, in order to allow two identical holding portions to be joined in reversed orientation, with the taller inner wall of one registering against the shorter inner wall of the other to close each slot, so that the clip requires only a single mold and no selection of halves by the installer.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izawa, US 2017/0175932 in view of Koreski, US 4,799,641.
Regarding claim 3, Izawa discloses the retainer clip according to claim 1, wherein the base (11) defines the first arc-shaped wall (left 12) and the second arc-shaped wall (right 12). Izawa does not explicitly disclose wherein the first arc-shaped wall has an arc length greater than an arc length of the second arc-shaped wall.
Koreski teaches a retainer clip wherein the base (10, 12) defines a first arc-shaped wall (18) and a second arc-shaped wall (14) of different radii, such that the first arch-shaped wall (18) has an arc length greater than the arc length of the second arc-shaped wall (14; figure 4). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the left arc-shaped wall (12) of Izawa to have a larger radius, and therefore a greater arc length, than the right arc-shaped wall, as taught by Koreski, in order to accommodate elongate members of different diameters in a single clip.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izawa, US 2017/0175932 in view of Bowen et al., US 5,409,396.
Regarding claim 5, Izawa discloses the retainer clip according to claim 1, wherein one end of the base (11) defines a flexible locking arm (elastic locking piece 16). Izawa does not explicitly disclose wherein each end of the base defines a flexible locking arm next to a rigid locking tab.
Bowen teaches a retainer clip (18) formed of identical strain relief members (20), comprising a base (54) wherein each end of the base defines a flexible locking arm (56) next to a rigid locking tab (64). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the clip main body (10) of Izawa by replacing hinge portion (22) with a latch connection at each end, so that each end of the base defines a flexible locking arm next to a rigid locking tab as taught by Bowen, in order to join the clip parts from identical members that assemble with reduced assembly forces and reduced stresses in the members.
Regarding claim 6, the combination of Izawa and Bowen teaches the retainer clip according to claim 5. Bowen further teaches wherein the flexible locking arm (56) is on a same side of the retainer clip as the rigid locking tab (64) as viewed from each end of the base (64 projects in the same direction as 56; figures 4-5).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fukumoto et al. (US 10,655,374) discloses a hinged pipe clamp whose V-shaped notches jointly form square openings for the pipes, with a latch end having a resilient claw next to a fixed engagement portion.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D./Examiner, Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677
