[Writing Sample] USPTO Office Action Response by Bryan Johnson

Docket No.: 88888-888

PATENT - 000000

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of

Customer Number: 00000

Adams, Kirk et al.

Confirmation Number: 1715

Application No.: 99/999,999

Group Art Unit: 3632

Filed: January xx, xxxx

Examiner: Chan, Ko Hung

For:

RESPONSE TO OFFICE ACTION - 00000

AMENDMENT AND RESPONSE TO OFFICE ACTION MAILED FEBRUARY 2, 20xx
Mail Stop Amendment
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Sir/Madam:
This is in response to the Office Action, mailed February 2, 20xx.
Amendments to specification begin on page 2.
Amendments to Claims begin on page 5.
Remarks begin on page 9.

LAS99 1543403-1.064706.0077

Application No. 11/627,325

Attorney Docket No. 64706-077
AMENDMENTS TO SPECIFICATION

Please amend paragraph [0007] by replacing it with the following:
[0007] A muffler pipe storage rack may be configured to hang a plurality of muffler pipes. Each muffler
pipe may include a tubular portion and a flange attached to one end of the tubular portion that is
configured to be bolted to an engine manifold. The muffler pipe storage rack may include an elongated
support member having two ends and a longitudinal slot between the two ends. The longitudinal slot
[[may]] being so dimensioned to have a width that is wider than the outer diameter of the widest of the
of a muffler’s tubular portion portions, but narrower than the width of a muffler’s flange the narrowest
of the flanges. The longitudinal slot may have a length that is so dimensioned to be longer than the sum
of the plurality of the widths of [[all of]] the flanges. A first mounting bracket may be affixed to one end
of the elongated support member and configured to [[damp]] clamp to a first substantially horizontal
support and to suspend the one end of the elongated support member from the first substantially
horizontal support. A second mounting bracket may be affixed to the other end of the elongated
support member and be configured to clamp to a second substantially horizontal support, substantially
parallel to the first substantially horizontal support, and to suspend the other end of the elongated
support member from the second substantially horizontal support.
[0008] The first mounting bracket may include an inverted U-Shaped portion having an interior width so
dimensioned and so configured to clamp to the first substantially horizontal support that is substantially
the same as the width of the first substantially horizontal support. The second mounting bracket may
include an inverted U-shaped portion having an interior width so dimensioned and so configured to
clamp to the second substantially horizontal support that is substantially the same as the width of the
second substantially horizontal support.
[0013] There may be a clearance above the entire length of the slot, so dimensioned to be the width of a
muffler flange that has a width that is at least as wide as the widest of the flanges.
[0014] The clearance above the entire length of the slot will be so dimensioned to have the height as tall
as a muffler flange may have a height that is at least as tall as the thickest of the flanges.
[0017] A muffler pipe hanger system may be configured to hang a plurality of muffler pipes. Each
muffler pipe may include a tubular portion and a flange attached to one end of the tubular portion that
is configured to be bolted to an engine manifold. The muffler pipe hangers system may include a pallet
storage rack having two substantially horizontal supports substantially parallel to one another. The
muffler pipe hanger system may include a plurality of substantially parallel and spaced apart elongated
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support members, each attached transversely to the two substantially horizontal supports and having a
longitudinal slot. The longitudinal slot may have a width that is so dimensioned to the size of a muffler’s
tubular portion, and as narrow as a muffler’s flange. The longitudinal slot may be so dimensioned to be
as long as the plurality of the widths of the flanges. Wider than the outer diameter of the widest of the
tubular portions, but narrower than the width of the narrowest of the flanges. The longitudinal slot may
have a length that is longer than the sum of the widths of all of the flanges.
[0041] The elongated support members 201 and 203 may be elongated L-shaped brackets, as illustrated
in FIG. 2. The elongated L-shaped brackets may have a length that is so dimensioned to be the length of
the plurality of widths at least equal to the combined width of the flanges on the muffler pipes that are
to be stored by the muffler pipe storage rack.
[0044] Each of the mounting bracket 213 and 215 may include an inverted U-shaped portion forming an
open hook-like structure. The open hook-like structures may each be configured to clamp onto a
substantially horizontal support and to thereby cause the elongated support member to which the
mounting bracket is attached to be suspended from the substantially horizontal supports. The widthe of
each U-shaped portion may be so dimensioned to be substantially the same as the width of the
horizontal support to which it is configured to be attached.
[0047] FIG. 4 is an end view of the muffler pipe storage rack illustrated in FIG. 3 with a muffler pipe
resting within it. As shown in FIG. 4, a muffler pipe 401 that includes a tubular portion 403 and a flange
405 attached at one end has been inserted into the slot 301 formed by the substantially parallel and
spaced-apart elongated support members 201 and 203. As illustrate in FIG. 4, the slot 301 may have a
width 406 that is so dimensioned to be the width of a muffler’s tubular portion 403 .at least as wide as
the width 407 of the tubular portion 403. In the event that several muffler pipes are to be hung from
the same muffler pipe storage rack, the width 406 of the slot 301 may be so dimensioned to be as wide
as the tubular portion of a muffler at least as wide as the width of the widest tubular portion in the set.
[0048] The width 406 of the slot 301 may also be less than the width 409 of the flange 405. In the event
that several muffler pipes are to be hung from the muffler pipe storage rack, the width 406 of the slot
301 may be so dimensioned to be less than the narrowest width of any of the plurality of muffler flanges
the flanges in the set.
[0049] The clearance above the slot 301 throughout the entire length of the slot may have a width 411
that is so dimensioned to be the at least as wide as the width 409 of the flange 405. In the event that
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several muffler pipes are to be hung from the muffler pipe storage rack, the width 411 of the clearance
above the slot may be so dimensioned to be the width of a muffler flange at least as wide as the width
of the widest flange.
[0050] The clearance above the entire length of the slot 301 may have a height 413 that is so
dimensioned to be the height of the thickness 415 of the flange 405 at least as tall as the thickness 415
of the flange 405. In the event that several muffler pipes are to be hung from the muffler pipe storage
rack, the height 413 of the clearance above the slot may be so dimensioned to be the height of a muffler
flange within the plurality of the flanges at least as tall as the thickness of the thickest flange in the set.
[0052] FIG. 6 illustrates muffler pipes of different sizes and configurations hanging from a pallet storage
rack to which several muffler pipe storage racks of the type illustrate illustrated in FIG. 3 are clamped.
As shown in FIG. 6, muffler pipes of different sizes and configurations, such as muffler pipes 601, 603,
605, 607, 609, 611, 613, 615, and 617 are hanging from a pallet storage rack 619 having substantially
horizontal and substantially parallel support members 621 and 623, to which are clamped several
muffler pipe storage racks of the type illustrated in FIG. 3, such as muffler pipe storage racks 625, 627,
629, 631, 633, 635, 637, 639 and 641. As also illustrated in FIG. 6, the muffler pipes that are hung on the
same muffler pipe storage rack may be of the same size and configuration.
[0053] Any method may be used for determining the position of each of the muffler pipe storage racks
625, 627, 629, 631, 633, 635, 637, 639, 641 with respect to the support members 621 and 623. For
example, they may be horizontally positioned so as to allow the muffler pipes that are or will be hung
from them to hang freely without touching neighboring muffler pipes, white at the same time
minimizing the open space between neighboring, hanging muffler pipes. When hanging muffler pipes
having different hanging widths are used, this may the result [[in]] may be unequal spacing between
neighboring muffler pipe storage racks. For example, the spacing 651 between the muffler pipe storage
racks [[627]] 637 and [[629]] 639 may be greater than the spacing 653 between the neighboring muffler
pipe storage racks [[629]] 635 and [[631]] 637.

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AMENDMENTS TO CLAIMS

Please amend the claims as follows:
1.

(Currently amended) A muffler pipe storage rack for hanging a plurality of muffler pipes, each
muffler pipe including a tubular portion and a flange attached to one end of the tubular portion
that is configured to be bolted to an engine manifold, the muffler pipe storage rack comprising:
an elongated support member having two ends and a longitudinal slot between the two ends;
the longitudinal slot being so dimensioned as having:
a width that is wider than a muffler’s the outer diameter of the widest of the tubular
portion, but narrower than the width of a muffler’s flange the narrowest
flanges; and
a length that is longer than the sum of the widths of the plurality [[all]] of [[the]] flanges;
a first mounting bracket affixed to one end of the elongated support member and configured to
clamp to a first substantially horizontal support and to suspend the one end of the
elongated support member from the first substantially horizontal support; and
a second mounting bracket affixed to the other end of the elongated support member and
configured to clamp to a second substantially horizontal support substantially parallel to
the first substantially horizontal support and to suspend the other end of the elongated
support member from the second substantially horizontal support.

2.

(Currently amended) The muffler pipe storage rack of claim 1 wherein:
the first mounting bracket includes an inverted U-shaped portion having an interior width that is
substantially the same as the width of the so configured and so dimensioned to clamp to
the first substantially horizontal support so configured and so dimensioned to be
clamped by the bracket; and
the second mounting bracket includes an inverted U-shaped portion having an interior width
that is substantially the same as the width of the so configured and so dimensioned to
clamp to the second substantially horizontal support so configured and so dimensioned
to be clamped by the bracket.

3.

(Original) The muffler pipe storage rack of claim 2 wherein each of the inverted U-shaped
portions form an open hook-like structure and wherein each of the open-hook like structures
are facing outwardly from the elongated support member.

4.

(Original) The muffler pipe storage rack of claim1 wherein:
the first mounting bracket includes a first releasable locking mechanism configured to releasably
lock the first mounting bracket to the first substantially horizontal member; and

LAS99 1543403-1.064706.0077

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the second mounting bracket includes a second releasable locking mechanism configured to
releasably lock the second mounting bracket to the second substantially horizontal
member.
5.

(Original) The muffler pipe storage rack of claim 4 wherein the first and the second locking
mechanism each include a set screw.

6.

(Original) The muffler pipe storage rack of claim 1 wherein the elongated support member
includes two elongated L-shaped members held in a spaced-apart and substantially parallel
relationship by the first mounting bracket and the second mounting bracket.

7.

(Currently amended) The muffler pipe storage rack of claim 1 wherein there is a clearance
above the entire length of the longitudinal slot that has a width that is so dimensioned as to fit
the width of a muffler flange. at least as wide of the widest of the flanges.

8.

(Currently amended) The muffler pipe storage rack of claim 1 wherein there is a clearance above
the entire length of the longitudinal slot that has a height that is so dimensioned as to be a
height of the thickness of a muffler flange. at least as tall as the thickest of the flanges.

9.

(Original) The muffler pipe storage rack of claim 1 wherein the longitudinal slot extends through
at least one of the ends of the elongated support member.

10.

(Original) The muffler pipe storage rack of claim 1 wherein the first mounting bracket is
configured to suspend the elongated support member from the first substantially horizontal
support such that the longitudinal slot is not blocked by the first substantially horizontal
support.

11.

(Currently amended) A muffler pipe hanger system for hanging a plurality of muffler pipes, each
that is configured to be bolted to an engine manifold, the muffler pip hanger system comprising:
a pallet storage rack having two substantially horizontal supports substantially parallel to one
another; and
a plurality of substantially parallel and spaced apart elongated support members, each attached
transversely to the two substantially horizontal supports and having a longitudinal slot,
the longitudinal slot having:
a width that is so dimensioned to be wider than the outer diameter of a muffler’s
tubular portion is wider than the outer diameter of the widest of the tubular
portions, but so dimensioned to be narrower than the width of a muffler’s
flange the narrowest flanges; and
a length that is so dimensioned to be longer than the plurality of the widths of the
flanges longer than the sum of the widths of all of the flanges.

LAS99 1543403-1.064706.0077

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12.

(Original) The muffler pipe hanger system of claim 11 wherein the plurality of elongated support
members include a first, second, and third sequentially-positioned elongated support member,
the first and second of which are spaced apart by an amount that is different than the spacing
between the second and third.

13.

(Original) The muffler pipe hanger of claim 12 wherein each of the elongated support members
are releasably attached to the horizontal supports.

14.

(Original) The muffler pipe hanger of claim 13 further including a set screw in each of the
elongated support members oriented to effectuate the releasable attachment.

15.

(Withdrawn) A muffler pipe hanging process for hanging a muffler pipe, the muffler pipe
including a tubular portion and a flange attached to one end of the tubular portion that is
configured to be bolted to an engine manifold, the muffler pipe hanging process comprising:
positioning the muffler pipe such that the tubular portion is substantially vertical with the flange
on top;
moving the muffler pipe in a substantially horizontal direction while sliding it into a slot with the
flange positioned above the slot; and
allowing the flange of the muffler pipe to engage the slot by releasing the muffler pipe while in
the slot.

16.

(Withdrawn) The muffler pipe hanging process of claim 15 further comprising sliding one or
more additional muffler pipes in the slot by repeating each of the steps of the process in claim
15.

17.

(Withdrawn) The muffler pipe hanging process of claim 16 wherein all of the mufflers pipes are
of substantially the same size and configuration and further comprising sliding one or more
additional muffler pipes of a different size or configuration in a second slot different from the
first slot by repeating each of the steps of the process in claim 15 with respect to the additional
muffler pipes.

18.

(Withdrawn) A muffler pipe removal process for removing a muffler pipe from storage, the
that is configured to be bolted to an engine manifold, the muffler pipe removal process
comprising:
sliding the muffler pipe out of a slot by moving it in a substantially horizontal direction until it
disengages from the slot; and
moving the muffler pipe to a different location while disengaged from the slot.

19.

(Withdrawn) A muffler pipe hanger system construction process comprising:

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attaching a first elongated support member transversely to a set of substantially horizontal and
parallel supports;
attaching a second elongated support member transversely to the substantially horizontal and
parallel supports at a spacing from the first elongated support member that is based on
the amount of space that is needed for a first set of muffler pipes to be hung on the first
elongated support member and a second set of muffler pipes to be hung on the second
elongated supported members without touching the first set of muffler pipes; and
attaching a third elongated support member transversely to the substantially horizontal and
parallel supports at a spacing from the second member that is different than the spacing
between the first and second elongated support members and that is based on the
amount of space that is needed for a third set of muffler pipes to be hung on the third
elongated support member without touching the second set of muffler pipes.
20.

(Withdrawn) The muffler pipe hanger system construction process of claim 19 further
comprising releasably locking the first, second and third support members to the substantially
horizontal and parallel supports while spaced apart as set forth in claim 19.

21.

(Withdrawn) The muffler pip hanger system construction process of claim 20 wherein the
releasably locking includes rotating a set screw positioned within each of the support members.

LAS99 1543403-1.064706.0077

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REMARKS

Claims 1-21 are pending. Claims 15-21 have been withdrawn. Claims 1-14 were rejected.
Claims 1-2, 7-8, 11 are amended. Reconsideration and allowance are requested.
Claim Rejections – 35 USC § 112
Claims 1-14 were rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which applicant regards as the
invention. The Examiners states that the recitations with regard to the width and length of the
longitudinal slot relative to the diameter and width of flanges of the muffler pipes are vague and
indefinite since muffler pipes come in a variety of sizes, with similar vagueness found in claim 2, 7, 8,
and 11. Often times a claim may be rendered indefinite by reference to an object that is variable, but
this typical issue of object variability can often times not be avoided and the court has reconciled this
unfair blanket application of indefiniteness by allowing variable language to be used when the language
is as accurate as the subject matter permits.
A case where variable language was permitted was Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986), where a claim limitation specifying that a certain
part of a pediatric wheelchair be "so dimensioned as to be insertable through the space between the
doorframe of an automobile and one of the seats" was held to be definite. The court stated that the
phrase “so dimensioned” is as accurate as the subject matter permits, noting that the patent law does
not require that all possible lengths corresponding to the spaces in hundreds of different automobiles
be listed in the patent, let alone that they be listed in the claims. Here, the language in claim 1 was
changed to fall within this allowable language by the court, because as in Orthokinetics, Inc. patent law
does not require that all possible lengths and widths of muffler flanges and tubular portions be listed in
the patent or the claim. The language, being so dimensioned as having a width that is wider than a
muffler’s tubular portion but narrower than the width of a muffler’s flange, replaces the previous
rejected language, which should render the claim now definite and non-vague. This structural
difference between the claimed invention and the prior art patentably distinguishes the claimed
invention from the prior art.
The language in claims 2, 7, 8, and claim 11 were also changed accordingly, and therefore,
should also be considered definite and non-vague, and no longer rejected.
Claims 1-3 and 7-13 are rejected under 35 U.S.C. § 102(b) as being anticipated by Brousseau (US
patent no. 5,586,665). This rejection is respectfully traversed and reconsideration is requested. Claim 1
was previously anticipated by Brousseau because elements describing the width and length of the
longitudinal slot were not defined, and were rejected under 35 U.S.C § 112 as being indefinite and
vague. Undefined language is taken out the claim is read without that feature, which made claim 1
anticipated. As explained above, the vague and indefinite language has been amended to an acceptable
standard and should now be read into the claim, making the claim no longer anticipated by Brousseau,
LAS99 1543403-1.064706.0077

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as Brousseau no longer discloses an invention having all the claimed features of applicant’s invention
and the claimed invention is now patentably distinguished from the prior art.
Claims 2-3 and 7-10 are dependent on claim 1, and thus are also no longer anticipated by
Brousseau.
Claim 11 was also asserted to have the same vague and indefinite language deficiency as in
Claim 1, which was contended to have made that language undefined and those elements read out of
claim 1, rendering the claim anticipated by Brousseau, and as in Claim 1, the deficiency was also
remedied by amending the Claim 11 language, defining the language, which prompted the
corresponding elements to be read back into the claim, no longer rendering Claim 11 anticipated by
Brousseau, and making the claimed invention patentably distinguished.
Claims 12 and 13 are dependent on claim 11, and thus are also no longer anticipated by
Brousseau.
Claims 4, 5, and 14 were rejected under 35 U.S.C. § 103(a) as being unpatentable over
Brousseau (US patent no. 5,586,665) in view of Morrison (6,145, 678)). This rejection is respectfully
traversed and reconsideration is requested.
The examiner contends that the set screw on the releasably mounted mounting brackets, which
is desirable by Morrison to help ensure that the hanger support member does not slide or move during
use, was an obvious modification to Brousseau’s mounting brackets to one of ordinary skill in the art.
But this cannot be considered obvious when, in fact, Brousseau teaches away from this contention.
Brousseau discloses that fixed channels, and permanently secured assemblies are great disadvantages to
bottle dispensing and display racks, and his invention is a manifestation of his solidarity to that opposing
position, denouncing the benefit of such an element being advantageous, and therefore teaches away
from it. It is improper to combine references where the references teach away from their combination,
where in this case, Brosseau teaches away from the combination. The totality of the prior art must be
considered here, and proceeding contrary to accepted wisdom in the art is evidence of nonobviousness,
not obviousness. Additionally, known disadvantages in old devices would naturally discourage search
for new inventions, furthering the argument for nonobviousness.
Although the use of the set screw in Morrison was well known prior art, the teaching away of
Brousseau and his disclosure of the impractical and ill-advantageous nature of the set screw in
dispensing units is not reconciled, and as in United States v. Adams, 383 U.S. 39, 51-52, 148 USPQ 479,
483-84 (1966), the Court stated that "despite the fact that each of the elements of the Adams battery
was well known in the prior art, to combine them as did Adams, required that a person reasonably
skilled in the prior art must ignore" the teaching away of the prior art that such batteries were
impractical. Therefore, as in Adams, the prior art here teaches away as impractical, and unless ignored,
should also be found as nonobvious.

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Likewise, Claim 14, claiming the same set screw element, following the same logical argument
above, should not be found as obvious in view of Brousseau and Morrison.
Claim 5 is dependent on Claim 4, and thus is also not obvious in view of Brousseau and
Morrison.
Claim 6 was rejected under 35 U.S.C. § 103(a) as being unpatentable over Brousseau (US patent
no. 5,586,665) in view of Cooper et al (2,600,096), where Brousseau lacks, but Cooper contains an
elongated member that includes two L-shaped members held in spaced and parallel relationship by the
first and second mounting brackets with a slot there between. The examiner argues that such
arrangement has the well-known advantage of saving material and is thus obvious. In response,
applicant contends that the combination of references was not obvious and the advantage was not wellknown, and ultimately, the results argued by the Examiner of the claimed combination were
unexpected. Saving material seems to satisfy an economic interest, but we argue that also for economic
interests, other factors, such as material type and material weight are factors that are thought as being
of paramount importance instead of the amount of material used. It is additionally plausible that
additional material serves a functional benefit that could negate any benefit from saving material, such
as protective covering or weight counterbalance, which in totality proves that saving material is not a
well-known advantage, or an advantage that takes precedence.
At that time of invention a personal reasonably skilled in the art would have known that
mufflers with variable sized flanges and tubular portions may fit in this uncovered slot, unimpeded by
structural ceiling and height restrictions, whereby the slot will serve as the main functional aspect of the
invention—the slot used for hanging—and not know of the uncovered slot as a way to save material and
costs. In light of that knowledge, a person reasonably skilled in the art would make the invention in the
same manner, with an elongated member that includes two L-shaped members held in spaced and
parallel relationship by first and second mounting brackets with a slot there between, and not be
affected by a highly unobvious advantage of saving material.
Additionally and in conclusion, here, official notice without documentary evidence to support
the examiners conclusion of obviousness was given, and this is only permissible in some circumstances.
Official notice unsupported by documentary evidence should only be taken by the examiner where the
facts asserted to be well-known, or to be common knowledge in the art are capable of instant and
unquestionable demonstration as being well-known. Instant and unquestionable demonstration was
not given here. It is never appropriate to rely solely on "common knowledge" in the art without
evidentiary support in the record, as the principal evidence upon which a rejection was based. If such
notice is taken, the basis for such reasoning must be set forth explicitly. To set forth explicitly the
examiner must provide specific factual findings predicated on sound technical and scientific reasoning to
support his or her conclusion of common knowledge. In this instance, the examiner did not set for
explicitly the specific factual findings to support his or her conclusion of common knowledge and can
therefore not be concluded as common knowledge, and the invention should furthermore not be
deemed as obvious over Brousseau in view of Cooper.

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CONCLUSION

For the foregoing reasons, it is respectfully submitted that this application is now in condition for
allowance and early notice of the same is earnestly requested.
To the extent necessary, a petition for an extension of time under 37 C.F.R. § 1.136 is hereby
made. Please charge any shortage of fees due in connection with the filing of this paper, including
extension of time fees, to Deposit Account XXXXXX and please credit any excess fees to such deposit
account.
Respectfully submitted,
Law Office of Bryan E. Johnson

Bryan Johnson, Registration No. xxxxx
P.O. Box # 6

Please recognize our Customer No. xxxxx

Bellflower, CA 90706
Phone: (213) xxx-xxxx
Date: April 4, 20xx

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[Writing Sample] USPTO Office Action Response by Bryan Johnson

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