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 .
DETAILED ACTION
This is a final office action in response to the amendment filed 4/6/2018.
Claims 33-34 are amended and claims 3, 11-21, 26, and 28 are canceled.
Receipt is acknowledged of the Terminal Disclaimer.
Claims 1-2, 4-10, 22-25, 27 and 29-34 are pending and examined.
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 1-2, 4-10, 23-25 and 29-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim claims 1-19 of copending Application No. 17/951,504('504: US. Pat. Publ. 2023/0139451, cited on PTO 892) in view of Carleton.
Regarding claims 1-2, 10, 23-25 and 29-34, '504 discloses a system(see claims 1 and 12 of 504) having a rail, one or more shading devices including a PV element/array (see claims 2 and 15) slidable parallel to an external surface of the building/house on the rail(see claims 1 and 4), the devices rotatable(see claim 1) and a programmable controller directly or indirectly coupled to the device(s) to move the device(s), the controller moves the devices on an external surface of the building(see claim 1), the external surface has a wall and roof(considered inherent to a building/house), the system is configured to conserve energy(inherent to a PV system), the controller moves the devices based on a building energy model(see claims 1-2 and 12 and 17), the model being the specific device used(and inherently the characteristics thereof), the building model(considered the specific building and roof used, see claims 2 and 17, "energy usage of the building" inherently setting forth that the model of the building is used to determine the usage), and climate information(see claim 1), the model estimating energy performance throughout the day(see claim 1).
'504 lacks the device specifically with a smart feature.
Carleton discloses a system having smart shading devices(110,111) and a programmable controller(see column 8, lines 12-16).
It would have been well within the purview of a skilled artisan to have provided the device of '504 with the smart feature, as disclosed by Carleton, in order to have provided the system with shading features as desired by the user. The specific tint and placement of the smart devices is considered a feature best determined by a skilled artisan given the intended use of the device and design requirements thereof.
The specific use of any properties of the roof to provide better use of the system
is considered a feature well within the purview of a skilled artisan given the intended us
of the system and design requirements thereof. The specific angle of rotation is
considered a feature best determined by the skilled artisan given the intended use of
the system and design requirements thereof.
Regarding claim 4, '504 and Carleton disclose the system of claim 1, wherein the
device is configured as a rotatable overhang(see claim 8) extending over a wall
surface(the device is attached to the building and therefore has at least a portion
extending over a wall surface meeting the claim limitation).
Regarding claim 5, '504 and Carleton disclose the system of claim 1, wherein the
device(s) are slidable(see claim 4, the device is moveable on rails indicating that the
device is "slid" meeting the claim limitation) wherein the building inherently has a roof
and the device is therefore slidable "with respect to the roof".
Regarding claim 6, '504 and Carleton disclose the system of claim 1, wherein the
device(s) are slidable(see claim 5) but lacks the location of the panel when slid.
The use of the device over a window or along a roof is considered a feature best
determined by a skilled artisan given the intended use of the device and design
requirements thereof.
Regarding claims 7-9, '504 and Carleton disclose the system of claim 1, wherein
the device(s) are an overhang(the term "overhang" implies the device I used on a roof to overhang a wall to shade a wall or window meeting the functional claim limitation). The device(s) is rotatable and would be obvious to provide a variety of angles given the
intended use of the system and design requirements thereof. The specific angle and
location of the device(s) is considered a feature best determined by a skilled artisan.
This is a provisional nonstatutory double patenting rejection.
Claims 22 and 27 are provisionally rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-19 of copending Application No. 17/951
,504 and Carleton, in view of Bahn and Watson.
'504 and Carleton disclose the system of claim 1, but lack the use of a solar
tracker.
Bahn and Watson disclose solar devices with solar tracking devices to control the
rotation of the device with respect to the sun.
It would have been well within the purview of the skilled artisan to have provided
the system of '504 and Carleton with a solar tracker, such as disclosed by Bahn and
Watson, with the controller controlling the tracker in order to have provided for better
orientation of the devices with respect to the sun to allow for better energy control
thereof.
This is a provisional nonstatutory double patenting rejection.
Response to Amendment
Applicant's amendment has overcome the previous 112 rejection.
The Terminal Disclaimer filed has not been entered for the following reasons:
The applicant cited on the TD should be cited exactly as cited on the ADS form, in its entirety.
TD filing date is incorrect(signed after date of filing).
The reference application filing date is incorrect(17/491,504 filed 9/30/2021).
A new TD should be filed correcting the above issues. No new fee is necessary.
Response to Arguments
Applicant’s arguments regarding the 112 rejection is moot given that the rejection has been overcome.
Applicant’s argument regarding the double patenting rejection has been discussed above.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETH A. STEPHAN whose telephone number is (571)272-1851. The examiner can normally be reached M-F 8a-4:30p.
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, Brian Glessner can be reached at 571-272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BETH A. STEPHAN
Primary Examiner
Art Unit 3633
/Beth A Stephan/