DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/01/2025 has been entered.
Claims 1 – 15 and 17 – 18 remain pending in the application.
The Applicant’s amendment has overcome the 35 U.S.C. 102 and 103 prior art rejections of record and these rejections have been overcome.
It is noted the 35 U.S.C. 112 (a) and (b) rejections from the Office Action dated 03/03/2025 have not been overcome and are repeated below. Since these are the same grounds of rejection from the Office Action dated 03/03/2025, this Office Action is made FINAL.
Response to Arguments
Applicant’s arguments with respect to 35 U.S.C. 112(f) interpretation, as recited on Page 5, have been fully considered but are not persuasive.
Regarding the argument “Applicant has added language to better define the volume controller, as recited on Page 5, the amendments to Claim 1 and Claim 18 do no recite structure related to the volume controller (Claim 1)/volume control device (Claim 17).
The Examiner notes that the claim recite how the “volume control device” and “volume controller” are installed within the device, but this does not impart structure of the “volume control device” and “volume controller”. Further, reciting the device/controller is removable also does not impart of the “volume control device” and “volume controller”.
Since both “removable volume controller” and “volume control device” implies structure, without reciting the structure that performs the function of controlling volume, these terms are correctly interpreted under 35 U.S.C. 112(f).
Regarding the argument “Claims 1 – 15 and 17 – 18 are rejected under written description requirement. One of skill in the art would understand that a volume controller is a type of damper”, as recited on Page 5 of the Remarks, the Examiner respectfully disagrees.
Although the claim defines where the volume controller is located in the device, this does not impart physical structure of the volume controller. Since the specification lacks written description of the structure of the volume controller, one cannot ascertain the metes and bounds of the claims.
A “volume controller” or “volume control device” could be interpreted by one of ordinary skill in the art as an electronic device or processor that adjusts the position of the dampers of regulate the volume through the device. Since the disclosure does not provide support for the statement “a volume controller is a type of damper”, there is insufficient written description for this argument.
This 35 U.S.C. 112(a) written description rejections are upheld.
Regarding the comment “Examiner… interprets “volume control device within two frame projections and between two guide strips” as “removable controller within a frame projection or between two guide strips”. Applicant agrees with Examiner’s interpretation”, the Applicant did not amend Claims 1 and 18 according to the Examiner’s suggested claim language. Therefore, the 35 U.S.C. 112(a) rejection of “volume control device within two frame projections and between two guide strips” is upheld.
To overcome this rejection, Claims 1 and 18 should be amended to recite “a removable controller within a frame projection or between two guide strips” and “a volume control device within a frame projection or between two guide strips”, respectively.
Regarding the argument “Claims 1 – 15 and 17 – 18 are rejected as indefinite. Applicant has amended the claims and states one of skill would understand that a removable volume controller is a type of damper”, as recited on Page 5 of the Remarks, the Examiner respectfully disagrees.
Although the claim defines where the volume controller is located in the device, this does not impart physical structure of the volume controller. Since the specification lacks written description of the structure of the volume controller, one cannot ascertain the metes and bounds of the claims.
A “volume controller” or “volume control device” could be interpreted by one of ordinary skill in the art as an electronic device or processor that adjusts the position of the dampers of regulate the volume through the device. Since the disclosure does not provide support for the statement “a volume controller is a type of damper”, there is insufficient written description for this argument.
Because the metes and bounds of Claims 1 and 18 cannot be ascertained, the 35 U.S.C. 112(b) rejections are upheld.
The Applicant’s arguments with respect to the 35 U.S.C. 102 and 103 prior art rejections have been fully considered and are persuasive.
The 35 U.S.C. 102 and 103 rejections have been withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a removable volume controller” in Claim 1 and “a volume control device” in Claim 18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: Page 4, lines 13, 15, 16-17, and 18-19 recite "volume control device" but does not recite any structure to the volume control device. The Examiner notes "the dry wall extrusion frame to comprise a frame, a damper and/or volume control device having linear bars (Page 4, lines 12-13)", when read in light of the drawings, does not recite structure for the volume control device, since the linear bars do not control volume. Rather the linear bars are a separate component of the frame, as illustrated in Figure 4. Page 8 recites "removable volume controllers 84" in line 9, "removable volume controllers 114" in line 13 and "removable volume controllers 150" in line 21. Page 9 recites "removable volume controllers 170" in line 3, "removable volume controllers 190" in line 6, and "removable volume controllers 210" in line 10. The specification does not recite structure for the removable volume controller. It is noted the Applicant's Specification does not describe the structure of the removable volume controller or the volume control device to perform the function of controlling the volume.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1 – 15 and 17 – 18 are is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a removable volume controller” in line 5.
The specification, as originally filed on 03/14/2022, merely recites “removable volume controllers” on Page 8, lines 9, 13, and 21 and Page 9, lines 3, 6, and 10.
As no structural components of the controller are recited in the description to perform the function of controlling volume, the metes and bounds of “removable volume controller” cannot be determined.
Claim 1 recites “a removable volume controller within two frame projections and between two guide strips” in lines 5-6.
Support for a removable volume controller within two frame projections and between two guide strips is not present in the specification or original claims failed 08/19/2011, and therefore fails to comply with the written description requirement.
Page recites “Figure 1 shows the plaster frame 10 having a controller 20 between two guide strips 25 and 30”, which provides support for locating the controller between two guide strips.
Page recites “Figure 3 shows frame projection 70… Within the frame projection 70 is removable volume controller 84”, which provides support for locating the removable volume controller within a single frame projection (but not between “two frame projections”) . The specification does not provide support for “two frame projections” in Figures 4 – 9 either, as the term “frame projection” is recited.
It is noted each of the Applicant’s figures are a different embodiment. Therefore, there is no support for locating the removable volume controller between both a frame projection and two guide strips.
For purposes of examination, the Examiner interprets “a removable volume controller within two frame projections and between two guide strips” in lines 5-6 to recite “a removable volume controller within a frame projection or between two guide strips”. Please note, this does not rectify or overcome the 35 U.S.C. 112(a) and (b) rejection of “removable volume controller”.
Claims 2 – 15 and 17 are rejected for their dependency on Claim 1.
Claim 18 recites “a volume control device” in line 4.
The specification, as originally filed on 03/14/2022, merely recites “volume control device” on Page 4, lines 13, 15, 16-17, and 18-19..
As no structural components of the device are recited in the description to perform the function of controlling volume, the metes and bounds of “volume control device” cannot be determined.
Claim 18 recites “a volume control device within two frame projections and between two guide strips” in lines 5-6.
Support for a volume control device within two frame projections and between two guide strips is not present in the specification or original claims failed 08/19/2011, and therefore fails to comply with the written description requirement.
Page recites “Figure 1 shows the plaster frame 10 having a controller 20 between two guide strips 25 and 30”, which provides support for locating the controller between two guide strips.
Page recites “Figure 3 shows frame projection 70… Within the frame projection 70 is removable volume controller 84”, which provides support for locating the removable volume controller within a single frame projection (but not between “two frame projections”) . The specification does not provide support for “two frame projections” in Figures 4 – 9 either, as the term “frame projection” is recited.
It is noted each of the Applicant’s figures are a different embodiment. Therefore, there is no support for locating the volume control device between both a frame projection and two guide strips.
For purposes of examination, the Examiner interprets “a volume control device within two frame projections and between two guide strips” in line 4 to recite “a removable volume controller within a frame projection or between two guide strips”. Please note, this does not rectify or overcome the 35 U.S.C. 112(a) and (b) rejection of “volume control device”.
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.
Claims 1 – 15 and 17 – 18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites “a removable volume controller” in line 5.
The specification, as originally filed on 03/14/2022, merely recites “removable volume controllers” on Page 8, lines 9, 13, and 21 and Page 9, lines 3, 6, and 10.
One of ordinary skill in the art cannot ascertain the metes and bounds of “removable volume controller” without a written description. Is it a valve? A damper? A fan? A door? Does “controller” imply it is electrically controlled between positions? How does the “removable volume controller” control the volume through the frame?
As no structural components of the controller are recited in the description to perform the function of controlling volume, the metes and bounds of “removable volume controller” cannot be determined. This yields the claim indefinite.
Claims 2 – 15 and 17 are rejected for their dependency on Claim 1.
Claim 18 recites “a volume control device” in line 4.
The specification, as originally filed on 03/14/2022, merely recites “volume control device” on Page 4, lines 13, 15, 16-17, and 18-19.
One of ordinary skill in the art cannot ascertain the metes and bounds of “volume control device” without a written description. Is it a valve? A damper? A fan? A door? Does “device” imply it is electrically controlled between positions? How does the “volume control device” control the volume through the frame?
As no structural components of the device are recited in the description to perform the function of controlling volume, the metes and bounds of “volume control device” cannot be determined. This yields the claim indefinite.
Appropriate action is required.
Allowable Subject Matter
Claims 1 – 15 and 17 – 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and (b) set forth in this Office action.
Please see the Applicant’s arguments regarding Claims 1 and 18 in the Remarks filed 09/01/2025. The prior art does not teach the each and every limitation of Claim 1 and Claim 18.
Regarding Claim 1, the prior art, either along or in combination, does not teach or suggest a device comprising a one piece dry wall extrusion frame with slot diffuser, pre-drilled installation holes in said frame, a lip for plastering, a removable volume controller within two frame projections and between two guide strips, said volume controller controlling volume and direction of air, a removable damper and a damper directional blade, and capture recesses for plaster.
Claims 2 – 15 and 17 depend from Claim 1.
Regarding Claim 19, the prior art, either alone or in combination, does not teach or suggest a device comprising a one piece dry wall extrusion frame with a slot diffuser, a removable damper and a damper directional blade, a volume control device within two frame projections and between two guide strips, and linear bars or a perforated panel.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/D. T./
Examiner, Art Unit 3762
/AVINASH A SAVANI/Primary Examiner, Art Unit 3762