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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/08/2026 has been entered.
Claim Objections
The claims are objected to because the pages appear at a reduced size with markup notes in the margin, making reading difficult. See claim 24. Substitute claims with lines one and one-half or double spaced on good quality paper are required. See 37 CFR 1.52(b).
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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 1,4,6,9,12-13,15,21-27 and 30-34 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 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 9 recite in part “wherein the extension structure is not adjustably positionable relative to the base structure.” There is not sufficient support for this limitation in the application as filed. This constitutes new matter.
Claims 4, 6, 12-13, 15, 21-27, and 30-34 are at least rejected for depending from rejected claims 1 and 9, respectively. Dependent claims contain all limitations of the claims from which they depend, and therefore inherit their new matter issues.
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 1,4,6,9,12-13,15,21-27 and 30-34 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.
Claim 1 recites in part “wherein the extension structure is not adjustably positionable relative to the base structure.” Claim 1 also recites “the extension structure and the mounting arrangement define an assembly that is collectively configured to be securable to the base structure at any elevation below the upper surface of the roof”. It is unclear as to how the extension structure can both be securable to the base structure at any elevation and not adjustably positionable. Please clarify.
Claim 9 recites in part “wherein the extension structure is not adjustably positionable relative to the base structure.” Claim 9 also recites “wherein the inner perimeter of the extension structure, the inner perimeter of the side cover first segment, and the inner perimeter of the side cover second segment are collectively configured to secure the apparatus to the base structure at any elevation below the upper surface of the roof”, and “wherein the apparatus is discrete from the base structure and from the roof”. It is unclear as to how the extension structure can both be securable to the base structure at any elevation and not adjustably positionable. Please clarify.
Claims 4, 6, 12-13, 15, 21-27, and 30-34 are at least rejected for depending from rejected claims 1 and 9, respectively. Dependent claims contain all limitations of the claims from which they depend, and therefore inherit their clarity issues.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 6, 9, 13, 21-23, 25-26, 30-31, and 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. 6,170,502 – Pullen.
Regarding claim 1.
Pullen discloses an apparatus (10, fig 3), comprising:
an extension structure (at 40, fig 3; including 36, fig 2) configured to be secured to a base structure (including 20, fig 3) and comprising a first end and a second end (See annotated fig 3);
a side cover assembly (See annotated fig 3) comprising a side cover first portion (See annotated fig 3) that is configured to wrap around the extension structure and a side cover second portion (See annotated fig 3), the side cover second portion comprising a side cover first segment that extends from the first end and a side cover second segment that extends from the second end (See annotated fig 3), wherein the side cover assembly further comprises a mounting arrangement configured to mount the side cover first segment to the base structure and to mount the side cover second segment to the base structure (See annotated fig 3);
a top cover (See annotated fig 3) that is configured to rest atop (top cover rests atop at least element 36, fig 2, see fig 3) and cover the extension structure but not to cover an open area disposed between and bounded by the side cover first segment and the side cover second segment (compare figs 2 and 3), that is configured to act as an extension roof of the base structure, and that is configured to be positioned at an elevation that is below at least an upper surface (at 50, fig 3) of a roof of the base structure (See fig 3);
wherein the open area is configured to be positioned under and covered by the roof of the base structure (Compare figs 2 and 3);
wherein the apparatus is discrete from the base structure and is discrete from the roof of the base structure (Compare figs 2 and 3), and
wherein the extension structure and the mounting arrangement define an assembly that is collectively configured to be securable to the base structure (Compare figs 2 and 3) at any elevation below the upper surface of the roof of the base structure (See fig 3); and
wherein the extension structure is not adjustably positionable relative to the base structure (the position of the extension structure is fixed, when deployed, by the length of 12 in fig 2 from the pivot of the hinging mechanism).
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Regarding claim 4.
Pullen discloses all limitations of claim 1.
Pullen further discloses a total length of the side cover first segment (See annotated fig 3) and the side cover second segment (See annotated fig 3) is greater than a total length of the side cover first portion (See annotated fig 3).
Regarding claim 6.
Pullen discloses all limitations of claim 1.
Pullen further discloses the side cover first portion and the side cover second portion (See annotated fig 3) comprise a curtain comprising a flexible substrate (40, fig 3), and wherein the curtain is configured to raise and lower (Compare figs 2 and 3); and wherein when lowered, the curtain hags below the extension structure (below the top of 36 in fig 2, compare figs 2 and 3).
Regarding claim 9.
Pullen discloses an apparatus (10, fig 3), comprising:
an extension structure (at 40, fig 3) configured to be cantilevered (see fig 3) from a base structure (including fig 3) and comprising a first end and a second end (See annotated fig 3);
a top cover (See annotated fig 3) that is configured rest atop (atop 36, see fig 2) and to cover the extension structure (See annotated fig 3), that is configured to act as an extension roof of the base structure (See annotated fig 3), and that is configured to be positioned at an elevation that is below at least an upper surface of a roof (at 50, fig 3) of the base structure (See annotated fig 3); and
a side cover assembly (See annotated fig 3) comprising a side cover first portion (See annotated fig 3) that is configured to wrap around the extension structure and a side cover second portion (See annotated fig 3), the side cover second portion comprising a side cover first segment (See annotated fig 3) that extends from the first end and a side cover second segment (See annotated fig 3) that extends from the second end;
wherein an outer perimeter of the apparatus is defined at least partly by an outer perimeter of the side cover first portion, plus an outer perimeter of the side cover first segment, plus an outer perimeter of the side cover second segment (See annotated fig 3);
wherein an inner perimeter of the apparatus is defined at least partly by an inner perimeter of the extension structure (See annotated fig 3), plus an inner perimeter of the side cover first segment (See annotated fig 3), plus an inner perimeter of the side cover second segment (See annotated fig 3), wherein the inner perimeter of the side cover first segment (See annotated fig 3) and the inner perimeter of the side cover second segment both extend transverse to the inner perimeter of the extension structure (See annotated fig 3), and wherein the inner perimeter of the extension structure, the inner perimeter of the side cover first segment, and the inner perimeter of the side cover second segment are collectively configured to secure the apparatus to the base structure at any elevation below the upper surface of the roof of the base structure (See annotated fig 3); and
wherein the top cover does not cover an open area bounded by the inner perimeter (See annotated fig 3);
wherein the open area is configured to be positioned under and covered by the roof of the base structure (See annotated fig 3); and
wherein the apparatus is discrete from the base structure and from the roof of the base structure (See annotated fig 3); and
wherein the extension structure is not adjustably positionable relative to the base structure (the position of the extension structure is fixed, when deployed, by the length of 12 in fig 2 from the pivot of the hinging mechanism).
Regarding claim 13.
Pullen discloses all limitations of claim 9.
Pullen further discloses the side cover assembly (See annotated fig 3) comprises one continuous section of flexible substrate (See annotated fig 3) that is configured to raise and lower (Compare figs 2 and 3) from the side cover first portion (See annotated fig 3), from the side cover first segment (See annotated fig 3), and from the side cover second segment (See annotated fig 3); and wherein when lowered, the curtain hags below the extension structure (below the top of 36 in fig 2, compare figs 2 and 3).
Regarding claim 21.
Pullen discloses all limitations of claim 6.
Pullen further discloses the curtain (40, fig 3) is composed of one continuous piece of the flexible substrate (See fig 3) that raises and lowers (Compare figs 2 and 3).
Regarding claim 22.
Pullen discloses all limitations of claim 1.
Pullen further discloses an inner perimeter of the apparatus is defined by an inner perimeter of the extension structure (See annotated fig 3), plus an inner perimeter of the side cover first segment (See annotated fig 3), plus an inner perimeter of the side cover second segment (See annotated fig 3);
wherein the inner perimeter of the apparatus defines a C-shape when viewed from above (See annotated fig 3), and,
wherein the inner perimeter bounds the open area (See annotated fig 3).
Regarding claim 23.
Pullen discloses all limitations of claim 1.
Pullen further discloses a side cover third segment (opposite top cover, annotated fig 3);
wherein an inner perimeter of the apparatus is defined by an inner perimeter of the extension structure (See annotated fig 3), plus an inner perimeter of the side cover first segment (See annotated fig 3), plus an inner perimeter of the side cover second segment (See annotated fig 3), plus an inner perimeter of the side cover third segment (See annotated fig 3);
wherein the inner perimeter of the apparatus defines an enclosed hole through the apparatus when viewed from above (See annotated fig 3); and
wherein the inner perimeter bounds the open area (See annotated fig 3).
Regarding claim 25.
Pullen discloses all limitations of claim 9.
Pullen further discloses the inner perimeter of the apparatus defines a C-shape when viewed from above (See annotated fig 3).
Regarding claim 26.
Pullen discloses all limitations of claim 9.
Pullen further discloses a side cover third segment (Opposite extension structure, annotated fig 3);
wherein the inner perimeter of the apparatus is defined by the inner perimeter of the extension structure (See annotated fig 3), plus the inner perimeter of the side cover first segment (See annotated fig 3), plus the inner perimeter of the side cover second segment (See annotated fig 3), plus an inner perimeter of the side cover third segment (See annotated fig 3);
wherein the inner perimeter of the apparatus defines an enclosed hole through the apparatus when viewed from above (See annotated fig 3).
Regarding claim 30.
Pullen discloses all limitations of claim 1.
Pullen further discloses the side cover assembly further comprises a valance (See on 50, fig 3) configured to be secured to the base structure (Via at least 53, fig 3) and to extend downward from a bottom of the roof of the base structure (See fig 3) to the mounting arrangement to cover the mounting arrangement (At least partially – see annotated fig 3).
Regarding claim 31.
Pullen discloses all limitations of claim 30.
Pullen further discloses the valance is also configured to extend downward from the bottom of the roof of the base structure to connect to the top cover (See annotated fig 3).
Regarding claim 33.
Pullen discloses all limitations of claim 1.
Pullen further discloses the side cover second portion (See annotated fig 3) further comprises a side cover third segment (along rear 36, fig 2) that connects the side cover first segment to the side cover second segment (See figs 2 and 3);
wherein the mounting arrangement is further configured to mount the side cover third segment to the base structure (See figs 2 and 3);
wherein the side cover first portion and the side cover second portion completely encircle the base structure (See figs 2 and 3); and
wherein the side cover first portion and the side cover second portion comprise a curtain comprising a flexible substrate (40, fig 3), wherein the curtain is configured to raise and lower (See figs 2 and 3), and wherein when lowered, the curtain hangs below the extension structure (at 36, fig 2) and completely encircles the base structure (See figs 2 and 3).
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) 12 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pullen in view of PG Pub. US 2022/0243495 A1 – Davis, JR, hereinafter Davis.
Regarding claim 12.
Pullen discloses all limitations of claim 9.
Pullen does not explicitly disclose an area of the open area defined by the inner perimeter is greater than an area covered by the top cover.
However, Davis teaches an area of the open area defined by the inner perimeter (approximated by 170a in fig 15) is greater than an area covered by the top cover (at 340, fig 15).
It would have been obvious to a person having ordinary skill in the art, with a reasonable expectation of success, before the effective filing date of the claimed invention to modify the apparatus of Pullen with the relative dimensions of Davis. One of ordinary skill in the art would have been motivated to make this modification in order to yield the predictable result of ensuring stability by limiting the cantilever arm.
Regarding claim 15.
Pullen discloses all limitations of claim 13.
Pullen further discloses the side cover assembly (See annotated fig 3) comprises a mounting arrangement (Column 4, lines 19-22; The tarp 40 may be retained by hook and loop fastener between the first wall 20 and the second wall 22 for insuring proper sealing.) configured to secure the flexible substrate to the base structure (including 20, fig 3) and to raise and lower the flexible substrate (Compare figs 2 and 3), and a valance (See 50, fig 3) configured to extend from a bottom of the roof of the base structure (at 50, fig 3) to the mounting arrangement (See fig 2) and to cover the flexible substrate and the mounting arrangement (See fig 3).
Pullen does not disclose a removable valance.
However, Davis teaches a removable valance (160, fig 3).
It would have been obvious to a person having ordinary skill in the art, with a reasonable expectation of success, before the effective filing date of the claimed invention to modify the apparatus of Pullen with the removable valance of Davis. One of ordinary skill in the art would have been motivated to make this modification in order to yield the predictable result of allowing selective replacement of panels in case of damage.
Claim(s) 24, 27, and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pullen in view of PG Pub. US 2019/0118913 A1 – Bejrowski et al., hereinafter Bejrowski.
Regarding claim 24.
Pullen discloses all limitations of claim 22.
Pullen further discloses the base structure (See annotated fig 3).
Pullen does not disclose wherein the base structure comprises a boat slip comprising:
a plurality of pilings that define a perimeter of the boat slip and that define an entrance between two adjacent pilings suitable to permit a boat to enter the boat slip;
wherein the apparatus is secured to the plurality of pilings; and
wherein the extension structure is secured over the entrance and cantilevers out past the entrance.
However, Bejrowski teaches wherein the base structure (60, fig 1) comprises a boat slip comprising:
a plurality of pilings (34a, fig 1) that define a perimeter of the boat slip and that define an entrance between two adjacent pilings suitable to permit a boat (12, fig 1) to enter the boat slip (See fig 1);
wherein the apparatus is secured to the plurality of pilings (See fig 1); and
wherein the extension structure (70, fig 1) is secured over the entrance and cantilevers out past the entrance (See fig 1).
It would have been obvious to a person having ordinary skill in the art, with a reasonable expectation of success, before the effective filing date of the claimed invention to modify the apparatus of Pullen with the boat slip of Bejrowski. One of ordinary skill in the art would have been motivated to make this modification in order to yield the predictable result of providing weather protection to the boat slip.
Regarding claim 27.
Pullen discloses all limitations of claim 25.
Pullen further discloses the base structure (See annotated fig 3).
Pullen does not disclose wherein the base structure comprises a boat slip comprising:
a plurality of pilings that define a perimeter of the boat slip and that define an entrance between two adjacent pilings suitable to permit a boat to enter the boat slip;
wherein the apparatus is secured to the plurality of pilings; and
wherein the extension structure is secured over the entrance and cantilevers out past the entrance.
However, Bejrowski teaches wherein the base structure (60, fig 1) comprises a boat slip comprising:
a plurality of pilings (34a, fig 1) that define a perimeter of the boat slip and that define an entrance between two adjacent pilings suitable to permit a boat (12, fig 1) to enter the boat slip (See fig 1);
wherein the apparatus is secured to the plurality of pilings (See fig 1); and
wherein the extension structure (70, fig 1) is secured over the entrance and cantilevers out past the entrance (See fig 1).
It would have been obvious to a person having ordinary skill in the art, with a reasonable expectation of success, before the effective filing date of the claimed invention to modify the apparatus of Pullen with the boat slip of Bejrowski. One of ordinary skill in the art would have been motivated to make this modification in order to yield the predictable result of providing weather protection to the boat slip.
Regarding claim 34.
Pullen discloses all limitations of claim 1.
Pullen does not disclose an interior of the extension structure is open to the environment via an open underside of the extension structure.
However, Bejrowski teaches an interior of the extension structure (70, fig 1) is open to the environment via an open underside of the extension structure (See fig 1).
It would have been obvious to a person having ordinary skill in the art, with a reasonable expectation of success, before the effective filing date of the claimed invention to modify the apparatus of Pullen with the open underside of Bejrowski. One of ordinary skill in the art would have been motivated to make this modification in order to yield the predictable result of providing weather protection to a boat slip.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pullen in view of US Pat. 6,695,388 – Thisdale.
Regarding claim 32.
Pullen discloses all limitations of claim 1.
Pullen does not explicitly disclose the apparatus is not directly connected to the roof.
However, Thisdale teaches the apparatus (at 28, fig 4) is not directly connected to the roof of the base structure (at 34, fig 4; connection is indirect via hook and loop attachment to the valance (See fig 4)).
It would have been obvious to a person having ordinary skill in the art, with a reasonable expectation of success, before the effective filing date of the claimed invention to modify the apparatus of Pullen with the indirect connection of Thisdale. One of ordinary skill in the art would have been motivated to make this modification in order to yield the predictable result of allowing selective removal of the apparatus for cleaning and service.
Response to Arguments
Applicant’s arguments submitted 12/18/2025 have been fully considered, but are not persuasive.
The new claim limitation “wherein the extension structure is not adjustably positionable relative to the base structure.” is not supported by the original disclosure. Applicant argues that an artisan would reasonably infer this due to a lack of disclosure of adjustability. This is not persuasive, as inference is not disclosure, and furthermore, it is claimed that the apparatus is “securable to the base structure at any elevation”. The ability to change the elevation at which it is secured is an element of adjustability of position.
Arguments directed to the boat slip and open bottom are moot in light of the new grounds of rejection set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN W HANES JR whose telephone number is (571)272-8840. The examiner can normally be reached M-F 8-5 EST.
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/J.W.H./ Examiner, Art Unit 3634
/DANIEL P CAHN/ Supervisory Patent Examiner, Art Unit 3634