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 .
Drawings
The drawings filed 9/6/2024 are accepted.
Specification
The specification filed 9/6/2024 is accepted.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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) 1-3, 7-9, 14, 17, 19, 24, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 9074411) in view of Weekes (US 20210017809).
Regarding claim 1, Miller teaches a rolling shutter (fig. 5), comprising:
first (1b) and second slats (1a), each slat having inner (left side fig. 7) and outer sides (right side fig. 7), a first edge with a hook-shaped engaging track (7) that extends to an engaging track tip (33), and a second edge with a receiving track (8) comprising a lip member (10) and a guard member (11) that are spaced apart to form an aperture that is sized and shaped to receive the engaging track of another slat (fig. 8),
the lip member (10) including a lip member bend (42) extending to a receiving track tip (25) and forming an articulation space (20) with an articulation space inner surface (fig. 4), and the guard member (11) extending to a guard member tip (see fig. 4);
wherein the engaging track (7) of the first slat (1b) is received in the articulation space of the second slat (1a) to couple the first and second slats and form an articulating hinge (fig. 8);
the hinge has a vertical position (position where the elements are considered vertical, see fig. 9) with the engaging track of the first slat having a range of vertical displacement in the aperture of the second slat with a vertical clearance between the engaging track and the guard member tip (in figs. 8 and in fig. 9, you can see that there is a little room between the elements that allows slight vertical movement of the slats relative to each other, this is confirmed by the applicant in the arguments dated 6/9/2026 as they quote column 7 line 56 though column 8 line 5) and with a vertical separation between the engaging track tip and the articulation space inner surface (see fig. 9), and wherein
the engaging track (7) of the first slat (1b) pivots on the receiving track tip (25) of the second slat (shown in fig. 8) and does not pivot on the receiving track inner surface (in the same way as the instant application, fig. 8 clearly shows that it pivots on element 25 instead of pivoting on the receiving track inner surface), and the hinge is rotatable from the vertical position in a backward direction (counterclockwise) with a maximum angle of backward rotation greater than an amount, and in a forward direction with a maximum angle of forward rotation.
Miller does not explicitly teach that the vertical clearance is at least about 0.025 inches and that the vertical separation between the engaging track tip and the articulation space inner surface is at least about 0.025 inches, nor that the maximum angle of backward rotation is greater than 10 degrees, and the maximum angle of forward rotation is between about 70 degrees to about 80 degrees.
The examiner notes that the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller so that the vertical clearance is at least about 0.025 inches and that the vertical separation between the engaging track tip and the articulation space inner surface is at least about 0.025 inches. This alteration provides the predictable and expected results of there being the right amount of play between he components to keep them functioning even with any expansion or contraction during change of seasons.
Weekes teaches a rolling shutter with a first (300a) and a second slat (300b), with a maximum angle of backward rotation greater than 10 degrees from a vertical position (as described in paragraph 33). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller with the teachings of Weekes so that the maximum angle of backward rotation greater than 10 degrees from the vertical position. This alteration provides the predictable and expected results of user required specifications that allow the device to roll up.
The examiner notes that the courts have held that it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438 (CCPA 1929) (""). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller so that the maximum angle of forward rotation is between about 70 degrees to about 80 degrees. This alteration provides the predictable and expected results of a desired amount of forward rotation, allowing the roll to roll more tightly and take up less space.
Regarding claim 2, modified Miller teaches that the hinge maximum angle of backward rotation of at least about 15 degrees from the vertical position (paragraph 33 of Weekes, after modification above).
Regarding claim 3, modified Miller teaches that the hinge maximum angle of backward rotation of about 18 degree from the vertical position (after the modification above, the examiner notes that Weekes teaches rotation of about 15 degrees in paragraph 33, and about 15 degrees is considered to be about 18 degrees as is required by the claim).
Regarding claim 7, modified Miller teaches that the guard member (11) of the second slat (1a) has a convex tip surface (18), and the engaging track (7) of the first slat contacts the convex tip surface (18) at the maximum angle of backward rotation of the hinge.
Regarding claim 8, although modified Miller teaches that the guard member convex tip surface has a curve with a radius, it does not explicitly teach that the radius is about 0.25 inches.
The examiner notes that the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller so that the radius is about 0.25 inches. This alteration provides the predictable and expected results of a radius that is easy to manufacture.
Regarding claim 9, modified Miller teaches that the engaging track (7) of the first slat is hook-shaped and comprises an engaging track bend (inside surface of hook) that curves toward the inner side, and wherein the hinge is rotatable from the vertical position in the forward direction (clockwise) defined by the clockwise rotation of the first slat relative to the second slat.
Modified Miller does not explicitly teach a rib positioned at the first edge that projects from the inner side, nor that the rib of the first slat contacts the lip member of the second slat to stop the forward rotation of the hinge.
Weekes teaches a rolling shutter with a first (300a) and a second slat (300b), with a rib (314) positioned at a first edge that projects from an inner side (fig. 3), and wherein the hinge is rotatable from a vertical position in a forward direction (clockwise), and the rib of the first slat contacts a lip member of the second slat to stop the forward rotation of the hinge (paragraph 33). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to further modify Miller so that there is a rib positioned at the first edge that projects from the inner side, and that the rib of the first slat contacts the lip member of the second slat to stop the forward rotation of the hinge. This alteration provides the predictable and expected results of controlling the angle of rotation of the slats, resulting in the device functioning according to a user specification.
Regarding claim 14, modified Miller teaches that the hinge maximum angle of forward rotation is about 76 degrees (after claim 1 rejection above, the angle is considered about 76 degrees).
Regarding claim 17, modified Miller teaches that each slat has a maximum slat height between the engaging track and receiving track (the height of the slat), but does not teach that the first and second slats have a difference in maximum slat height of at least about 7%.
The examiner notes that the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller so that the first and second slats have a difference in maximum slat height of at least about 7%. This alteration provides the predictable and expected results of a tighter spiral when wound.
Regarding claim 19, modified Miller teaches that each slat has a maximum slat height between the engaging track and receiving track (the height of the slat), but does not teach that the first and second slats have a difference in maximum slat height ranging between about 9% to about 45%.
The examiner notes that the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller so that the first and second slats have a difference in maximum slat height ranging between about 9% to about 45%. This alteration provides the predictable and expected results of a tighter spiral when wound.
Regarding claim 24, modified Miller teaches that the hinge in the vertical position has a vertical separation between the engaging track tip and the articulation space inner surface of between about 0.025 to 0.03 inches (claim 1 rejection above, it is considered between about 0.025 to 0.03 inches).
Regarding claim 27, Miller teaches a rolling shutter (fig. 5), comprising:
first (1b) and second slats (1a), each slat having inner (left side fig. 7) and outer sides (right side fig. 7), a first edge with a hook-shaped engaging track (7) that extends to an engaging track tip (33), and a second edge with a receiving track (8) comprising a lip member (10) and a guard member (11) that are spaced apart to form an aperture that is sized and shaped to receive the engaging track of another slat (fig. 8),
the lip member (10) including a lip member bend (42) extending to a receiving track tip (25) and forming an articulation space (20) with an articulation space inner surface (fig. 4), and the guard member (11) extending to a guard member tip (see fig. 4);
wherein the engaging track (7) of the first slat (1b) is received in the articulation space of the second slat (1a) to couple the first and second slats and form an articulating hinge (fig. 8),
the hinge has a vertical position (position where the elements are considered vertical, see fig. 9) with the engaging track of the first slat having a range of vertical displacement in the aperture of the second slat with a vertical clearance between the engaging track and the guard member tip (in figs. 8 and in fig. 9, you can see that there is a little room between the elements that allows slight vertical movement of the slats relative to each other, this is confirmed by the applicant in the arguments dated 6/9/2026 as they quote column 7 line 56 though column 8 line 5),
and wherein the engaging track (7) of the first slat (1b) pivots on the receiving track tip (25) of the second slat (shown in fig. 8) and does not pivot on the receiving track inner surface (in the same way as the instant application, fig. 8 clearly shows that it pivots on element 25 instead of pivoting on the receiving track inner surface), and the hinge is rotatable from the vertical position in a backward direction (counterclockwise) with a maximum angle of backward rotation greater than an amount, and in a forward direction with a maximum angle of forward rotation.
Miller does not explicitly teach that the vertical clearance is at least about 0.025 inches, nor that the maximum angle of backward rotation is greater than 10 degrees, and the maximum angle of forward rotation is between about 70 degrees to about 80 degrees.
The examiner notes that the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller so that the vertical clearance is at least about 0.025 inches. This alteration provides the predictable and expected results of there being the right amount of play between he components to keep them functioning even with any expansion or contraction during change of seasons.
Weekes teaches a rolling shutter with a first (300a) and a second slat (300b), with a maximum angle of backward rotation greater than 10 degrees from a vertical position (as described in paragraph 33). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller with the teachings of Weekes so that the maximum angle of backward rotation greater than 10 degrees from the vertical position. This alteration provides the predictable and expected results of user required specifications that allow the device to roll up.
The examiner notes that the courts have held that it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438 (CCPA 1929) (""). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller so that the maximum angle of forward rotation is between about 70 degrees to about 80 degrees. This alteration provides the predictable and expected results of a desired amount of forward rotation, allowing the roll to roll more tightly and take up less space.
Claim(s) 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 9074411) in view of Konrad (US 8584731).
Regarding claim 20, Miller teaches a rolling shutter (fig. 5), comprising:
a plurality of linked slats (1a and 1b), each slat comprising:
a body with a body inner surface (left side in fig. 7) having a concave curve, a body outer surface (right side in fig. 7) having a convex curve, and first (top) and second (bottom) edges;
a hook-shaped engaging track (7) at the first edge, comprising a first base (30) adjacent to the first edge, and a first bend (inside surface of hook) that curves toward the body inner surface, wherein the first base (30) has a first outer surface that extends along the same convex curve as the body outer surface (fig. 3);
and a receiving track (8) at the second edge, comprising a guard member (11) and a lip member (10) that are spaced apart to form an aperture that is sized and shaped to receive the engaging track of another slat, the lip member comprising a second base (10) adjacent to the second edge and a second bend (42) that curves toward the body outer surface, the second base having a second outer surface (left surface 10) that extends along the same concave curve as the body inner surface (fig. 4);
wherein the rolling shutter has a retracted position that forms a coil comprising a plurality of windings of linked slats (fig. 11), including first and second windings (each “wrap” is considered a winding), and wherein an element (45) projects from and separates the second outer surface of each slat in the first winding, from the body outer surface of a slat in the second winding (fig. 11).
Miller does not explicitly teach the element is a rib that projects from the second outer surface.
Konrad teaches a rolling shutter with a slat with a rib (24) that projects from a second outer surface (see fig. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Miller so that the element is a rib. This alteration provides the predictable and expected results of spacing out the windings, keeping them from binding up.
Regarding claim 21, modified Miller teaches that the winding inner surfaces and winding outer surfaces in the coil have curvatures that are concentric (each inner surface is concentric to the respective outer surface per fig. 11).
Allowable Subject Matter
Claims 25-26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 6/9/2026 have been fully considered but they are not persuasive.
The applicant argues that “The prior art does not teach or suggest the claimed rolling shutter slat. Miller specifically teaches that the hinge has no vertical clearance between the engaging track and the guard member tip. Miller, FIG. 8 shows a hinge in the vertical position with an engaging track (7) that is intentionally configured to contact the guard member tip (18), to reduce the clearance between shutter slats and limit the articulation of the hinge. As described in Miller
“The outer surface 31 of tip member 30 of slat 1b is convex and seats against the
articulation surface 18 of guard member 11 of slat la…
In this position, articulation space 20 is almost entirely occupied by tip 30 of engaging track 7,
with almost no clearance between shutter slats la and lb. This configuration also
limits the articulation of slats with respect to one another.” (Miller: Col. 7, lines 58
- col. 8, line 5.)
FIG. 8 also shows that the tip (33) of the engaging track (7) contacts the articulation space inner surface (16), and there is no vertical clearance between the tip and inner surface It is argued that Miller, FIGs. 8 and 9 show a hinge in the vertical position with "a little room between the elements that allows slight vertical movement of the slats relative to each other", and "with a vertical separation between the engaging track tip and the articulation space inner surface (see fig. 9)". (Office Action, p. 11.)
Neither Miller FIG. 8 or FIG. 9 show the claimed vertical clearance or vertical separation. As discussed above, Miller, FIG. 8 does not disclose a vertical clearance between the engaging track and guard member tip. Miller expressly teaches that, "[a]s shown in FIG. 8 [t]he outer surface 31 of tip member 30 of slat 1b is convex and seats against the articulation surface 18 of guard member 11 of slat la" (col. 7, lines 54-60). In addition, Miller, FIG. 9 does not disclose a hinge in the vertical position, but shows a hinge between coiled or retracted slats --
i.e. "[w]hen the shutter is in a retracted position as illustrated by FIG. 9" (col. 5, lines 52-55).
Therefore, Miller, FIGs. 8 and 9 do not teach a hinge with a vertical position that has the claimed
vertical clearance between the engaging track and guard member tip, or the separation between
the engaging track tip and articulation space inner surface.
It is also argued that Miller "clearly teaches a hinge with vertical clearance in the aperture [and] with vertical separation between the tip and the inner surface of the articulation space", and that the "claimed specific dimensions are found to be obvious modifications". (Office Action, p. 11.) As best understood, these assertions are based solely on Miller, FIGs. 8 and 9. As discussed above, FIGs. 8 and 9 do not teach either of these claimed features. Moreover, even if the drawings of Miller are construed to suggest a hinge with a vertical clearance (i.e. "room between the elements"), nothing in the prior art teaches that the hinge vertical clearance has any function, nor otherwise provides any reasonable basis or motivation to increase or otherwise modify the hinge vertical clearance. The prior art is silent regarding any hinge vertical clearance and does not disclose or suggest any dimensons for the hinge vertical clearance. Cf. MPEP 2125, quoting, Hockerson-Halberstadt, Inc. V. Avia Group Int 'l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) ("well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue").”
The examiner notes that Miller does teach there being a little clearance, both from figs. 8 and fig. 9, where you can see that there is a little room between the elements that allows slight vertical movement of the slats relative to each other. The examiner also notes that “almost no clearance” is considered a little clearance, and again directs attention to Col. 7, lines 58- col. 8, line 5. of the reference. The examiner notes that all the limitations as claimed are taught by this combination.
The applicant further argues that “The prior art fails to disclose the claimed rib on the outer surface of the lip member.
Konrad is argued to teach "a slat with a rib (24) that projects from a second outer surface (see fig. 2)". (Office Action, p. 10.) However, the asserted rib ("extending lip 24") is not positioned on a lip member outer surface that extends along the same concave curve as the slat body inner surface. It is apparent from Konrad, FIGs. 1 and 2, that the rib (24) projects from the outer surface (21) of lip member (20) that extends from the convex outer surface (4) of the slat body. The lip member outer surface (21) is not contiguous with the slat body inner surface (6), and does not extend along the same concave curve as the slat body inner surface. Furthermore, Konrad does not teach or suggest where the rib (24) is located in the coiled rolling shutter and, therefore, does not disclose a rib positioned to separate the lip member outer surface from the body of an adjacent slat in the coil.
Accordingly, the prior art fails to disclose a rib that projects from a lip member outer surface that "extends along the same concave curve as the body inner surface", and that separates the lip member outer surface "from the body outer surface of a slat in the second winding", as in independent claim 20. Claim 21 depends from claim 20, and is patentable over the prior art for the same reasons.”
The examiner notes that the above combination teaches all the limitations as claimed.
Miller is found to teach much of the structure of a rolling shutter (fig. 5), including:
a plurality of linked slats (1a and 1b), each slat comprising:
a body with a body inner surface (left side in fig. 7) having a concave curve, a body outer surface (right side in fig. 7) having a convex curve, and first (top) and second (bottom) edges, wherein the rolling shutter has a retracted position that forms a coil comprising a plurality of windings of linked slats (fig. 11), including first and second windings (each “wrap” is considered a winding), and wherein an element (45) projects from and separates the second outer surface of each slat in the first winding, from the body outer surface of a slat in the second winding (fig. 11).
Miller does not explicitly teach the element is a rib that projects from the second outer surface.
Konrad teaches a rolling shutter with a slat with a rib (24) that projects from a second outer surface (see fig. 2). The modification is to modify Miller so that the element is a rib. This alteration provides the predictable and expected results of spacing out the windings, keeping them from binding up.
Arguments regarding claims 20-21 are considered persuasive.
Conclusion
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 MATTHEW R SHEPHERD whose telephone number is (571)272-5657. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Cahn can be reached at (571) 270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.S./Examiner, Art Unit 3634
/DANIEL P CAHN/Supervisory Patent Examiner, Art Unit 3634
Prosecution Insights