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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/27/2025 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “articulation space inner surface” from claim 1, “first base” from claim 20, “second base” from claim 20, and “second outer surface” from claim 20 must be shown with reference characters or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
The following claimed elements do not contain reference characters in the specification: “articulation space inner surface” from claim 1, “first base” from claim 20, “second base” from claim 20, and “second outer surface” from claim 20.
Appropriate correction is required.
Claim Objections
Claim 14 objected to because of the following informalities:
The claim recites “a maximum angle of forward rotation”, but is clearly not intending on reciting a second of these. Please correct.
Appropriate correction is required.
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, and 24 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 receiving track (8) including a bend (42) extending to a receiving track tip (25) and forming an articulation space (20) with an inner surface (fig. 4);
wherein the engaging track (7) of the first slat (1b) is received in the articulation space of the second slat (1a) to 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 vertically displaceable in the aperture of the second slat (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) and with a vertical separation between the engaging track tip and the articulation space inner surface (see fig. 9),
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 slight vertical movement of the slats is by at least about 0.025 inches and with a vertical separation between the engaging track tip and the articulation space inner surface of 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 slight vertical movement of the slats is by at least about 0.025 inches and the vertical separation between the engaging track tip and the articulation space inner surface of 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 a 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 in the vertical position has a maximum angle of forward rotation of about 76 degrees from the vertical position (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).
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).
Response to Arguments
Applicant's arguments regarding claim 1 have been fully considered but they are not persuasive.
The applicant argues that the prior art does not teach features of the claimed invention, and that Miller teaches a hinge with no vertical clearance in the aperture with no vertical separation between the tip and the inner surface of the articulation space.
The examiner notes that the above rejection teaches all the limitations as claimed.
Regarding claim 1, Miller clearly teaches a rolling shutter (fig. 5), comprising:
first (1b) and second slats (1a)…. with 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),…. wherein the engaging track (7) of the first slat (1b) is received in the articulation space of the second slat (1a) to 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 vertically displaceable in the aperture of the second slat (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) and with a vertical separation between the engaging track tip and the articulation space inner surface (see fig. 9),
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.
It is true that Miller does not teach the specific dimension claimed nor the specific angles, but it clearly teaches a hinge with vertical clearance in the aperture with vertical separation between the tip and the inner surface of the articulation space as well as forward and backward rotation that are required. The modifications above merely address the claimed specific dimensions and angles, and are found to be obvious modifications, due to at least slight movements already being present in the Miller reference.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Therefore, it is irrelevant that Weekes teaches the tip of the engaging track pivoting on the inner surface of the articulation space, as Weekes is not used for teaching this in the rejection above.
Applicant’s arguments with respect to claim(s) 20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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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/M.S./Examiner, Art Unit 3634
/DANIEL P CAHN/Supervisory Patent Examiner, Art Unit 3634