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 .
Status of Claims
Claims 1-7 are pending.
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) 1-2, 4 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Monteer (US 2010/0212234) in view of Honda (US 2002/0088189) and Inzeo (US 7,721,489).
Re claim 1, Monteer discloses a building (100) comprising:
an outer lateral member (152);
an exterior part (130) covering (Fig. 2) a side surface (right surface of 152) of the outer lateral member (152);
a ventilation passage (260) between the exterior part (130) and the outer lateral member (152); and
a flashing member (146) including:
an attachment portion (158) disposed in (Fig. 2) the ventilation passage (260);
a guide (Fig. 4 164) for guiding water (164 is capable of guiding water), the guide (164) being continuous with (Fig. 4) the attachment portion (158); and
wherein:
at least a part (right surface of 158) of the attachment portion (158) faces (Fig. 2) the exterior part (130),
but fails to disclose a furring strip attaching the exterior part to the outer lateral member, a coupling portion configured to couple to an additional flashing member, and the guide is spaced apart from a lower surface of the exterior part.
However, Honda discloses a furring strip (25) attaching the exterior part (30) to the outer lateral member (24).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of Monteer with a furring strip attaching the exterior part to the outer lateral member as disclosed by Honda in order to secure the components together at a predetermined distance ([0004]).
In addition, Inzeo discloses a coupling portion (75) configured to couple to an additional flashing member (46).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of Monteer with a coupling portion configured to couple to the additional flashing member as disclosed by Inzeo in order to extend the length of the flashing member to cover more length of roof.
In addition, Inzeo discloses the guide (70) is spaced apart from (Fig. 3) a lower surface (bottom of 60) of the exterior part (60).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of Monteer with the guide is spaced apart from a lower surface of the exterior part as disclosed by Inzeo in order to direct water all the way off of the exterior part, and thus the roof, protecting the exterior part from subsequent damage.
Re claim 2, Monteer as modified discloses the building according to claim 1, Inzeo discloses wherein the coupling portion (75) includes a retainer (bottom of 75, see Col 4 lines 21-30) that retains a coupling member (75) for coupling of the flashing member (46), and the retainer (bottom of 46) of the flashing member (46) and a retainer (bottom of 46) of the additional flashing member (46) retain the coupling member (75) so as to couple the flashing member (46) to the additional flashing member (46; Col 4 lines 21-30).
Re claim 4, Monteer as modified discloses the building according to claim 1, Inzeo discloses wherein a predetermined surface (rightmost surface of left 46 in Fig. 10) of the flashing member (left 46) is flush with (at 75) a predetermined surface (leftmost surface of right 46) of the additional flashing member (right 46) in a state where the flashing member (left 46) is coupled to (Fig. 10) the additional flashing member (right 46).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of Monteer with a flush surfaces as disclosed by Inzeo in order to save space on the roof such that additional features do not protrude.
Re claim 6, Monteer as modified discloses the building according to claim 1, but fails to disclose wherein the flashing member comprises aluminum.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of Monteer wherein the flashing member comprises aluminum in order use a weather durable material for outdoor use. In addition, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 7, Monteer as modified discloses the building according to claim 1, wherein the guide (Fig. 4 164) extends along the lower surface (see examiner comments; the language does not require any particular contact or juxtaposition, and “extending along” requires no particular positioning; the language further does not limit to a “lowermost” surface or similar) of the exterior part (130).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Monteer (US 2010/0212234) in view of Honda (US 2002/0088189), Inzeo (US 7,721,489) and Hoffman (US 5,946,862).
Re claim 3, Monteer as modified discloses the building according to claim 2, but fails to disclose wherein the coupling member is bonded to the coupling portion using an adhesive.
However, Hoffman discloses that it is known the bond (28) flashing members (12) together with an adhesive (28).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of Monteer wherein the coupling member (Inzeo: 75) is bonded to the coupling portion (Inzeo: bottom of 46) using an adhesive (Hoffman: 28) as disclosed and/or suggested by Hoffman in order to tool-lessly, and rigidly connect the flashing member to the additional flashing member such that once in position, the flashing members are less likely to shift. This may be accomplished by utilizing the adhesive of Hoffman on features 75 and 46 of Inzeo.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Monteer (US 2010/0212234) in view of Honda (US 2002/0088189), Inzeo (US 7,721,489) and Jelacic (US 2010/0300008)
Re claim 5, Monteer as modified discloses the building according to claim 1, but fails to disclose wherein: the coupling portion comprises a first coupling portion, the additional flashing member includes a second coupling portion, and the first coupling portion of the first flashing member is couplable to the second coupling portion of the additional flashing member.
However, Jelacic discloses wherein the coupling portion (34) comprises a first coupling portion (34), the additional flashing member (20) includes a second coupling portion (32), and the first coupling portion (34) of the flashing member (20) is couplable to (Fig. 3) the second coupling portion (32) of the additional flashing member (20).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building of Monteer with the coupling members/portions as disclosed by Jelacic in order to extend the length of the flashing member to cover more length of roof, and to simplify alignment and tool-less connection.
Examiner Comments
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634
706
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Greyscale
Response to Arguments
Claim Rejections 35 USC 103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
At the outset, it is noted that Applicant’s reference to 164 instead of 264 is correct.
First, Applicant argues that the references fail to disclose a guide for guiding water, the guide being continuous with the attachment portion. In support, Applicant argues that 164 of Monteer is simply there to provide spacing between elements and to provide ventilation. Applicant argues that Monteer does not disclose an water guiding feature. The Examiner respectfully disagrees. The claim requires “a guide” “for guiding water.” “For guiding water” is a statement of intended use. A statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. There is no positive recitation requiring guiding of water. All that is required is that there is a guide, and that guide is capable of guiding water. Because 164 is capable of guiding water, it is “a guide for guiding water.” Moreover, Applicant contends that because Monteer does not disclose dimensions, it fails to suggest that 164 would be capable of guiding water. There is no requirement that dimensions be provided to show a capability of guiding water. It is clear from the figures that 164 has dimensions sufficient for guiding water. 164 is not an infinitesimal element, and this is evidenced by the size disclosed in relation to staple 166, for example.
Second, Applicant argues that the references fail to disclose an exterior part covering a side surface of the outer lateral member with the guide spaced from a lower surface of the exterior part. In support, Applicant argues that the Office Action relies on snap clip 70 as the guide spaced from a lower surface of the exterior part, which exterior part is alleged to be Inzeo’s middle leg 60. Applicant argues that middle leg 60 is a component of bracket spacer 44, which supports, but does not include, fascia pate 46. Thus, Applicant contends that neither middle leg 60 nor bracket spacer 44 corresponds to “the exterior part” of the building. The Examiner respectfully disagrees. 60 (and 44) are shown on the exterior side of the building. They are “parts.” Thus, each may be reasonably interpreted as, “an exterior part.” Nothing in the claim limits the phrase, “an exterior part” to any particular structure. Further, Applicant argus that snap clip 70 is formed on a bottom of fascia plate 46. Thus, Applicant contends that if one where to take the fascia plate 46 as the exterior part, the snap clip would not be spaced therefrom. The rejection does not rely on this aspect and thus, this argument is moot.
Third, Applicant argues that the references fail to disclose a furring strip attaching the exterior part to the outer lateral member. In support, Applicant argues that the Office Action relies on Honda’s packing member 25 as the furring strip, and Honda’s vertically furring strip 24 as the outer lateral member. Applicant contends that Honda’s furring strip 24 does not correspond to the claimed outer member because it extends vertically instead of laterally. There is no claim language which limits any lengthwise direction of the outer lateral member, be it vertically or laterally. All that is required by the claim is that there is (1) a member, (2) the member is “outer” to something and (3) the member has a lateral extent. 24 is a member, outer with respect to 21, and has a lateral extend (Fig. 3). Thus, 24 is an outer lateral member. Applicant further contends that because Honda calls 24 a furring strip, 25 is not a furring strip. The particular wording used by Honda is not dispositive. Oxford defines “furring strips” as, “strips…applied to walls to support a finish.” 25 is a strip, applied to a wall, and supports a finish (30). Thus, regardless of the wording used in Honda, 25 constitutes a furring strip.
As such, the prior art meets the claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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 KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635