DETAILED ACTION
Annotated Representative Figures
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Claim Rejections - 35 USC § 112(a)
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 1-16 and 21-24 are 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.
Amended claim 1 specifies:
wherein the frame is continuously rotatable with respect to the base without rotating the connector relative to the base in the unlocked configuration, and wherein the frame can be secured to the connector in the locked configuration at any angular orientation about the base axis without disturbing the membrane.
There is no basis in the originally filed disclosure for the language, “the frame is continuously rotatable with respect to the base without rotating the connector relative to the base” and “at any angular orientation about the base axis without disturbing the membrane”.
Independent claim 11 specifies, “wherein the frame is securable to the connector without disturbing the membrane.”
There is no basis in the originally filed disclosure for the language, “wherein the frame is securable to the connector without disturbing the membrane” appearing in independent claim 11.
Independent claim 21 specifies:
the frame being continuously rotatable about the base axis relative to the connector and the base in the unlocked configuration, the frame capable of being secured to the connector in the locked configuration to prevent rotation of the frame relative to the connector and the base at any angular orientation about the base axis without disturbing the membrane
There is no basis in the originally filed disclosure for the language, “the frame being continuously rotatable about the base axis relative to the connector and the base” and “base at any angular orientation about the base axis without disturbing the membrane”.
While Applicant’s disclosure clearly provides for discrete rotatability and various angular orientations, there is no “clear depiction” in the detailed drawings, or language in the originally filed disclosure that would provide support for the expansive terms “continuously” and “any” as this language is now employed in the claims. If these were important aspects of the invention, this language should have been clearly supported as of the date of filing.
Claim Rejections - 35 USC § 112(b)
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 1-16 and 21-24 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.
Each independent claim 1, 11 and 21 now specifies “without disturbing the membrane.” Likewise, the recitation “without disturbing the membrane captured between the base and the connector” appears in dependent claim 3. Applicant’s originally filed disclosure fails to define this language. It is unclear what constitutes a disturbance of the membrane. Accordingly, the claim is indefinite because it fails to clearly set forth the metes and bounds of patent protection sought.
Response to Arguments of 08 JULY 2026
Applicant has argued that there is basis in the originally filed disclosure for “continuously rotatable”, “at any angular orientation” and “without disturbing the membrane”. The arguments are not found persuasive.
Applicant argues that merely because the frame can “slide” support should be found for “continuously rotatable”. This is not persuasive. The disclosure provides support for “sliding”. Simply because something slides does not mean it can “continuously” slide.
Moreover, a person having skill in the art would not understand that Applicant possessed the claimed device wherein the frame can be secured at "any angular orientation" merely because a user can slide or rotate the frame about axis.
Applicant appears to suggest that the clamping of a membrane in a promenade constitutes a patentable point of distinction. To this end, Applicant has included “without disturbing the membrane” in each independent claim. This language does not find support in the original disclosure but constitutes prohibited new matter. Applicant’s originally filed disclosure only speaks of “disturbing” or “influencing” “joints” and not the “membrane”. Applicant conflates the “membrane” and the disclosed “joints”. However, Applicant’s originally filed claim-set does not. Only original claims 10 and 19 specifed a “membrane”, and not in the manner now claimed. Likewise, Applicant’s originally filed disclosure makes no reference to “disturbing” the “membrane” in the manner now claimed, but to “joints” in one manner or another.
From Applicant’s Specification:
[0046] Furthermore, the clamps 238 of the illustrated embodiment may be adjusted between the locked and unlocked configurations without disturbing the joint formed between the connector 28, the base 18, and the membrane 7. The frame 20 may also be slid along the sliding surface 226 (e.g., be rotationally adjusted) without disturbing the joint formed between the connector 28, the base 18, and the membrane 7. Further still, the entire frame 20 may be detached from the connector 28 without disturbing the joint between the connector 28, the base 18, and the membrane 7.
[0067] With continued reference to FIGS. 6 and 8, the clamps 1238 of the illustrated embodiment may be adjusted between the locked and unlocked configurations without disturbing the joint formed between the connector 1028, the base 1018, and the membrane 1007. The frame 1020 may also be slid along the sliding surface 1226 (e.g., be rotationally adjusted) without disturbing the joint formed between the connector 1028, the base 1018, and the membrane 1007. Further still, the entire frame 1020 may be detached from the connector 1028 without disturbing the joint between the connector 1028, the base 1018, and the membrane 1007.
[0079] Step 1512 includes coupling the frame 1020 to the connector 1028 and the base 1018. With the connector 1028 attached, the frame 1020 is then positioned whereby the second sliding surface 1226 rests upon the first sliding surface 1182. The clamps 1238 are then loosely installed being bolted to the connector 1028 using the fasteners 1194 (e.g., in the unlocked configuration). The frame 1020 may then be rotated relative to the connector 1028 until the desired orientation is achieved. The frame 1020 is coupled to the connector 1028 and the base 1018 independently of the membrane 1152 such that the frame 1020 can be rotated relative to the connector 1028 without disturbing the joint between the connector 1028, the base 1018, and the membrane 1007.
[0081] After the initial installation process takes place as described above, the user may subsequently adjust the frame 1020 without disturbing the joint between the connector 1028, the base 1018, and the membrane 1007. To do so, the user first places the clamps 1238 in the unlocked configuration, and the rotates the frame 1020 into the desired orientation. Finally, the user replaces the clamps 1238 into the locked configuration.
The specification need not disclose what is well-known to those skilled in the art and preferably omits that which is well-known to those skilled and already available to the public. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987); and Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984). While these cases reference the “specification” of a patent application, it logically follows that disclosures or items beyond the realm of patent specifications would reasonably not disclose what is well-known to those skilled in the art and preferably omit that which is well-known to those skilled and already available to the public. Clothing articles, shoes with laces, knives, forks, basketballs, do not come with instructions because the manner in which these articles/devices are used is well-known to the end-users. Perhaps this is why the previously applied ZURN documents make no reference to a membrane?
Independent claims 1,11 and 21 and dependent claim 3 are not seen to positively recite the structure of a “membrane” but merely recite it with respect to intended use or functional capabilities. It is unclear how a claim-set that does not positively recite a membrane reads-on the elected species depicted in Figure 6.
Applicant’s arguments have been effective at removing the art rejections.
Information Disclosure Statement
Axiomatically, the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. It is noted that Applicant cited a ZURN publication documenting “improper roof membrane installation” in related serial number 18/665,453. Applicant may wish to make that document and any known devices or detail such instances where roof membranes were improperly installed which caused the aforesaid document to be issued, so that they may be officially evaluated by the Office.
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 ROBERT JAMES POPOVICS whose telephone number is (571) 272-1164. The examiner can normally be reached from 10:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J POPOVICS/ Primary Examiner
Art Unit 1763
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