DETAILED ACTION
This is a final reissue action of U.S. Patent No. 10,316,539 B2 (hereafter the “’539” patent and/or equivalent), filed 15 September 2022. For reissue applications filed on or after 16 September 2012, all references to 35 USC § 251 and 37 CFR §§ 1.172, 1.175 and 3.373 are to the current provisions. The present action addresses the response dated 22 October 2025.
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Current Status of the Claims
The following is the status of the claims as presented:
Claims 1-12 are pending and subject to consideration in the present Office action:
Claims 1, 6-10 are twice amended;
Claims 2-5, 11 and 12 and are amended.
Original Disclosure - Definition
The present application is a reissue of US Patent No. 10,316,539 B2, which issued from App. No. 15/007,943 having a filing date of 27 January 2016. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of 15/007,943 does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the record indicates the maintenance fees are current, with the 3.5-year window paid. The 7.5-year maintenance fee window begins 11 June 2026.
Response To Arguments
The following addresses applicant’s remarks/arguments dated 22 October 2025. Applicant’s courtesies are appreciated.
Claim rejections – 35 USC 112:
Applicant’s amendments to the claims overcome most of the rejections raised in the prior Office action and they are withdrawn. See below of further discussion of a prior raised rejection under this heading, along with new rejections raised in light of the amendments made.
Claim rejections – 35 USC 102:
Applicant’s remarks are noted but are moot in view of the new grounds of rejections based on the amendments made. Applicant’s comments are directed to the claims as amended, which the examiner addresses accordingly in this Action.
Amendments
The amendment to the claims filed on 15 September 2022, is objected to as not complying with the requirements of 37 CFR 1.173(b)(2) and (d)(1)&(2) because each change relative to the ‘539 patent has not been properly marked. 37 CFR 1.173(b)(2) and (d)(1)&(2) state:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added.
The claims presented in the amendment filed 22 October 2025 do not include proper markings.
In the instant case, applicant shows deletions in claim 7 with [[double brackets]] and in claims 11 and 12 with strikethrough where in reissue prosecution, deletion is properly shown by [single brackets].
These corrections should be submitted with the next correspondence.
Specification
Applicant’s amendment to the specification is entered.
Claim Objections
Claim 12 is objected to because of the following informalities: “of pipe of pipe” (line 23) is redundant. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-5 and 12 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.
Claims 1-12: throughout the claims, applicant has language directed to “each XXXX” where XXXX is a given limitation (e.g., Claim 1, line 11 “each[the] primary pole member”). By deleting “the” and inserting “each” antecedent basis is now unclear. An example of remedying the matter would be “each of the pole [member] members” or equivalent. Appropriate correction is required, and the examiner is not addressing each instance of this occurrence for brevity.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over by the Protest of Howard Holdings, Inc, (hereafter “Protest”, “Protester” and equivalent).
Below is a substantial reproduction of the claims under examination addressing all limitations with the examiner’s comments in bold italics.
Claims 1, 6, 11 and 12: Protester discloses A safety barrier fence assembly (Protest: page 33) for installation to a deck, said assembly comprising:
at least two poles (Id.) each including a primary pole member (e.g., page 37) having an open top end (as shown on page 37, the upper ends of the poles have tops that appear to be removable; see also page 39 which shows a picture of a light being installed on an open top side; see also p. 11 which shows a view extending through the entire pole showing the open end), an open bottom end (as shown in page 29: picture described by “High Performance Solid Pole”) and a hollow interior (as shown: the T-6 outer pole is hollow as it receives the PVC long pipe and solid metal rod) between the open top and bottom ends (as shown; per claim 12, each primary pole member including an inner diameter);
a flexible mesh (not labeled but clearly shown on page 32; see also page 5 which shows the mesh attached to the respective poles) material attached to (or between pairs of, per claims 6 and 12) each primary pole member of the at least two poles and spanning between a pair (or pairs of, per claim 6) of poles of the at least two poles to define a fence panel having a top horizontal edge and a bottom horizontal edge (as shown);
each primary pole member having a lower end zone extending below the bottom horizontal edge of the fence panel (see e.g., p. 38 and p. 5) and being structured and disposed for receipt into the deck and below a top surface of the deck (as shown on p. 26);
a reinforcement insert (p. 29; “High Performance Solid Pole”: the schedule 80 PVC pipe) fitted within the hollow interior of each primary pole member for adding strength to each primary pole member (as shown), and each reinforcement insert having a bottom end terminating at or above the open bottom end of each primary pole member (as shown), and each reinforcement insert extending upwardly within the hollow interior and having a top end terminating above the lower end zone (as described, the PVC pipe is 14 inches long, and no boundaries are provided to define what constitutes the “lower end zone”) so that when the lower end zone of each primary pole member is received into the deck with the safety barrier fence assembly installed and erected, each reinforcement insert extends above the top surface of the deck (as disclosed; see p. 15 where the PVC pipe would extend approximately 9 in. into the primary pole member, and as shown on p. 14, the distance from the lower edge of the mesh and the bottom end of the pole member is approximately 4 in.); and
each reinforcement insert including a section of pipe formed of a synthetic plastic polymer (as provided, it is PVC, known as polyvinyl chloride), and a solid metal bar (p. 29: the T-5 “break proof solid metal rod”) fitted within the section of pipe to provide a solid core along the section of pipe, the solid core having a bottom end terminating at or above the open bottom end of each primary pole member (as shown) and a top end terminating at or above the lower end zone so that when the lower end zone of the primary pole member is received into the deck with the safety barrier fence assembly installed and erected, the section of pipe having the solid core extends from below the deck surface to above the deck top surface of the deck (as shown generally in the figures and as explained above with respect to the reinforcement insert).
Per claims 1 and 6, Protest does not disclose Wherein each solid metal bar has a length of between 10 and 14 inches. As shown, the bar is listed at approximately 8in. It would have been obvious at the time the invention was made to a person having ordinary skill in the art as a matter of design choice to have the dimensions as claimed because applicant failed to state a criticality for the necessity of the limitation and the prior art of record is capable of being designed to meet the limitation as claimed. See MPEP 2144.04(IV)(A) citing Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), the Federal Circuit 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. The patented disclosure has the range as between 8-14 inches (Col. 4, lines 40-48), which is a broad range, and the prior art falls within the disclosed range, so to have the member the claimed length of 10 inches would be within the level of skill in the art based on the overall desired strength of the system. A longer bar would permit greater rigidity when in an installed condition.
Per claims 6 and 12, in addition to the limitations of claim 1, Protester further provides the primary pole member including an inner diameter (as shown on p. 29); the reinforcement insert having an outer diameter that is sized relative to the inner diameter of the primary pole member to allow for snug fitted frictional engagement of the reinforcement insert within the hollow interior of the primary pole member to hold the reinforcement insert in fixed position within the primary pole member (as shown generally)
Per Claims 11 and 12, in addition to the limitations of claim 1, Protester further provides each second of pipe having a lower end, an upper end and a complete length between the lower end and the upper end (inherent features), and wherein the solid metal bar is fitted within the section of pipe to provide a solid core (as shown), however, Protester does not specifically disclose the solid metal bar provides a solid core along the complete length of the section of pipe from its lower end to its upper end. It would have been obvious at the time of filing to a person having ordinary skill in the art to have this limitation because optimization of a limitation will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such a limitation is critical. See M.P.E.P. §2144.05 "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454 (CCPA 1955) (Claimed process which was performed at a temperature between 40C and 80C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100C and an acid concentration 10%.) One having ordinary skill in the art would have the claimed relative length based on the overall desired strength of the system. Having the metal bar extend the entire length of the pipe would ensure uniformity in strength when in use.
Claims 2 and 8: Protester discloses The assembly as recited except wherein each reinforcement insert has a length of between 10 inches and 14 inches. See where p. 29 notes the PVC pipe is 14in. which meets the limitation. Should there be disagreement, it would have been obvious at the time the invention was made to a person having ordinary skill in the art as a matter of design choice to have the dimensions as claimed because applicant failed to state a criticality for the necessity of the limitation and the prior art of record is capable of being designed to meet the limitation as claimed. See MPEP 2144.04(IV)(A) citing Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), the Federal Circuit 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. The patented disclosure has the range as between 8-14 inches (Col. 4, lines 40-48), which is a broad range, and the prior art falls within the disclosed range, so to have the member the claimed length of 10-14 inches would be within the level of skill in the art based on the overall desired strength of the system.
Claims 3 and 9: Protester discloses The assembly as recited wherein each section of pipe is formed of polyvinyl chloride (as disclosed on p. 29).
Claims 4 and 10: Protester discloses The assembly as recited wherein each solid metal bar is aluminum (as disclosed on p. 29).
Claim 5: Protester discloses The assembly as recited in claim 1 wherein the primary pole member is metal (as disclosed on p. 29, it is aluminum).
Claim 7: Protester discloses The safety barrier fence assembly as recited in claim 6 wherein each reinforcement insert is structured and disposed to bend in response to external bending forces applied to the primary pole member (as would occur under the rules governing mechanics of materials), and each reinforcement insert being further structured and disposed to be straightened from a bent configuration in response to an external straightening force applied thereto (the examiner takes the position that the prior art has full capability of meeting this limitation under the rules governing materials science and mechanics of materials).
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,316,539 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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 WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/JOSHUA KADING/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993