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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 30, 2026 has been entered.
Response to Arguments, Amendments
Applicant is thanked for their March 30, 2026 to the Office Action filed January 20, 2026. Applicant’s arguments with respect to claim(s) 1 and 3 – 6 have been considered, and inasmuch as they pertain to prior art still being relied upon, the examiner’s response follows below. Respectfully, any arguments/ remarks directed towards newly amended limitations are moot if they resulted in a new ground(s) of rejection.
In response to the 35 U.S.C. §103 rejection of claims 1 and 3 – 6 as being unpatentable over Cunningham (GB 2463228), in view of Murphy (US 5,095,942), in view of North (US 2,987,258)1 Applicant remarked (inter alia): “the prior art does show removable circular areas. However, in both the Cunningham British patent and the North patent, there is no insulation that has been applied to the inner wall of the register box. As such, the concept of "knock-out" is not possible with the present invention since the insulation material is applied over the surface that would be "knocked-out". When insulation is applied to the inner wall of the register box (as in the nature of the present invention), it is only possible to remove these circular cutouts by bending across the space between the partial circular cuts. .. The Cunningham British patent lacks the circular area as formed of a "first partial circle" and a "second partial circle" in spaced relation. As such, there would be no teaching in the Cunningham British patent of the removal of the circular area by bending the circular area "manually bending back-and-forth".
The examiner respectfully notes that while Cunningham indeed does disclose that the knock areas “are pushed out from inside the box”, Applicant is arguing features that are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The examiner respectfully notes that the claimed apparatus discloses (inter alia, and paraphrased):
a body with an exterior wall having a plurality of concentric circular areas cut entirely through the wall (that) are selectively removable by manually bending back-and-forth,
an expandable polymeric material affixed to each of the inner walls of the box; and
a collar affixed to the body, said collar extending through the selectively removed at least one of the plurality of concentric circular areas and through the expandable polymeric material
At least two things are notable:
The claim does not disclose that a concentric circular area is selectively removed after the expanded polymeric material is affixed to the box. Accordingly a concentric circular area could be removed from the inside or the outside;
The claim does disclose that a plurality of concentric circular areas are cut entirely through the wall2, and so it is unclear why it would be required for one to “manually bend back-and forth” a partial circle, since it is not attached; and
When a portion of the collar is extended through the expanded polymeric material, the collar would not “open to an interior of the body”, as the collar would be closed by a corresponding concentric circular area of the insulation.
The examiner respectfully notes that Applicant' s arguments with respect to Murphy (US 5,095,942) and North (US 2,987,258) have been considered but are moot because the new ground of rejection (below) does not rely on these references.
Applicant is respectfully encouraged to review the prior art included in paragraph 41, below.
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 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 of this title, 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.
Claims 13, and 3 – 6 are rejected under 35 U.S.C. §103 as being unpatentable over Cunningham (GB 2463228), in view of Kazuhiro et al (JP 2001235177).
In re Claims 1 and 3 – 6, Cunningham discloses a register box (figs 1 – 4: (1)) for an HVAC installation, the register box comprising:
a body (fig 4: (1)) having a plurality of side panels arranged in a generally rectangular or square configuration (as seen in figures 1 – 4), said body having a wall (annotated below) extending generally transverse to the plurality of side panels, the plurality of side panels defining an opening (fig 1: (8)) opposite the wall, the wall having a plurality of concentric circular knockout areas (15),
wherein each of the plurality of concentric circular knockout areas comprises a first partial circle having ends in relation to a second partial circle, wherein at least one of the plurality of concentric circular areas is selectively removable; and
a collar (fig 1, (3)) affixed to the body, said collar extending through the selectively removed at least one of the plurality of concentric circular areas, wherein the collar ensures a seal against an outer surface of said collar.
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Regarding “cut entirely through the wall”, as Cunningham discloses the concentric circles (15) are “pushed out from inside the box” [0057], it has been understood to disclose areas cut entirely through the wall.
Regarding the limitation “said collar ensures a seal”, in that Cunningham discloses that the collar (3) comprises “a flange and a swage to stop the collar (3) from falling in or out (of the box) once fitted” (Abstract), it has been understood that it ensures a tight seal.
Cunningham lacks:
wherein each of the plurality of concentric circular areas comprises a first partial circle having ends in spaced relation to a second partial circle,
wherein at least one of the plurality of concentric circles is selectively removable by manually bending back and forth;
an expandable polymeric material affixed to an inner side of each of the plurality of side panels and entirely across the wall; and
wherein the collar (3) extending through the expandable polymeric material so as to open to an interior of the body, wherein the expandable polymeric material ensures a tight seal against an outer surface of said collar.
Kazuhiro et al teaches a register box (figs 1 – 6) for an HVAC installation, the register box comprising:
a body (1) having a plurality of side panels (as seen in figs 1 – 3) arranged in a generally rectangular or square configuration, said body having a wall (1B) extending generally transverse to the plurality of side panels, the plurality of side panels defining an opening (fig 1, at (25)) opposite the wall, the side panels having a plurality of circular or rectangular areas (100 – 103) cut entirely through the wall (“slits” fig 3: (104))),
wherein each of the plurality of circular or rectangular areas comprises a first partial sector (as seen in fig 3) having ends in spaced relation (via (105)) to a second partial sector (as seen in fig 3) [0026], wherein at least one of the plurality of circular or rectangular areas is selectively removable by manually bending back-and-forth;
[0036] “when the connection portion 105 between the slits is cut off with a tool such as pliers to open the knockout holes” has been understood as being selectively manually removable.
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an expandable polymeric material (figs 1, 2: (3), (“a polystyrene foam” [0021]) affixed to an inner side of each of the plurality of side panels and entirely across the wall (as seen in fig 1); and
Although not claimed, please note that Kazuhiro et al teaches selectively removable areas of the expandible polymeric material (e.g.: 103A) that correspond with the selectively removable areas of the body (e.g.: 103).
an optional part affixed to the body, said optional part extending through the selectively removed at least one of the plurality of circular or rectangular areas and through the expandable polymeric material so as to open to an interior of the body,
wherein a sealing portion [0011] at the expandable polymeric material ensures a seal [0047] against an outer surface of said optional part.
It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the system of Cunningham, as taught by Kazuhiro et al, such that the system comprises
wherein each of the plurality of concentric circular areas are cut entirely though the wall, and comprise a first partial circle having ends in spaced relation to a second partial circle,
wherein at least one of the plurality of concentric circles is selectively removable by manually opening slit portions (104) with a tool such as pliers [0013, 0026];
an expandable polymeric material affixed to an inner side of each of the plurality of side panels and entirely across the wall; and
wherein the collar extending through the expandable polymeric material so as to open to an interior of the body,
for the benefit of employing the register box in cooling systems without causing condensation on metal fittings [0011].
Regarding the limitation “wherein least one of the plurality of concentric circles is selectively removable by manually bending back and forth”, upon consideration of the disclosure of Kazuhiro et al, it would have been obvious to try removing at least one of the plurality of concentric circles by manually bending back and forth, as choosing from a finite number of identified, predictable solutions is within the capabilities of a person having ordinary skill in the mechanical arts, and they would have a reasonable expectation of success, based upon the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest.
Regarding the limitation “wherein the expandable polymeric material ensures a tight seal against an outer surface of said collar”: as Cunningham discloses wherein the system “ensures a tight fit”, and Kazuhiro et al teaches the importance of sealing at the knockout holes [0047], it would have been obvious to provide wherein the expandable polymeric material ensures a tight seal against an outer surface of said collar, as choosing from a finite number of identified, predictable solutions is within the capabilities of a person having ordinary skill in the mechanical arts, and they would have a reasonable expectation of success, based upon the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest.
Claim 2 has been cancelled by Applicant.
In re Claim 3, Cunningham discloses wherein the ends of the first and second partial circles are spaced apart equally for each of the plurality of concentric circular areas (as seen in fig 3).
In re Claim 4, Cunningham discloses wherein the plurality of concentric circular areas (16) are at least three circular areas of differing diameters (as seen in fig 3).
In re Claim 5, Cunningham discloses wherein each of the plurality of concentric circular areas is formed centrally on the wall (as seen in fig 3). .
In re Claim 6, the proposed system has been discussed; but Cunningham lacks wherein the body being formed of thirty-gauge galvanized sheet steel.
However, it would have been obvious to one having ordinary skill in the art at the time before the effective filing date of the claimed invention to provide wherein the body is formed of thirty-gauge galvanized sheet steel, since it has been held to be within the general skill of (obvious to) a worker in the art to select a known material on the basis of its suitability for the intended use. Please note that in the instant application (specification paragraphs [0006, 0041, 0064], Applicant has not disclosed any criticality for the claimed limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in the PTO-892: Notice of References Cited.
Significant prior art includes:
Brumleu, Jr. (US 4,159,674) who discloses a register box for an HVAC installation, the register box comprising a body (figs 1, 4 :(2)) having a plurality of side panels (8) arranged in a generally rectangular or square configuration and a wall (6) extending generally transverse to the plurality of side panels, the wall having a plurality of concentric circular areas (16) indented into cut into entirely through the wall (col 3, lns 25 – 31, 60 – 61);
an insulative expandable polymeric material (“thermosetting phenolic resin” (col 4, lns 6 – 13)) affixed to an inner side of each of the plurality of side panels and entirely across at least a portion the wall; and
a collar (44/46) (col 3, lns 58 – 61) affixed to the body, said collar extending through the selectively removed at least one of the plurality of concentric circular areas and through the insulative expandable polymeric material so as to open to an interior of the body, wherein the insulative expandable polymeric material bears tightly against an outer surface of said collar (at portion (46)).
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Swaim (US 5,658,196), who discloses a preformed composite housing of insulating material that has punch-out duct openings of varying sizes provided therein.
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Schroeder et al (US 4,266,470), who discloses a universal air diffuser comprised of a fiberglass plenum having an open side and means for attaching a duct connector on a closed side opposite the open side. A plurality of shallow grooves on the exterior of the closed surface provide cutting lines for hole patterns to cut holes for various standard size ducts.
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Skoch et al (US 3,866,950), who discloses a register box adaptable to ductwork, comprising a multi-size adaptor having a box-like air discharge outlet in which an air diffuser can be mounted, and having an air inlet made in stepped sections of different size for enabling the same to be connected to one of several sizes of ducts to suit installation requirements. The register box has a groove in each stepped section to reduce wall thickness and facilitate breaking or cutting away of the section or sections of smaller size than that of the particular duct to be connected to the inlet end of the adapter.
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Barboza et al (US 2008/007046), who discloses an air diffuser mounting box having multiple, various size inlet collars joined together with annular shaped sections. Each collar has a groove and tab (18) around its perimeter. A flat blade screwdriver, or similar tool is placed between the tabs (18), and twisted, or rotated. This action initiates the required separation along the groove (11), and eliminates the need to start the cut by piercing with a knife.
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Katsumi et al (JP 2008144978) discloses a register box for an HVAC installation, the register box comprising:
a body (1) having a plurality of side panels (8) arranged in a generally rectangular or square configuration, said body having a wall (annotated below) extending generally transverse to the plurality of side panels, the plurality of side panels defining an opening (7) opposite the wall, the wall having at least one of a plurality of circular areas “punched in the circumferential direction” entirely through the wall,
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wherein each of the at least one of the plurality of circular areas comprises a first partial circle (as seen in fig 5) having ends in spaced relation (at (20)) to a second partial circle (as seen in fig 5), wherein at least one of the plurality of circular areas is selectively removable either from the outside, or from the inside [0014];
an expandable polymeric material (“polystyrene foam” (9)) [0009] affixed to an outer side of each of the plurality of side panels and entirely across the wall (as seen in the figures); and
a collar (figs 2 – 4: (6)), affixed to the body, said collar extending through the selectively removed at least one of the plurality of the circular areas and through the expandable polymeric material so as to open to an interior of the body [0014], wherein a packing the expandable polymeric material (13) ensures a seal against an outer surface of said collar [0013].
Hashimoto et al (JPH 08270974) discloses a register box for an HVAC installation, the register box comprising:
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a body (figs 1, 3: (30)) having a plurality of side panels arranged in a generally rectangular or square configuration, said body having a wall (34) extending generally transverse to the plurality of side panels, the plurality of side panels defining an opening (31) opposite adjacent the wall (34), the wall having at least one of a plurality of concentric circular areas cut entirely through the wall,
wherein each of the at least one of the plurality of concentric circular areas comprises a first partial circle (37) having ends in spaced relation to a second partial circle (38) [0015], wherein at least one of the plurality of concentric circular areas is selectively movable by manually bending back-and-forth [0016]; (“undergo plastic deformation”)
a collar (42) affixed to the body [0015], said collar extending through the selectively removed at the at least one of the plurality of concentric circular areas.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Frances F. Hamilton (she/her) whose telephone number is 571.270.5726. The examiner can normally be reached on T-Th; 9 – 6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hoang can be reached on 571.270.6460. The fax phone number for the organization where this application or proceeding is assigned is 571.273.8300.
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/Frances F. Hamilton/Examiner, Art Unit 3762 /MICHAEL G HOANG/Supervisory Patent Examiner, Art Unit 3762
2 [0046, 0063] “cutting the plurality of concentric circular areas entirely through the thickness of the wall”
3 claim 2 has been cancelled by Applicant.
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