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 .
Response to Arguments, Amendments
Applicant is thanked for their September 18, 2025 to the Office Action filed July 9, 2025. 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 Objection to a minor typographical error in Claim 5, Applicant remarked that the claim was amended to overcome the objection
The examiner respectfully thanks Applicant for amending claim 5
In response to the 35 U.S.C. §112(b) rejection of claim 1 as being indefinite, Applicant remarked that claim 1 was amended to overcome the 35 USC §112(b) rejection.
The examiner respectfully thanks Applicant in assisting in the prosecution advancement.
In response to the 35 U.S.C. §103 rejection of claims 1 and 3 – 6 as being unpatentable over Cunningham (GB 246228), in view of Murphy (US 5,095,942), in view of Northrup, Jr. (US 3,977,467)1 Applicant remarked (inter alia) that Cunningham does show concentric knock-out areas. The description of these knock-out areas is rather brief within this British patent. Quite clearly, this British patent fails to show any "expandable polymeric material affixed to the underside of each of the plurality of side panels entirely across the wall". Since there is no expandable polymeric material defined in this British patent, the term "knock-out" is appropriate since the cut circular areas can be removed by a force applied used to the interior of the circular areas within the register box or to the exterior of the circular areas.
The examiner respectfully notes that, while Cunningham was not relied upon to teach an expandable polymeric material affixed to the underside of each of the plurality of side panels entirely across the wall, it seems that Applicant’s contention is that Cunningham may lacks a step in a process for forming an insulated register box. In response to the June 20, 2024 restriction requirement, Applicant elected Group I drawn to a register box apparatus, without traverse. Accordingly, arguments that the references fail to show a process of making or process of using the invention, it is noted that the features upon which applicant relies (i.e., a method of forming/cutting/ removing) are not recited in the rejected claim(s). It is respectfully noted that, 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).
In response to the 35 U.S.C. §103 rejection of claims 1 and 3 – 6 as being unpatentable over Cunningham (GB 246228), in view of Murphy (US 5,095,942), in view of Northrup, Jr. (US 3,977,467)2 Applicant remarked (inter alia, continued) that “the partial circles of the plurality of concentric circular areas of the present invention would never be considered to be "knock-out" since the expandable polymeric material certainly prevents any such "knock-out" action. These circular areas can only be removed, as described hereinabove, by the bending of the partial circular areas back-and-forth so as to separate the circular area from the remainder of the register box. As such, Applicant respectfully contends that the Cunningham British patent fails to show the structure of the present invention as claimed.
The examiner respectfully notes that Claim 1 discloses “the wall having a plurality of concentric circular areas cut entirely through the wall…wherein at least one of the plurality of concentric circular areas is selectively removable”, which is disclosed by Cunningham. As the claim lacks how the area is removed, (e.g.: wherein at least one of the plurality of concentric circular areas is selectively removed by folding an edge of one of the plurality of concentric circular areas back-and-forth until the one of the plurality of concentric circular area separates from the wall3), Applicant’s argument has not been found to be persuasive. Accordingly, arguments that the references fail to show a process of making the invention, it is noted that the features upon which applicant relies (i.e., a method of forming/cutting/ removing by bending) are not recited in the rejected claim(s).
In response to the 35 U.S.C. §103 rejection of claims 1 and 3 – 6 as being unpatentable over Cunningham (GB 246228), in view of Murphy (US 5,095,942), in view of Northrup, Jr. (US 3,977,467)4 Applicant remarked (inter alia, continued) that in the ”Official Action, it was suggested that there is an expandable polymeric material affixed to the register box. However, Applicant respectfully disagrees with this analysis. The expanded foam core 84 was only shown in association with the duct line 80 in Figure 11”
The examiner respectfully encourages Applicant to review paragraph 31, at the top of pg 9/13 of the previous office action, as well as the teachings of Murphy in col 4, lns 59 – 61; and in col 10, lns 24 – 27, provided below.
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In response to the 35 U.S.C. §103 rejection of claims 1 and 3 – 6 as being unpatentable over Cunningham (GB 246228), in view of Murphy (US 5,095,942), in view of Northrup, Jr. (US 3,977,467)4 Applicant remarked (inter alia, continued) Additionally, the Murphy patent lacks: (1) wherein the wall has a plurality of concentric circular areas; (2) wherein the plurality of concentric circular areas are cut entirely through the wall; (3) wherein each of the plurality of concentric circular areas comprises a first partial circle having ends in spaced relation to a second partial circle; (4) wherein the ends of the first and second partial circles are spaced apart equally for each of the plurality of concentric circular areas; (5) wherein the plurality of concentric circular areas are at least three circular areas of differing diameters; and (6) wherein each of the plurality of concentric circular areas is formed centrally on the wall.
The examiner respectfully notes that Murphy discloses, at least:
(1) wherein the wall has a plurality of concentric circular areas;
(3) wherein each of the plurality of concentric circular areas comprises a first circle having ends in spaced relation to a second circle; and
(5) wherein the plurality of concentric circular areas are at least three circular areas of differing diameters (as seen in fig 3)
as well as
wherein at least one of the plurality of concentric circular areas is selectively removable (col 4, lns 33 – 43, and lns 65 – col 5, ln 1); and
an expandable polymeric material (col 10, lns 24 – 27) affixed to an inner side of each of the plurality of side panels and entirely across at least a portion the wall (col 4, lns 59 – 61).
In response to the 35 U.S.C. §103 rejection of claims 1 and 3 – 6 as being unpatentable over Cunningham (GB 246228), in view of Murphy (US 5,095,942), in view of Northrup, Jr. (US 3,977,467)5 Applicant remarked (inter alia, continued) “The Northrup patent was recited as showing also "knock-out holes" similar to that shown in the Cunningham British patent. These knock-out holes are merely used on the body for introducing piping. The reference to these "knock-out discs" was described in column 8, lines 44-55, as follows:... It will be apparent that in the configuration of FIGS. 12 and 13 refrigerant and drain line access holes are provided in the side panels in which the access door 124 is secured, while such access holes for the refrigerant and drain lines are in the panel, including the air discharge opening in the form of the unit of FIG. 14...Applicant respectfully contends that one having ordinary skill in the art would not look to these holes for providing refrigerant and drain lines in order to create the plurality of concentric circles cut entirely through the wall of the register box in the form of partial spaced-apart circles for the purpose of securing the collar therein. The cut concentric circles and partial circles of the present invention would not be considered to be "knock-out discs".
The examiner respectfully notes that Northrup was not relied upon in the rejection of claims 1 and 3 – 6.
In response to the 35 U.S.C. §103 rejection of claims 1 and 3 – 6 as being unpatentable over Cunningham (GB 246228), in view of Murphy (US 5,095,942), in view of Northrup, Jr. (US 3,977,467)6 Applicant remarked (inter alia, continued) “Fundamentally, the present invention uses a first partial circle and a second partial circle in spaced relation to each other so that the material associated with these partial circles can be bent back-and-forth, so as to remove the circular area from the register box. The "knock-out areas" of either the Cunningham British patent or the Northrup patent are not comparable to the present invention because there is no polymeric foam material on the inner side of the register boxes of the prior art and no expandable polymeric material overlying or underlying these cut circular areas. Any cutting entirely through the wall would be contrary to the intended purpose of the insulated register box since the cut through the wall of the register box would allow for air leakage. As such, a person having ordinary skill in the art would not carry out such cutting.
The examiner respectfully requests that Applicant review the disclosure of Murphy, and paragraph 31 of the previous office action, as discussed in paragraph 12 above.
In response to the 35 U.S.C. §103 rejection of claims 1 and 3 – 6 as being unpatentable over Cunningham (GB 246228), in view of Murphy (US 5,095,942), in view of Northrup, Jr. (US 3,977,467)7 Applicant remarked (inter alia, continued) that they “respectfully contends that independent claim 1 is different in structure, function, and results achieved from that of the prior art. In the prior art, since there is no polymeric foam material on the inner wall of the register box, an unskilled worker would not be able to use the cut out circular area as a guide for using a knife in order to cut through the polymeric foam. Ultimately, the present invention, when a collar or duct is introduced through the removed hole in the cut polymeric material, the pliability of the polymeric material will ensure a tight seal with the collar. This enhances the insulation qualities of the register box. The prior art fails to show or suggest such elements.
The examiner respectfully disagrees with Applicant’s characterization of the prior art, and so the rejections are being maintained.
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 18, and 3 – 6 are rejected under 35 U.S.C. §103 as being unpatentable over Cunningham (GB 2463228), in view of Murphy (US 5,095,942), in view of North (US 2,987,258).
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) cut entirely through the wall, wherein each of the plurality of concentric circular knockout 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 circular areas is selectively removable; and
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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.
Regarding the limitation “a first partial circle having ends in spaced relation to a second partial circle” as Cunningham comprises a plurality of concentric circles, it therefore also comprises a first partial circle and a second partial circle.
Regarding “cut entirely through the wall”, as Cunningham discloses the concentric circles (15) are “pushed” through the sides of the box, 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:
an expandable polymeric material affixed to an inner side of each of the plurality of side panels and entirely across the wall; and
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.
Murphy teaches a register box (figs 1, 3) for an HVAC installation, the register box comprising:
a body (30) having a plurality of side panels ((36), col 4: lns 23 – 33) arranged in a generally rectangular or square configuration, said body having a wall (36a) extending generally transverse to the plurality of side panels, the plurality of side panels defining an opening (as seen in fig 3, at (39)) opposite the wall, the plurality of side panels having a plurality of concentric circular areas (35) indented into the plurality of side panels (col 4, lns 33 – 43);
wherein each of the plurality of concentric circular areas comprises a first circle in spaced relation to a second circle, wherein at least one of the plurality of concentric circular areas is selectively removable (col 4, ln 65 – col 5, ln 1);
an expandable polymeric material (col 10, lns 24 – 27) affixed to an inner side of each of the plurality of side panels and entirely across at least a portion the wall (col 4, lns 59 – 61); and
a collar (figs 4, 5: (40)) affixed to the body (col 3, lns 60 – 66), said collar extending through the selectively removed at least one of the plurality of concentric circular areas and through the expandable polymeric material (apparent, as the collar is “adapted for connection to an opening 33 cut in the wall of a distribution box”, ln 65) so as to open to an interior of the body, wherein the expandable polymeric material bears ensures a seal against an outer surface of said collar (due to the collar comprising resilient spring teeth (43); and as the wall (36a) comprises expandable polymeric material, combined with the resilient nature of the first end (41) of the collar, the expandable polymeric material will ensure a tight seal against an outer surface of the collar (40) col 5, lns 26 – 67)).
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 Murphy, such that the system comprises:
an expandable polymeric material affixed to an inner side of each of the plurality of side panels and entirely across the wall;
such that the collar (3) extends 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,
for the benefit of improved energy efficiency.
Regarding the limitation “the wall having a plurality of concentric circular areas (15) cut entirely through the wall, 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 circular areas is selectively removable”, this recitation is the definition of a knockout, as evidenced by North.
North teaches a register box for an HVAC installation, the register box comprising:
a body (fig 1: (10)) having a plurality of side panels arranged in a generally rectangular or square configuration (col 2, lns 19 – 23), said side panels having a plurality of concentric circular areas cut entirely through the wall,
wherein at least one of the plurality of concentric circular areas is selectively removable; and
a collar (26’) affixed to the body (col 3, ln 56 - 59), said collar extending through the selectively removed at least one of the plurality of concentric circular areas (col 3, lns 40– 70; col 4, lns 37 – 49).
“To enable a single, standard structural unit to be used for any of the diverse installations likely to be met with, the housing structure is manufactured and supplied to each job without duct openings. Such openings are defined, however, by slits or cuts stamped or otherwise formed in the walls of the plenum chamber partially outlining sections 40 of the wall to be removed to form the duct openings. In the installation of a unit, the partially cut wall sections are simply pushed or knocked out of the wall where it is desired to connect a duct with the unit.
“Thus, as shown in FIG. 1, knockout sections 40 are provided in each of the side walls 27 and 39 of the chamber 22 and two knockout sections 40 are provided in the end wall 28. In the preferred form of construction shown, the removable wall sections 40 are preliminarily outlined by four arcuate slits 41 arranged to define a circle as shown in FIG. 4.The ends of the slits are spaced apart, leaving integral tongues 42 connecting the sections with the remainder of the wall and holding them in place. The tongues 42 are relatively narrow so that they can be broken off, when necessary, by application of pressure or a sharp blow to the outlined wall section.
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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
THIS ACTION IS MADE FINAL. 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.
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.
An example of such pertinent prior art includes Koga et al (WO 2006 038352), who discloses an air conditioner wherein a blowout duct is post-attached. A connection planned surface of a blowout duct in a casing has knockout holes spaced from each other, and the knockout holes are along the edges of opening planned ports capable of being selectively communicated with the blowout duct. (Abstract) In addition, as described above, the heat insulating material 140 is disposed inside the knockout holes 160, so that this heat insulating material 140 prevents outside air from entering the unit main body 110 via the knockout holes 160. Thus, the heat insulation in the unit body 110 is maintained. [0031]
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An example of such pertinent prior art includes Swaim (US 5,658,196), who discloses an air duct diffuser comprising a frame (25) (col 3, lns 43 – 46), a pre-formed, composite housing of insulating material (col 3, ln 62 – 67) that mounts to the frame and has punch-out duct openings (col 4, lns 34 – 37) of varying sizes provided therein.(Abstract)
An example of such pertinent prior art includes Mullings (US 3907050), who discloses a housing comprising a body (fig 2) having a plurality of side panels arranged in a generally rectangular or square configuration, said body having a wall (30) extending generally transverse to the plurality of side panels, the wall having a plurality of circular areas (48) cut into entirely through the wall, wherein at least one of the plurality of circular areas is selectively removable (col 3, lns 32 - 42).
An example of such pertinent prior art includes Kersika et al (2018/0142916), who discloses a method of forming metal duct sections (Abstract), wherein a perforated seam (fig 4: (22)) includes a series of perforations 25, and small webs 26 of material which are not removed from the sheet 20 (but which remain intact after the plasma cutting process). Hence, the outline of a hole 21 is formed by the perforated seam 22. The web of material 28 (also referred to as a blank or knock-out) interior to the perforated seam 22 remains partially attached to the metal sheet 20 due to the small webs 26 of material connected the blank 28 to the larger sheet of material [0028].
An example of such pertinent prior art includes Brumleu, Jr. (US 4,159,674) who teaches 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, said body having a wall (6) extending generally transverse to the plurality of side panels, the plurality of side panels defining an opening (as seen in fig 4) opposite the wall, the wall having a plurality of concentric circular areas (16) indented into cut into entirely through the wall; and,
wherein each of the plurality of concentric circular areas (16) comprises a first partial circle having ends in spaced relation to a second partial circle, wherein at least one of the plurality of concentric circular areas is selectively removable (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)).
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
1 It is respectfully noted that Applicant argued that “claims 1 and 3 – 6 were rejected under 35 USC §103(a) as being obvious over Cunningham British patent in view of the Murphy patent and the Northrup patent.” However, claims 1 and 3 – 6 were rejected under 35 USC §103(a) as being obvious over Cunningham (GB 2463228), in view of Murphy (US 5,095,942), in view of North (US 2987258).
2 Claims 1 and 3 – 6 were rejected under 35 USC §103(a) as being obvious over Cunningham (GB 2463228), in view of Murphy (US 5,095,942), in view of North (US 2987258).
3 Method Claim 15, filed November 15, 2022
4 Claims 1 and 3 – 6 were rejected under 35 USC §103(a) as being obvious over Cunningham (GB 2463228), in view of Murphy (US 5,095,942), in view of North (US 2987258).
5 Claims 1 and 3 – 6 were rejected under 35 USC §103(a) as being obvious over Cunningham (GB 2463228), in view of Murphy (US 5,095,942), in view of North (US 2987258).
6 Claims 1 and 3 – 6 were rejected under 35 USC §103(a) as being obvious over Cunningham (GB 2463228), in view of Murphy (US 5,095,942), in view of North (US 2987258).
7 Claims 1 and 3 – 6 were rejected under 35 USC §103(a) as being obvious over Cunningham (GB 2463228), in view of Murphy (US 5,095,942), in view of North (US 2987258).
8 claim 2 has been cancelled by Applicant.