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 .
Terminal Disclaimer
The terminal disclaimer filed on 3/10/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number US 18/058227 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The disclaimer fee of $183 in accordance with 37 CFR 1.20(d) has not been submitted, nor is there any authorization in the application file to charge a specified Deposit Account or credit card.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 6 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18058227 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 6, Claim 6 of copending Application No. 18058227 teaches
a system for preventing a buildup of ice on a metal roof with a plurality of seams forming channels between the seams (Claim 6 lines 1-3 A system for preventing a buildup of ice on a metal roof with a plurality of parallel seams forming channels between the seams), the system comprising:
a plurality of roof clip assemblies adustably fastenable to seams on a metal roof (Claim 6 line 4 a plurality of clips fastenable to seams on a metal roof);
a heating cable routable through the plurality of roof clip assemblies (Claim 6 lines 5 a heating cable routable through the plurality of clips); and
a routing pattern for the heating cable in which (Claim 6 line 6 a routing pattern for the heating cable):
the heating cable passes through a first cable clamp of a first roof clip assembly of the plurality of roof clip assemblies, the first roof clip assembly positioned on a first seam of the plurality of seams at a lower location (Claim 6 lines 7-10 the cable passes through a first routing clamp of a first clip of the plurality of clips, the first clip positioned on a first seam of the plurality of seams at a lower location);
the heating cable continues upward along one side of the first seam through a routing clamp of a second roof clip assembly of the plurality of roof clip assemblies, the second roof clip assembly positioned on the first seam at an upper location (Claim 6 lines 11-13 the cable continues upward along one side of the first seam through a first routing clamp of a second clip of the plurality of clips, the second clip positioned on the first seam at an upper location),
wherein the routing clamp of the second roof clip assembly spans across the first seam (Claim 6 lines 13-14 the cable passes over the seam to a second side of the first seam);
the heating cable continues downward along a second side of the first seam through a second routing clamp of the first roof clip assembly (Claim 6 lines 19-21 the cable continues downward along the second side of the first seam through a second routing clamp of the first clip);
the heating cable is routed below an upper surface of the metal roof to a second seam of the plurality of seams (Claim 6 lines 22-23 the cable is routed below an upper surface of the roof to a second seam of the plurality of seam); and
wherein the routing pattern is repeated for a desired number of seams of the plurality of seams (Claim 6 lines 24-25 wherein the routing pattern is repeated for a desired number of seams of the plurality of seams);
wherein the channels between the seams remain clear of horizontally-oriented lengths of heating cables (Claim 6 lines 26-27 wherein the channels between the seams remain clear of horizontally-oriented lengths of heating cables).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nark (US8782960B2) in view of Kuhl (US20210238857A1).
PNG
media_image1.png
367
838
media_image1.png
Greyscale
Annotated Fig. 8C of Nark
Regarding claim 6, Nark teaches A system for preventing a buildup of ice on a metal roof (Col. 1 lines 15-25 a heating cable that melts snow and ice on a roof) with
a plurality of seams (328) forming channels (Fig. 8C channel in seam 328) between the seams (328, Fig. 8C),
the system comprising:
a plurality of roof clip assemblies (300, 330) adjustably fastenable to seams (328) on a metal roof (302);
a heating cable (320) routable through the plurality of roof clip assemblies (Col. 10 lines 1-43 300, 330); and
a routing pattern (Fig. 8C) for the heating cable (320) in which:
the heating cable (320) passes through a first cable clamp (310) of a first roof clip (330) assembly of the plurality of roof clip assemblies (300, 330), the first roof clip (310) assembly positioned on a first seam at a lower location (Annotated Fig. 8C);
the heating cable (320) continues upward along one side of the first seam (328) through a routing clamp (310) of a second roof clip assembly (300) of the plurality of roof clip assemblies (Col. 10 lines 1-43 300, 330, Fig. 8C),
the second roof clip (300) assembly positioned on the first seam at an upper location (Fig. 8C)
wherein the routing clamp (310) of the second roof clip assembly (300) spans across the first seam (328);
the heating cable (30) continues downward along a second side of the first seam (328, Fig. 8C) through a second routing clamp (310) of the first roof clip assembly (330)
wherein the routing pattern is repeated for at least two seams of the plurality of seams (Fig. 8A);
wherein the channels (Fig. 8C channel between seams 328) between the seams (328) remain clear of horizontally-oriented lengths of heating cables (Fig. 8C).
Nark is silent on the heating cable is routed below an upper surface of the metal roof to a second seam of the plurality of seams.
PNG
media_image2.png
676
924
media_image2.png
Greyscale
Fig. 1 of Kuhl
Kuhl teaches the heating cable (102) is routed below an upper surface of the metal roof (R, where Fig. 1 shows cable 102 being routed in portion G under roof R) to a second seam of the plurality of seams ([0039, 0045] Fig. 1 heating cable 102 and fastening system 104 to fasten heating cable to other roof features such as roof R, gutter G, and other roof features GV, SP, RW, RV, taken to be a second seam of plurality of seams).
Nark and Kuhl are considered to be analogous to the claimed invention because they are in the same field of heating cable systems. It would have been obvious to have modified Nark to incorporate the teachings of Kuhl to have the heating cable routed below an upper surface of the metal roof R to aa second seam in order to configure the heating cable to be routed in a variety of configuration which is advantageous to generate optimal melt patterns (Kuhl [0045]).
PNG
media_image3.png
592
838
media_image3.png
Greyscale
Annotated Figs. 8C and 8D of Nark
Regarding claim 7, Nark and Kuhl teach the system of claim 6 and Nark teaches wherein at least one of the plurality of roof clip assemblies comprises: a mounting block (Fig,. 8C, 8D Col. 10 lines 1-43 block of clamp 300) connectable to a seam (328); and
at least one cable clamp (310) fastened to the mounting block (3).
Regarding claim 8, Nark and Kuhl teach the system of claim 7, and Nark teaches wherein the mounting block comprises: a first wall (Annotated Fig. 8C and 8D);
a second wall (Annotated Fig. 8C and 8D);
a top wall joining the first and second walls and creating a gap therebetween (Annotated Fig. 8C and 8D); and
set screws (308) passing through at least one of the first and second walls and usable to create a friction fit with the seam when tightened (Col. 10 lines 1-15 clamp 300 to be secured to the roof vis-à-vis the flashing raised portion with a mechanical fastener 308).
Regarding claim 9, Nark and Kuhl teach the system of claim 8, and Nark teaches wherein the mounting block further comprises a block hole in the top wall (Fig. 8D) usable to receive a fastener (312) connecting the at least one cable clamp (310) to the mounting block (300).
Regarding claim 10, Nark and Kuhl teach the system of claim 7, and Nark teaches wherein the at least one cable clamp (310) comprises a single cable clamp (Col. 10 lines 15-30 one cable loop 310).
Regarding claim 11, Nark and Kuhl teach the system of claim 7, and Nark teaches wherein the at least one cable clamp (310) comprises two cable clamps (Col. 10 lines 15-30 two or more cable loops 310).
PNG
media_image4.png
752
854
media_image4.png
Greyscale
Fig. 11 of Kuhl
Regarding claim 12, Nark and Kuhl teach the system of claim 7, and Nark teaches wherein the at least one cable clamp comprises:
a lower guide (Fig. 8C lower of cable loop 310);
an upper guide (Fig. 8C upper of cable loop 310).
Nark is silent on a bendable member joining the lower and upper guides and can be bent over the heating cable such that the heating cable is trapped between the upper guide and the lower guide.
Kuhl teaches a bendable member ([0107] cable cradle 204 is bendable along the first neck 214) joining the lower and upper guides (222, 218) and can be bent over the heating cable (102) such that the heating cable is trapped between the upper guide and the lower guide ([0093] Fig. 11 cable cradle 204, is configured to secure the heating cable 102).
It would have been obvious to have modified Nark to incorporate the teachings of Kuhl to have a bendable member so that the cable may be secured within the guide while being operable to have an open and closed position for selectively confining the cable that is held in place for moving of the cable (Kuhl [0107]).
Regarding claim 13, Nark and Kuhl teach the system of claim 6, and Nark teaches wherein the first roof clip (330) assembly comprises two cable clamps (Col. 10 lines 15-30 two or more cable loops 310).
Regarding claim 14, Nark and Kuhl teach the system of claim 6, and Nark teaches wherein the second roof clip (300) assembly comprises a single cable clamp (310) that spans across the first seam (328).
Response to Arguments
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive.
Regarding applicant's argument that Kuhl does not show that "the cable is routed below an upper surface of the metal roof to a second seam of the plurality of seams," it is understood that the combination of Nark and Kuhl would teach the limitations, given that Nark teaches at least two seams, as now required by the claims, where it would have been obvious to have modified Nark with Kuhl, to route the cable below to upper surface of the metal roof to a second seam, being the equivalent of fastenings at other roof features as in Fig. 1, [0039,0045], in order to allow the cable to be routed in a variety of configurations, across the roof, being advantageous to creating optimal melt pattern (Kuhl [0045]). In [0045] Kuhl teaches that the clips 106, being portions that route the cable 102, can be placed along the length of the gutter G, where gutter G is understood to be at least below an upper surface of the metal roof, in order to reach other components SP, RW, RV, and does not limit the routing of the heating cable "through the gutter, below the roof surface, after the pattern is completed.”
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABIGAIL RHUE whose telephone number is (571)272-4615. The examiner can normally be reached Monday - Friday, 10-6.
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, Steven Crabb can be reached at (571) 270-5095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ABIGAIL H RHUE/Examiner, Art Unit 3761 6/2/2026
/WOODY A LEE JR/Primary Examiner, Art Unit 3761
Prosecution Insights