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 .
This is a non-final Office Action for serial number 18/146,249, Specialized Fasteners And Holiday Light Clips For Gutters And Gutter Guards, filed on December 23, 2022.
Claim 35 was addressed from previous Office Action and overlooked by the examiner. Therefore, this action cannot be made final.
Claim Rejections - 35 USC § 103
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.
Claim(s) 13-23, 28-35, and 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 7,188,977 to Lough in view of U.S. Patent No. 3,861,632 to Siilats.
Regarding claims 13, 28, and 36-37, Lough ‘977 discloses a single piece clip (10 - Fig. 1) configured to attach to a gutter guard screw and configured to provide support for a wire, comprising a body having a top member (30) and a side member (20) integrally joined to the top member and extended downward from the top member, wherein a form of the body has a generally inverted L-shaped cross section, and an attachment mechanism (40) disposed on the side member, the attachment mechanism is configured to receive the wire. However, Lough ‘977 fails to disclose wherein the top member having with opposing legs, a separation between the opposing legs forming an attachment structure; wherein when the clip is in use, the gutter guard screw attachment structure is configured to receive the gutter guard screw. Nevertheless, Siilats ‘632 disclose wherein the top member having with opposing legs (12 – Figs. 1-2), a separation between the opposing legs forming an attachment structure.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the top member of Lough ‘977 to include the opposing legs as taught by Siilats ‘632 because one would have motivation to provide a reduced production cost with less materials and to reduce shipping costs.
Regarding claims 14, and 29, Slough ‘977 in view of Siilats ‘632 discloses wherein the side member is joined to the top member between 45 degrees.
Regarding claims 15, 19, 30, and 33, Slough ‘977 in view of Siilats ‘632 do not disclose wherein the attachment structure further comprises first and second holes, each hole in line with each other and having a passage way therebetween. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the top member of Lough ‘977 in view of Siilats ‘632 to include two holes in the slit passage way since such a modification would involve a mere change in the size of a slit. A change in size is generally recognized as being within the level of ordinary skill in the art.
Regarding claims 16, and 31, Slough ‘977 in view of Siilats ‘632 do not disclose wherein a cut at an end of the second hole (slit). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the slit of Lough ‘977 in view of Siilats ‘632 to include a cut because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the top member to include the cut, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman 168 USPQ 177, 179.
Regarding claim 17, Slough ‘977 in view of Siilats ‘632 discloses wherein the top member is shaped to be slightly non-planar.
Regarding claim 18, Slough ‘977 in view of Siilats ‘632 discloses wherein the gutter guard screw attachment structure is an open ended slit (between legs).
Regarding claim 20, Slough ‘977 in view of Siilats ‘632 discloses wherein the side member is multi-walled to form a well for fitment of the wire (Fig. 1).
Regarding claims 21, and 35, Slough ‘977 in view of Siilats ‘632 discloses wherein the clip is formed from polypropylene (Siilat ‘632 - Fig. 3 cross section - plastic).
Regarding claim 22, Slough ‘977 in view of Siilats ‘632 discloses wherein the top member is approximately 0.5 inches in length and the side member is approximately 0.5 inches in length.
Regarding claim 23, Slough ‘977 in view of Siilats ‘632 discloses wherein the gutter guard screw attachment structure is an opening surrounded with flexing tabs (Fig. 1).
Regarding claim 32, Slough ‘977 in view of Siilats ‘632 wherein the screw attachment portion is an open end slit.
Regarding claim 34, Slough ‘977 in view of Siilats ‘632 discloses wherein the second member is curved to form a well for fitment of the wire (Fig. 1).
Regarding claim 35, Slough ‘977 in view of Siilats ‘632 do not exactly disclose wherein the clip is formed from polypropylene plastic. However, Slough ‘977 discloses wherein the clip can be made of any size, shape, and materials. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the clip of Lough ‘977 in view of Siilats ‘632 to include polypropylene plastic since it has been held to be within the general skill of a worker in the art to select a known material – plastic due to cheaper cost.
Regarding new claim 38, “means” is not positively recited and is considered as a functional language.
Response to Arguments
Applicant's arguments filed April 29, 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that “a single piece clip configured to attach to a gutter guard screw” and “configured to provide support for a wire”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TODD M. EPPS whose telephone number is (571) 272-8282. The examiner can normally be reached Monday-Friday 8am - 5pm.
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, Terrell McKinnon can be reached at 571-272-4797. 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.
/TODD M EPPS/Primary Examiner, Art Unit 3632 August 6, 2025