DETAILED ACTION
This Office action is a reply to the amendment filed on 9/29/2025. Currently, claims 1-4, 6, 8-13, 15-16 and 18-20 are pending. Claim 20 has been withdrawn. Claims 5, 7, 14 and 17 have been cancelled. No new claims have been added.
Drawings
The replacement drawings were received on 9/29/2025. The drawings remain objected to for the reasons set forth hereinbelow.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
“wherein the first and second holding components are carpet lined holding components” (claims 1 and 15; note that no such carpet lined material is shown in the drawings); and
“wedge spacer component” (claim 15; note that while applicant’s specification sets forth “wedge 312”, such wedge is depicted as a rectangular cuboid instead of a tapered or trapezoid shape, under the plain meaning).
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15-16 and 18-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 15, “wherein the spacer component is a wedge spacer component” is new matter. Although applicant’s specification defines the spacer component as possibly being a wedge, nowhere does the specification recite the wedge being a wedge spacer component. A wedge, under the plain meaning is a piece of substance that tapers to a thin edge and is used for splitting wood and rocks, raising heavy bodies, or for tightening by being driven into something. Applicant’s depicted wedge 312 is simply a rectangular cuboid piece of substance. Further, the claim recites, “a wedge spacer component”, which is broader than applicant’s disclosure of “wedge”. Nowhere does applicant’s disclosure adequately define or illustrate “a wedge spacer component”. Nowhere does the term “wedge spacer component” appear in applicant’s disclosure. Further, applicant’s disclosure does not convey how a wedge spacer component differs from a wedge. While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit or inherent disclosure. MPEP 2163(B). This rejection can be overcome by amending the claim to recite, “wherein the spacer component is a wedge” or equivalent, or by deleting the limitation.
The remainder of claims in this section are rejected by virtue of dependency on a rejected base claim.
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 15-16 and 18-19 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.
Claim 15, “wherein the spacer component is a wedge spacer component” is indefinite because it is unclear what the limitation requires. While applicant’s specification defines the spacer component as possibly being a wedge, there is no such definition for a wedge spacer component. The metes and bounds of “wedge spacer component” are not so clearly defined that one of ordinary skill would understand the difference between a wedge and a wedge spacer component, with the latter being a broader rendition of the former.
The remainder of claims in this section are rejected by virtue of dependency on a rejected base claim.
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) 1-4, 6, 8-13, 15 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Tongue and Groove Ceiling Install” by Make It Easy DIY, published on 2/15/2015 (https://www.youtube.com/watch?v=aHHSOpqyVk0) (‘Make It Easy’) in view of Schaefer (US 3871054).
Claim 1, Make It Easy teaches a tongue and groove installation device that allows a user to install a plurality of tongue and groove ceiling boards without assistance from another, the tongue and groove installation device comprising:
a first holding component (see annotated screenshot of Make It Easy at time 3:35 shown below in Examiner’s Notes);
a second holding component (annotated screenshot of Make It Easy at time 3:35) secured to the first holding component (annotated screenshot of Make It Easy at time 3:35); and
a spacer component (annotated screenshot of Make It Easy at time 3:35) secured between the first holding component and the second holding component (annotated screenshot of Make It Easy at time 3:35);
wherein the tongue and groove installation device is a support system for the plurality of tongue and groove ceiling boards during installation (it is understood that the tongue and groove installation device is a support system for the plurality of tongue and groove ceiling boards during installation; see annotated screenshot of Make It Easy at 3:35 and cited screenshots); and
wherein the tongue and groove installation device allows the user to tap and nail the uninstalled ceiling board into place, without having to simultaneously hold the uninstalled ceiling board over the user (at time 4:21; see cited screenshots);
wherein the first and second holding components and the spacer component are manufactured from different materials (the first and second components are manufactured from boards and the spacer component is manufactured from a tongue and groove panel “T & G ceiling sandwiched between two boards”; comments section).
Make It Easy does not teach the first and second holding components are carpet lined holding components.
However, Schaefer teaches an installation device comprising first and second holding components (11, 12, respectively) comprising first and second carpet lined holding components (cushioning material 30 comprising carpet col. 2, lines 25-30). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the first and second holding components as carpet lined holding components, with the reasonable expectation of success of protecting the surfaces of the ceiling boards (Schaefer col. 2, lines 25-30).
Claim 2, Make It Easy further teaches wherein the first holding component and the second holding component are configured in a spaced apart relationship (see Make It Easy cited screenshots).
Claim 3, Make It Easy further teaches wherein the spacer component is positioned at a first end of each of the first and the second holding components (see Make It Easy cited screenshots) and is positioned between the first and the second holding components (see Make It Easy cited screenshots).
Claim 4, Make It Easy further teaches wherein the first and the second holding components are parallel to each other (see Make It Easy cited screenshots).
Claim 6, Make It Easy further teaches wherein the first and the second holding components are detachably connected to the spacer component by a plurality of fasteners (see fasteners best shown on page 1 of Make It Easy cited screenshots), in such a way that the first and the second holding components create vertically upright end walls at opposite ends of the spacer component (see Make It Easy cited screenshots).
Claim 8, Make It Easy further teaches wherein the spacer component is secured to an interior surface of each of the first and the second holding components (the spacer is sandwiched therebetween; annotated screenshot at time 3:35 of Make It Easy).
Claim 9, Make It Easy further teaches wherein the spacer component is secured at the first end of the first and the second holding components (see cited Make It Easy screenshots), leaving a second end of each of the first and the second holding components open (see cited Make It Easy screenshots, especially page 1), thereby allowing the plurality of tongue and groove ceiling boards to be inserted into the second end and retained (see cited screenshots of Make It Easy screenshots).
Claim 10, Make It Easy further teaches wherein a thickness of the spacer component is greater than a thickness of the tongue and groove ceiling board (see cited Make It Easy screenshots).
Claim 11, Make It Easy further teaches wherein the spacer component and each of the first and the second holding components are integrated into a single unitary body (under the broadest reasonable interpretation, Make It Easy’s spacer component and each of the first and the second holding components are “secured together” as per claim 1 to nonetheless form an integrated single unitary body held together with fasteners, as exceedingly broadly claimed; see cited screenshots of Make It Easy screenshots, especially page 1). In the event that applicant disagrees that Make It Easy teaches the tongue and groove installation device forming a single unitary body, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the tongue and groove installation device as a single unitary body, with the reasonable expectation of further eliminating the possibility of the first and second holding components from becoming loose over time with use, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).
Claim 12, Make It Easy further teaches wherein the spacer component is a block that acts to space apart the first and the second holding components by a predetermined distance (see cited screenshots of Make It Easy screenshots).
Claim 13, Make It Easy further teaches wherein the spacer component is a clamp that allows the first and the second holding components to be spaced apart when an end is pressed together (under the broadest reasonable interpretation, the spacer component was treated as a clamp as claim, since it allows the first and the second holding components to be spaced apart when an end is pressed together; see cited screenshots of Make It Easy screenshots).
Claim 15, Make It Easy teaches a tongue and groove installation device that allows a user to install a plurality of tongue and groove ceiling boards without assistance of another (see cited screenshots of Make It Easy, and annotated screenshot at time 3:35 shown below in Examiner’s Notes), the tongue and groove installation device comprising:
a first holding component (annotated screenshot of Make It Easy);
a second holding component (annotated screenshot of Make It Easy) secured to the first holding component in a parallel configuration (annotated screenshot of Make It Easy); and
a spacer component (annotated screenshot of Make It Easy) secured between the first holding component and the second holding component (annotated screenshot of Make It Easy);
wherein the spacer component is secured to an interior surface of each of the first and the second holding components (annotated screenshot of Make It Easy);
wherein the spacer component is secured at a first end of each of the first and the second holding components (annotated screenshot of Make It Easy), leaving a second end of each of the first and the second holding components open and allowing the plurality of tongue and groove ceiling boards to be inserted into the second end and retained (annotated screenshot of Make It Easy; see cited screenshots of Make It Easy, especially page 1);
wherein a thickness of the spacer component is greater than a thickness of the tongue and groove ceiling board (see cited screenshots of Make It Easy, especially page 1);
wherein a length of each of the first and the second holding components is longer than a combined width of the plurality of tongue and groove ceiling boards, such that when the tongue and groove installation device is inserted onto the uninstalled ceiling board, it also slides over multiple installed ceiling boards to retain the uninstalled ceiling board against the multiple installed ceiling boards (note the drawing objection about the tongue and groove installation extending over an entirety of each of three or more boards not being depicted; as best understood, the tongue and groove installation device of Make It Easy extends over an entirety of an uninstalled board, an entirety of a first installed board, and a portion of a second installed board; see annotated screenshot at time 3:35); and
wherein the tongue and groove installation device allows the user to tap and nail the uninstalled ceiling board into place (at time 4:21; see cited screenshots), without having to simultaneously and manually support the uninstalled ceiling board (it is understood that having to simultaneously and manually supporting the uninstalled ceiling board is not necessary; at time 4:21; see cited screenshots); and
wherein the spacer component is a wedge spacer component (see 112b rejection above; note that under the broadest reasonable interpretation, the shape of Make It Easy’s spacer is such that it comprises at least one wedge or at least one generally tapered shape to push a respective ceiling board into an installed position, as exceedingly broadly claimed; see Make It Easy annotated screenshots).
Make It Easy does not teach the first and second holding components are carpet lined holding components.
However, Schaefer teaches an installation device comprising first and second holding components (11, 12, respectively) comprising first and second carpet lined holding components (cushioning material 30 comprising carpet col. 2, lines 25-30). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the first and second holding components as carpet lined holding components, with the reasonable expectation of success of protecting the surfaces of the ceiling boards (Schaefer col. 2, lines 25-30).
Claim 18, Make It Easy further teaches wherein each of the first and the second holding components are detachably connected to the spacer component by fasteners (see fasteners in cited screenshots of Make It Easy, especially on page 1), in such a way that the first and the second holding components create vertically upright end walls at opposite ends of the spacer component (cited screenshots of Make It Easy).
Claim 19, Make It Easy further teaches wherein the spacer component and each of the first and the second holding components are integrated into a single unitary body (under the broadest reasonable interpretation, Make It Easy’s spacer component and each of the first and the second holding components are “secured together” as per claim 1 to nonetheless form an integrated single unitary body held together with fasteners, as exceedingly broadly claimed; see cited screenshots of Make It Easy screenshots, especially page 1). In the event that applicant disagrees that Make It Easy teaches the tongue and groove installation device forming a single unitary body, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the tongue and groove installation device as a single unitary body, with the reasonable expectation of further eliminating the possibility of the first and second holding components from becoming loose over time with use, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Tongue and Groove Ceiling Install” by Make It Easy DIY, published on 2/15/2015 (https://www.youtube.com/watch?v=aHHSOpqyVk0) (‘Make It Easy’) in view of Schaefer (US 3871054) and further in view of Chalmers et al. (US 1733775) (‘Chalmers’).
Claim 16, Make It Easy and Schaefer teach all the limitations of claim 15 as above. Make It Easy does not teach a plurality of indicia. Note that the courts have found that matters relating to ornamentation only, which have no mechanical function, cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). MPEP 21105(B). In the event that applicant intends for the plurality of indicia to have a mechanical function, Chalmers teaches an installation device comprising a plurality of indicia (Figs. 1-3 and 5). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try incorporating a plurality of indicia on the tongue and groove installation device, to assist the user with installation, positioning and/or orientation of the boards.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4, 6, 8-13, 15-16 and 18-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner’s Notes
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Annotated Screenshot at time 3:35 of “Tongue and Groove Ceiling Install” by Make It Easy DIY, published on 2/15/2015 (https://www.youtube.com/
watch?v=aHHSOpqyVk0) (‘Make It Easy’)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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 JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
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, Brian Mattei can be reached at 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635