DETAILED ACTION
This action is responsive to Applicant’s reply filed 2 September 2025 (hereinafter “Reply”). This action is made Final.
Status of the Claims
Claims 1-20 are pending.
Claims 14-20 are withdrawn.
Notice of AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Election/Restrictions
Applicant’s election without traverse of Invention I in the Reply is acknowledged. Claims 14-20 are withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation - 35 USC § 112(f)
The following is a quotation of 35 U.S.C. § 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claims 1-13 have been interpreted to invoke 35 U.S.C. § 112(f).
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. § 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. § 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. § 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. § 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. § 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim(s) and corresponding limitation(s) is/are:
In claim 1, the limitation: “an assembly subsystem configured to receive the selected curb cap size from the data storage device and to manufacture an exhaust fan with a curb cap having the selected curb cap size.”
Claims 2-6 are also being treated as invoking § 112(f) for substantially the same reasons as indicated above for claim 1, at least due to their dependence on the claim.
In claim 7, the limitation: “the system configured to: ….”
Claims 8-13 are also being treated as invoking § 112(f) for substantially the same reasons as indicated above for claim 7, at least due to their dependence on the claim.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. § 112(f) it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. § 112(f) applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. § 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. § 112(f).
Claim Rejections - 35 USC § 112(a)
The following is a quotation 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.
Claim 13 is rejected under 35 U.S.C. § 112(a) 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, at the time the application was filed, had possession of the claimed invention.
Claim 13 defines the invention in functional language specifying a desired result. A claim may lack written description support when the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved. MPEP § 2163.03(V). Specifically, a software-related claim must adequately describe, in sufficient detail, a computer and algorithm that achieves the claimed functionality. Id. § 2161.01(I). With regards to the claim at issue, the written description fails to provide an algorithm for selecting a motor and an impeller based on airflow input data.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-6 and 11-13 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1, the limitation “an assembly subsystem configured to receive the selected curb cap size from the data storage device and to manufacture an exhaust fan with a curb cap having the selected curb cap size” invokes 35 U.S.C. § 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any description of a machine or process for performing the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. § 112(b).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. § 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter; or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter.
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter; or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 C.F.R. § 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-6 are rejected for substantially the same reason indicated above for claim 1, at least due to their dependence on the claim.
Claim 11 recites the limitation “wherein gathering user input involves monitoring a user input device and determining when the user input device is acted upon by the user to select either the first curb cap size or the second curb cap size.” There is insufficient antecedent basis for the phrase “gathering user input.” See MPEP § 2173.05(e).
Claim 12 recites the limitation “wherein the order data storage database is referenced to select a curb cap having the selected curb cap size prior to assembly of the exhaust fan.” There is insufficient antecedent basis for the phrase “the order data storage database.” See MPEP § 2173.05(e).
Regarding claim 13, the limitation “selecting a motor and impeller based on airflow input data from the user input device, the airflow input data indicative of the airflow requirements of the exhaust fan” invokes 35 U.S.C. § 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any description of a machine or process for performing the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. § 112(b).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. § 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter; or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter.
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter; or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 C.F.R. § 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 7-8 and 11-12 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Candrian et al., US 2008/0126981 A1.
Regarding claim 7, Candrian discloses a computer system configured to facilitate curb cap size selection for manufacturing a fan, the system configured to:
Present a user a first curb cap size and a second curb cap size via a display of a data collection device; receive user input from a user input device coupled to the data collection device, the user input indicating one of the first curb cap size and the second curb cap size as a selected curb cap size. Candrian teaches displaying a graphical user interface (GUI) to a user. Candrian ¶ 34. The GUI may comprise a control for selecting a feature characteristic of an article being custom ordered (e.g., a size of a shoe). Id. ¶ 42. The control may allow for selecting one of several sizes via position markers. Id. ¶¶ 43-44. Candrian teaches that its system may be used “to custom-order any desired article.” Id. ¶ 71.
Store the user input in a data storage device to be referenced by an assembly subsystem in association with manufacturing of the fan. Candrian teaches storing user input selection information in computer memory or at a server. Candrian ¶ 38. The phrase to be referenced by an assembly subsystem in association with manufacturing of the fan has been interpreted to recite an intended use or result. Therefore, the phrase has been afforded no limiting effect. Nevertheless, Candrian teaches the user input selection information may be used by a manufacturer to produce the article being custom ordered. Id. ¶¶ 38-39. Furthermore, Applicant admits that conventional roof mounted exhaust fans may be manufactured in a range of curb cap sizes. Specification ¶ 2.
Regarding claim 8, which depends on claim 7, Candrian discloses wherein during presenting the user the first curb cap size and the second curb cap size, the display presents a curb size display window. Candrian fig. 18A, ¶¶ 84-85.
Regarding claim 11, which depends on claim 7, Candrian discloses wherein gathering user input involves monitoring a user input device and determining when the user input device is acted upon by the user to select either the first curb cap size or the second curb cap size. Candrian teaches monitoring a user input device. Candrian ¶ 79.
Regarding claim 12, which depends on claim 7, Candrian discloses wherein the order data storage database is referenced to select a curb cap having the selected curb cap size prior to assembly of the exhaust fan. Candrian teaches storing user input selection information at a server to be used by the manufacturer to produce the article being custom ordered. Candrian ¶¶ 37-39. A conventional server stores such information in a database (i.e., an ordered collection of information).
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 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 1-6 are rejected under 35 U.S.C. § 103 as being unpatentable over Candrian et al., US 2008/0126981 A1, in view of Greenheck, “Centrifugal Roof Downblast Exhaust Fans” (hereinafter “Greenheck”).
Regarding claim 1, Candrian discloses a system for manufacturing a fan, the system comprising:
A data collection device having a display configured to present a first curb cap size and a second curb cap size. Candrian teaches displaying a graphical user interface (GUI) to a user. Candrian ¶ 34. The GUI may comprise a control for selecting a feature characteristic of an article being custom ordered (e.g., a size of a shoe). Id. ¶ 42. The control may allow for selecting one of several sizes via position markers. Id. ¶¶ 43-44.
A user input device in communication with the data collection device, the user input device operable by a user to select either the first curb cap size or the second curb cap size. Candrian teaches monitoring a user input device. Candrian ¶ 79.
A data storage device configured to store a selected curb cap size. Candrian teaches storing user input selection information in computer memory or at a server. Candrian ¶ 38.
Candrian alone does not explicitly disclose, but Candrian in combination with Greenheck renders obvious an assembly subsystem configured to receive the selected curb cap size from the data storage device and to manufacture an exhaust fan with a curb cap having the selected curb cap size. The term “assembly subsystem” has been interpreted to refer to any machine, tool, or process for manufacturing an exhaust fan with a curb cap. Candrian teaches receiving selection information at a manufacturer’s server. Candrian ¶ 38. The selection information may be used to manufacture “a new article that has the feature characteristic specified by the user.” Id. ¶ 39. Furthermore, Candrian teaches that its system may be used “to custom-order any desired article.” Id. ¶ 71. Candrian does not explicitly disclose an assembly subsystem configured to … manufacture an exhaust fan with a curb cap having the selected curb cap size. However, Applicant admits that conventional roof mounted exhaust fans may be manufactured in a range of curb cap sizes. Specification ¶ 2. Additionally, Greenheck provides compelling evidence of a subsystem for manufacturing exhaust fans with curb caps of varying sizes. Greenheck describes the Model G manufactured exhaust fan as having a 17-inch curb cap, a 19-inch curb cap, a 22-inch curb cap, a 26-inch curb cap, or a 30-inch curb cap. Greenheck 17-26.
It would have been obvious before the effective filing date of the claimed invention to a person with ordinary skill in the art to modify Candrian’s process for custom ordering an article with Greenheck’s description of the manufacture of exhaust fans with curb caps of varying sizes. Such a modification would provide a convenient and user-friendly manner for customers to order an exhaust fan with an appropriately sized curb cap. See Candrian ¶¶ 2-8. Such a modification would also improve efficiency and cost by facilitating just-in-time manufacturing of exhaust fans.
Regarding claim 2, which depends on claim 1, Greenheck discloses wherein the curb cap has sidewalls spaced from one another an amount corresponding with the selected curb cap size. Greenheck teaches exhaust fans with curb caps with variable sidewall spacing (e.g., 17 inches, 22 inches, etc.). Greenheck 17-26.
Regarding claim 3, which depends on claim 1, Greenheck discloses wherein the curb cap is configured for engagement with a roof curb to couple the exhaust fan to the roof curb. Greenheck 8-9.
Regarding claim 4, which depends on claim 1, Candrian discloses wherein the data storage device is a remote server. Candrian teaches storing user input selection information at a server. Candrian ¶ 38.
Regarding claim 5, which depends on claim 1, Candrian discloses wherein the data storage device is a component of the data collection device. Candrian teaches storing user input selection information in computer memory. Candrian ¶ 38.
Regarding claim 6, which depends on claim 1, Candrian discloses wherein the user input device is operable by a user to select an option relating to at least one of a motor characteristic or an impeller characteristic of the exhaust fan. Candrian teaches the GUI may comprise a control for selecting a feature characteristic of an article being custom ordered. Candrian ¶ 42.
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Candrian et al., US 2008/0126981 A1, in view of Otwell et al., US 10,726,469 B1.
Regarding claim 9, which depends on claim 8, Candrian does not explicitly disclose, but Otwell discloses wherein, upon interaction with the curb size display window by the user input device, the display presents a curb size dropdown field including at least the first curb cap size and the second curb cap size. Otwell teaches a user interface window comprising a dropdown list to allow for selecting an attribute value (e.g., size) of an item. Otwell 3:60-4:16, 6:17-7:3.
It would have been obvious before the effective filing date of the claimed invention to a person with ordinary skill in the art to modify Candrian’s user interface for custom ordering of an article with Otwell’s user interface with a dropdown list for selecting an attribute value. Such a modification would provide a user-friendly manner for customers to select and modify an attribute value of an item prior to purchase. See Otwell 1:7-40.
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over Candrian et al., US 2008/0126981 A1, in view of Greenheck, “Centrifugal Roof Downblast Exhaust Fans” (hereinafter “Greenheck”), further in view of Korsky et al., US 2018/0203592 A1.
Regarding claim 10, which depends on claim 8, Candrian teaches a size selection control providing only a discrete number of different selection values within a range. Candrian ¶¶ 73, 78. Candrian does not explicitly disclose wherein the first curb cap size and the second curb cap size each represent a side length of a square shaped cross-section of the curb cap, the first curb cap size and the second curb cap size each being whole number integers in inches equal to or between 10 inches and 100 inches. However, Greenheck teaches multiple curb cap sizes with a side length of a square shaped cross-section of the curb cap size each represent[ing] a side length of a square shaped cross-section of the curb cap. See Greenheck 17-26. Additionally, Greenheck teaches multiple curb cap sizes being whole number integers in inches equal to or between 10 inches and 100 inches. Specifically, Greenheck describes the Model G manufactured exhaust fan as having a 17-inch curb cap, a 19-inch curb cap, a 22-inch curb cap, a 26-inch curb cap, or a 30-inch curb cap. Id. 17-26. Finally, Korsky teaches a control for selecting a size of an object wherein the size is a whole number integer in the range of 10 inches to 100 inches. Korsky fig. 4 (second sector 402), ¶ 32.
It would have been obvious before the effective filing date of the claimed invention to a person with ordinary skill in the art to modify Candrian’s process for custom ordering an article with Greenheck’s description of the manufacture of exhaust fans with curb caps of varying sizes. Such a modification would provide a convenient and user-friendly manner for customers to order an exhaust fan with an appropriately sized curb cap. See Candrian ¶¶ 2-8. Such a modification would also improve efficiency and cost by facilitating just-in-time manufacturing of exhaust fans.
It would have been obvious before the effective filing date of the claimed invention to a person with ordinary skill in the art to modify Candrian’s user interface for custom ordering of an article with Korsky’s user interface with a control for selecting the size of an object wherein the size is a whole number integer in the range of 10 inches to 100 inches. Such a modification would provide a user-friendly manner for customers to select the size of an item prior to purchase.
Conclusion
Although particular portions of the prior art may have been cited in support of the rejections, the specified citations are merely representative of the teachings. Other passages and figures in the cited prior art may apply. Accordingly, Applicant should consider the entirety of the cited prior art for potentially teaching all or part of the claims.
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Marshall, US 2005/0234783 A1, discloses a system for on-demand product manufacturing.
Mornan et al., US 2016/0290348 A1, discloses a mixed flow fan assembly including a curb cap.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Asher D Kells whose telephone number is (571)270-7729. The examiner can normally be reached Mon. - Fri., 8 a.m. - 4 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kieu Vu can be reached at 571-272-4057. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Asher D. Kells
Primary Examiner
Art Unit 2171
/Asher D Kells/ Primary Examiner, Art Unit 2171