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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 14 January 2026 has been entered.
Response to Arguments
Applicant’s arguments filed 14 January 2026 have been fully considered but they are not persuasive.
Applicant argues that claim 1 should be allowable since it was amended to incorporate the subject matter of claim 19, which was not rejected in view of prior art, as well as intervening claim 17. However, claim 19 was rejected under § 112(b) because of the way the language conflicted with the disclosure, and the Office examined claim 19 with the understanding that the claim was intended to mean the more specific structure disclosed with the two support arms of the disclosure, particularly because it was not possible to understand that the “distal end section support arm includes a roof fastener passage” without such an interpretation. Claim 1 amends the language otherwise incorporated from claim 19, such that the “distal end support arm” is now a “distal end support arm section.” On review, the Office finds this language broad enough to read on what is disclosed in Bylin. However, Applicant may see an explanation of what the Office thinks would be allowable in the Allowable Subject Matter section below.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 162, 163 (fig. 4).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 103, 138, 164, 170.
The drawings are objected to because reference character 100 in fig. 3 is pointing to the cover or panel 106 rather than the proper element 100 (correctly labeled in fig. 4).
The drawings are objected to because reference character 112 in fig. 3 is pointing to a fastener passage, but the specification ascribes this reference character to an upper end of the heating cable and the heating element flange (¶ 63), which itself is a conflict that must be resolved.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “46” has been used to designate both a fastener and a lower surface.
The drawings are objected to because 174 is directed to an upper surface, but the lead line in fig. 4 clearly points to a lower type of surface.
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.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: EXPOSED STRUCTURE HEATING APPARATUS
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 1 provides for “a heatable upper laterally extending side section,” “a heatable lower laterally extending side section,” “a heatable lower enclosed end,” “a heatable upper open end,” “a distal end support arm section,” “a distal end section support arm section,” “support arm section,” “an upper side portion of the heatable upper laterally extending side section,” “a lower side portion of the heatable lower laterally extending side section,” “insulation space,” “a heatable upper side” (of the cover panel), and “a heatable lower side” (of the cover panel).
Claim 12 recites “a first corner side” and “a second corner side.”
Each of these limitations are either not discussed in the specification, or are described with substantially different language such that they are not unambiguously referring to the same element. Proper antecedent basis in the specification for this claimed subject matter is required.
The disclosure is objected to because of the following informalities:
¶ 49 describes figs. 5 and 6 as photographs, but these are clearly just perspective drawings and not photographs.
¶ 51 of the submitted specification recites “the roof 10,” but reference character 10 is the building, while the (sloped roof) is 12.
¶ 52 of the submitted specification recites “the upper edge 24.” However, elsewhere in the specification, reference character 24 is ascribed to the central panel section, which comports with its use in the figures.
¶ 53 of the submitted specification recites “intermediate section 32.” However, elsewhere in the disclosure, reference character 32 is ascribed to the lower support section, while the intermediate section has reference character 36.
¶ 53 of the submitted specification ascribes both of reference characters 34 and 38 to a “central support section,” multiple times.
¶ 62 of the submitted specification recites “At the same time, some embodiments of the Figure 1 heating system can be reduce the cost of ordering, manufacturing, shipping and installing the product more affordable than comparable systems in the prior art,” which is ungrammatical around “can be reduce.”
¶ 63 of the submitted specification recites “heating element flange 112,” which should be “heating element flange 111.”
¶ 64 of the submitted specification recites “heating element 106,” which it appears should be amended to recite “heating element cover 106.”
¶ 66 of the submitted specification mentions “lower surfaces 154, 164, 166 of the flange-support end 130.” However, while 164 is absent from the drawings, 166 is ascribed to two locations (see fig. 4), neither of which is associated with the flange-support end. The Office notes that ¶ 67 also mentions these three reference characters, but does not ascribe them to the flange-support end.
In ¶ 67 of the submitted specification, “relatively thinner intermediate section 132” should be “relatively thinner intermediate section 134.”
The use of trade names or marks used in commerce has been noted in this application. See ¶¶ 9–11, 14–17, 19, 20, 22–27, 56, 59, and 70–73 of the submitted specification. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, ℠, or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections — 35 USC § 112
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 1–20 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.
Claim 1 provides for “a distal end support arm section” (section A.(i)(a)), “a distal end section support arm section” (section A.(i)(b)), and “a support arm section” (section A.(ii)). The way the claim is drafted renders the differences between these sections unclear, which is amplified by the lack of antecedent basis for this claim terminology in the specification as indicated above. Claim 1 is also unclear since it recites, “a distal end section support arm section extending downwardly away from the distal end section support arm the heatable upper laterally extending side section of the heating element,” which both has bad grammar at the emphasized “arm the” portion of the passage, but also seems to misdescribe what is disclosed since it would seem that the arm would extend downwardly from a lower surface rather than an upper section. Again, this part of the claim is difficult to understand given the lack of antecedent basis for claim terminology in the specification.
Each of claims 13–18 provide for a roof fastener passage in the unitary heating element. However, claim 1 already provides for a roof fastener passage, and based on the disclosure, both claims 1 as well as each of 13–18 are referring to the same passage, rendering the claim indefinite. Because each of claims 13–18 includes a detail about the passage extending through the lower laterally extending side section that is absent from claim 1, this is treated as a § 112(b) issue rather than a § 112(d) issue.
Claims 2–12, 19, and 20 are rejected due to dependency upon a rejected claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5 and 19 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The subject matter of each of claims 5 and 19 are the same, and this subject matter already seems present in sections (A)(i)(a) and (b) of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1–7 and 11–19 are rejected under 35 U.S.C. 103 as being unpatentable over the Bylin NPL (cited by Applicant in the IDS filed 6 November 2013 in the grandparent application 13/853,794).
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Claims 1, 5, and 19: Bylin discloses a roof edge heating apparatus mountable adjacent a building edge having an upper roof section extending from an upper side of the building (evident from “Plywood Base and Waterproof Layer”), the roof edge heating apparatus comprising in combination:
a unitary heating element (“Eave Panel Base”) having a heatable upper laterally extending side section opposite a heatable lower laterally extending side section (said element has both upper and lower laterally extending section), with the heatable upper laterally extending side section and heatable lower laterally extending side section terminating in a heatable thickened flange support end (see the left side of the figure) having a heating material channel (see the left heating cable) with a heatable lower enclosed end and a heatable upper open end penetrating the heatable upper laterally extending side section on the heatable flange support end (ibid.), wherein the heatable upper laterally extending side section of the heating element has a distal end support arm section opposite the heatable flange support end (all of the structure of the eave panel base to the right of the first heating cable channel), the distal end section includes a distal end section support arm section extending downwardly away from the distal end section support arm and the heatable upper laterally extending side section of the heating element (the portion to which the fastener attaches is formed by a downward extension), and the distal end support arm section includes a roof fastener passage (see the fastener); and
a support arm section (all of the structure of the eave panel base to the right of the first heating cable channel) comprising an upper side portion of the heatable upper laterally extending side section and a lower side portion of the heatable lower laterally extending side section (appreciable from the figure), extending from the heatable flange support end (ibid.), whereby the support arm section and the heatable thickened flange support end can cooperatively provide an insulation space when mounted to a roof surface (appreciable by the space between the leftward heating cable channel and the leftward fastener); and
a heatable heating element cover panel (“Eave Panel Cover”) having a heatable upper side and heatable lower side (said panel naturally having upper and lower sides) with the lower heatable side mountable to abut and cover the heatable upper laterally extending side section (clearly evident from the figure) and the heatable flange support end, including the upper open end of the heating material channel in the heatable flange support end.
Although Bylin depicts its heatable flange support end as thickened in the figure, as well its support arm section being thinner, Bylin’s drawing makes clear that “dimensions are shown for reference only” and do not suggest that the drawing is to scale. See also MPEP § 2125.II.
Nonetheless, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to identify the thickness shown in Bylin as a feature to consider since making the heatable flange support end thicker to give it more structural rigidity is incentivized since it would not be supported underneath by the roof like the rest of the element, whereas the support arm section would not need this structural rigidity and would operate fine with less weight and material use.
Comment: Should this argument be unpersuasive to Applicant, the Office would further rely on Gurr (US Pub. 2006/0288652) as it has in Office actions in this application’s parent applications for the same type of limitation.
Claim 2: Bylin discloses the heatable flange support end including a heatable roof edge sealing corner on the bottom side section of the heatable flange support end, the heatable roof edge sealing corner being mountable to sealingly abut the edge of a roof (see the downward protrusion at the left edge of the roof directly beneath the left heating cable).
Claim 4: Bylin discloses that the heatable lower side of the heatable heating element cover panel has a planar section mountable to abut and cover a planar portion of the heatable upper laterally extending side section of the heating element (see the eave panel cover abutting and covering at least one planar portion of the heating element).
Claims 6, 7, and 11: Bylin discloses that the heating material channel is a heating cable channel (“heating cable”), whereby an upper end of a heating cable is mountable to extend through the heating cable channel to abut the heatable lower side of the heatable heating element cover panel (this claim does not positively recite a heating element, and therefore, naturally, the heating cable channel shown in Bylin is naturally capable of having a heating cable mounted therein with a depth greater than the depth of the channel).
Claim 12: Bylin discloses that the heatable roof edge sealing corner includes a first corner side and a second corner side cooperatively forming an angle between the first corner side and second corner side (clearly visible at and near the downward protrusion pointed out for claim 2).
Claims 13–18: Bylin discloses that the unitary heating element also includes a fastener passage extending through the heatable upper laterally extending side section through the heatable lower laterally extending side section of the unitary heating element (see the fastener mounted between the heating cable portions).
Claims 8–10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bylin as applied to claims 5 and 6 above, and further in view of Tourangeau et al (US Pat. 5,391,858).
Bylin is silent regarding its heating element comprising copper or aluminum.
However, Tourangeau teaches that a heating element can comprise either copper or aluminum (col. 3, lns. 56–58), and it would have been obvious to one of ordinary skill in the art to apply the teaching of Tourangeau to Bylin by constructing the cover heating element out of copper or aluminum to render it suitable as a roof edge heater (MPEP § 2144.07).
Allowable Subject Matter
The prior art does not disclose or suggest something like what is claimed in claim 1 with, in addition, one or two arms, extending downwardly from the heatable laterally extending side section extending laterally from the flange support end, in conjunction with a fastener passage formed in the support arm extending laterally from the flange support end and positioned either between the two arms, or adjacent one arm. To the extent that this description is confusing, the Office suggests that upper end support section 132 and fastener passage 112 as shown in figs. 3 and 4 should be understood as guides.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward (Ned) F. Landrum can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN J NORTON/ Primary Examiner, Art Unit 3761