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 .
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.
Claim(s) 1-7 and 14-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benner et al. (US pub 2008/0277638).
Benner et al. disclose:
1. A barrier (figure 1) that defines a horizontal direction H (length of barrier), a vertical direction V (height of barrier) that is orthogonal to the horizontal direction H (figure 1), and a transverse direction T (direction perpendicular to the plane of the barrier) that is orthogonal to the horizontal direction H (figure 1) and the vertical direction V (figure 1), wherein the barrier comprises:
a plurality of first wires (figure 4, see below) that each have a vertical portion that extends in the vertical direction V (portion of wires 4 that extend along and parallel to post 2a; figure 4, see below) and a transverse portion (portion of wires 4 that extend along and parallel to post 2b; figure 4, see below) that extends within sixty degrees of the transverse direction T (figure 2), wherein the vertical portion is longer than the transverse portion for each of the plurality of first wires (figures 1-2),
wherein the transverse portions of each of the plurality of first wires collectively define a midline (longitudinal axis of fencing 4 that extends between posts 2b) that extends in the horizontal direction H (figure 1) and substantially bisects the transverse portions of each of the plurality of first wires (figure 1), wherein the midline defines a proximal portion (portion closer to 2a) for each of the transverse portions and a distal portion (portion furthest from 2a/portion closer to distal end 2b) for each of the transverse portions (figure 1); and
a plurality of second wires that each extend in the horizontal direction H (wires 4 that extend perpendicular to vertical wires; figure 4), wherein at least one of the plurality of second wires (see below) is coupled to the proximal portions of each of the transverse portions of each of the plurality of first wires (figure 4).
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2. The barrier of claim 1, wherein at least another one of the plurality of second wires is coupled to the distal portions of each of the transverse portions of the plurality of first wires (figure 1).
3. The barrier of claim 1, wherein each of the plurality of first wires have an end (uppermost terminal ends of first wires), and wherein at least another one of the plurality of second wires is coupled to the ends of the plurality of first wires (top most second wire that defines horizontal top edge of 4; figure 1).
4. The barrier of claim 1, wherein the transverse portion extends within two degrees of the transverse direction T (knuckle 5 can include stops that limit 2b to 90 degrees relative vertical, which would put it at within two degrees of the transverse direction; [0020] last sentence).
5. The barrier of claim 1, wherein the transverse portions of each of the plurality of first wires are first transverse portions (figure 1), and wherein each of the plurality of first wires have a second transverse portion (3) that extends in a direction opposite to the first transverse portion (first transverse portion is angled upward with respect to transverse direction and second transverse portion is angled downward with respect to transverse direction; figure 2), wherein the vertical portions of each of the plurality of first wires are positioned between the first transverse portions and the second transverse portions (figure 1).
6. The barrier of claim 1, wherein each of the plurality of first wires have a curved portion that connects the transverse portion to the vertical portion (figure 4).
7. The barrier of claim 1, wherein at least one of the plurality of second wires is coupled to the vertical portions of the plurality of first wires at a location proximate to the transverse portions (figure 4).
14. An edge protection barrier (figure 1) configured to be coupled proximate to an edge of a building (house 11, figure 3), the edge protection barrier defining a horizontal direction H (length of barrier), a vertical direction V (height of barrier) that is orthogonal to the horizontal direction H (figure 1), and a transverse direction T (direction perpendicular to the plane of the barrier) that is orthogonal to the horizontal direction H (figure 1) and the vertical direction V (figure 1), wherein the barrier comprises:
a plurality of first wires (figure 4, see below) that each have a vertical portion that extends in the vertical direction V (portion of wires 4 that extend along and parallel to post 2a; figure 4, see below) and a transverse portion (portion of wires 4 that extend along and parallel to post 2b; figure 4, see below) that extends within sixty degrees of the transverse direction T (figure 2), wherein the vertical portion is longer than the transverse portion for each of the plurality of first wires (figures 1-2),
wherein the transverse portions of each of the plurality of first wires collectively define a midline (longitudinal axis of fencing 4 that extends between posts 2b) that extends in the horizontal direction H (figure 1) and substantially bisects the transverse portions of each of the plurality of first wires (figure 1), wherein the midline defines a proximal portion (portion closer to 2a) for each of the transverse portions and a distal portion (portion furthest from 2a/portion closer to distal end 2b) for each of the transverse portions (figure 1); and
a plurality of second wires that each extend in the horizontal direction H (wires 4 that extend perpendicular to vertical wires; figure 4), wherein at least one of the plurality of second wires (see below) is coupled to the proximal portions of each of the transverse portions of each of the plurality of first wires (figure 4).
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15. The edge protection barrier of claim 14, wherein at least another one of the plurality of second wires is coupled to the distal portions of each of the transverse portions of the plurality of first wires (figure 1).
16. The edge protection barrier of claim 14, wherein at least one of the plurality of second wires is coupled to the vertical portions of the plurality of first wires at a location proximate to the transverse portions (figure 4).
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) 8-13 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benner et al., alone.
With respect to the ratio in spacing of the wires claimed in 8-13 and 17-20, examiner notes that these ratios would all be obvious to try to one of ordinary skill in the art. Examiner refers to MPEP 2144.05 (see below), and notes that it would have been obvious to one of ordinary skill to select or at least try varying spacings of the wires as there are a finite number of dimensions and ratios that such a barrier can usefully be made of. For example, too far apart would not offer the stability and strength needed in such a structure, and could potentially let small creatures pass through the mesh; and too close together would add unnecessary weight, and block visibility in a barrier that is intended to be “relatively non-intrusive [in] appearance” (Benner et al., [0020] last sentence). Additionally, one of ordinary skill in the art would know and find it obvious to add focus on spacing of wires in high stress spots on barriers, such as corners and near connection points, so as to increase strength and durability.
It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Applicant has not shown any criticality in the particular ratios claimed, or why they would not be found through routine experimentation. Applicant’s specification notes the ratios are for benefits of weight and strength of the barrier, neither of which are new considerations.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the barrier with optimal wire spacing, since it has been held that discovering the optimum or workable ranges involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
2144.05, II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
Response to Arguments
Applicant’s arguments with respect to the claim(s) 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.
Conclusion
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 COLLEEN M CHAVCHAVADZE whose telephone number is (571)272-6289. The examiner can normally be reached M-F 8:00AM-4:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Cahn can be reached at 571-270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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COLLEEN M. CHAVCHAVADZE
Primary Examiner
Art Unit 3634
/COLLEEN M CHAVCHAVADZE/ Primary Examiner, Art Unit 3634