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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 3, 2026 has been entered.
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 1-10, 12-18 and 21-22 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.
With respect to independent claims 1 and 14, the examiner does not see where in the original disclosure it is explained how the transverse portions (130, figure 2), of each of the plurality of first wires “collectively define a midline that extends in the horizontal direction H and substantially bisects the transverse portions of each of the plurality of first wires” [emphasis added by examiner]. While the transverse portions may each have a midsection, or middle portion, it is not explained how the plurality of portions extending transversely “collectively define” this midline.
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 1-10, 12-18 and 21-22 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.
With respect to independent claims 1 and 14, it is unclear how the transverse portions (130, figure 2), of each of the plurality of first wires “collectively define a midline that extends in the horizontal direction H and substantially bisects the transverse portions of each of the plurality of first wires”. While the transverse portions may each have a midsection, or middle portion, it is not clear how they would collectively define midline 135.
With respect to new claims 21 and 22 it is unclear if the “first second wire” is the same as or in addition to the at least one of the plurality of second wires coupled to the proximal portions of each of the transverse portions already claimed in claims 1 and 14.
Appropriate correction is required.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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.
Claim 13 repeats the limitations of claim 1, lines 20-28.
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 § 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) 1-10, 12-19 and 21-22 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 and 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 edge protection 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; see also annotated figure 2 below showing 2b closer to 90 degrees), 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);
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),
wherein a distance D1 is defined that extends in the transverse direction T from the vertical portions of the plurality of first wires to a position corresponding to a center of the at least one of the plurality of second wires (see annotated figure 2 below) that is coupled to the proximal portions of each of the transverse portions of each of the plurality of first wires (see below),
wherein at least one of the plurality of second wires is coupled to the vertical portions of the plurality of first wires (see below),
wherein a distance D2 is defined that extends in the vertical direction V from a center of the at least one of the plurality of second wires that is coupled to the vertical portions of the plurality of first wires to a position that corresponds to a center of the at least one of the plurality of second wires that is coupled to the proximal portions of each of the transverse portions of each of the plurality of first wires (distance between names wire/wire sections; figure 4),and
wherein a ratio D1:D2 between the distance D1 and the distance D2 is at least 1:0.5 and up to 1:0.11 (see annotated figure 2 below; note there are 7 second wires on the proximal portion so there are multiple ratio options that meet the claim language).
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2 and 15. The barrier of claim 1/ 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; see also annotated image above).
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, figure 1) 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 and 16. The barrier of claim 1/ 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).
8 and 17. The barrier of claim 1 / edge protection barrier of claim 14, wherein the transverse portions of each of the plurality of first wires (portions that extend along and parallel to 2b) has a length that defines a distance D3, and wherein a ratio D1:D3 between the distance D1 and the distance D3 is less than 1:2 (D3 is the full length of the transverse portion, and D1 has been identified as being on the proximal portion, which puts it prior to the midpoint, which means D1 will always be less than ½ than D3).
9 and 18. The barrier of claim 8/ edge protection barrier of claim 17, wherein the ratio D1:D3 between the distance D1 and the distance D3 is less than 1:5 (in the event D1 extends 2-3 squares out [as opposed to 5 in the example above], with the squares being 1.5” and the length of the D3 being up to 24”; [0018] pivoting section 2b can be up to 24” long and [0021] fencing 4 can be 1.5-2” steel wire mesh).
10 and 19. The barrier of claim 8/ edge protection barrier of claim 17, 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 (top most second wire that defines horizontal top edge of 4; figure 1), wherein a distance D4 is defined that extends from the at least one of the plurality of second wires that is coupled to the proximal portions of each of the transverse portions of each of the plurality of first wires to the at least another one of the plurality of second wires that is coupled to the distal portions of each of the transverse portions of the plurality of first wires, and wherein a ratio D1:D4 between the distance D1 and the distance D4 is at least 1:4.5 and up to 1:3.9 (in the event D1 extends 2 or 3 squares out [as opposed to 5 in the example above], with the squares being 1.5-2” and the length of the D3 being 18-24”; [0018] pivoting section 2b can be up to 18-24” long and [0021] fencing 4 can be 1.5-2” steel wire mesh).
12. The barrier of claim 9, 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 (top most second wire that defines horizontal top edge of 4; figure 1), wherein a distance D4 is defined that extends from the at least one of the plurality of second wires that is coupled to the proximal portions of each of the transverse portions of each of the plurality of first wires to the at least another one of the plurality of second wires that is coupled to the distal portions of each of the transverse portions of the plurality of first wires, and wherein a ratio D1:D4 between the distance D1 and the distance D4 is at least 1:4.5 and up to 1:3.9 (in the event D1 extends 2 or 3 squares out, as explained in claim 9, with the squares being 1.5-2” and the length of the D3 being 18-24”; [0018] pivoting section 2b can be up to 18-24” long and [0021] fencing 4 can be 1.5-2” steel wire mesh).
13. The barrier of claim 9, wherein at least one of the plurality of second wires is coupled to the vertical portions of the plurality of first wires, wherein a distance D2 is defined that extends in the vertical direction V from a center of the at least one of the plurality of second wires that is coupled to the vertical portions of the plurality of first wires to a position that corresponds to a center of the at least one of the plurality of second wires that is coupled to the proximal portions of each of the transverse portions of each of the plurality of first wires, and wherein a ratio D1:D2 between the distance D1 and the distance D2 is at least 1:0.5 and up to 1:0.11 (NOTE: claim 13 only repeats what is already claimed at the end of claim 1; see rejection of claim 1 above)
21 and 22. The barrier of claim 1/ the edge protection barrier of claim 14 wherein the plurality of second wires is two wires (figure 4), defined by a first second wire and a second second wire, wherein the first second wire is coupled to the proximal portions of each of the transverse portions of each of the plurality of first wires (any of the plurality of second wires on the proximal portion; see figures 2 and 4 above), and the second second wire is coupled to the distal portions of each of the transverse portions of the plurality of first wires (any of the plurality of second wires on the distal portion; see figures 2 and 4 above).
Response to Arguments
Applicant's arguments filed June 3, 2026 have been fully considered but they are not persuasive.
Applicant’s remarks are primarily directed to the argument that the ratios claimed are not an arbitrary or finite option selection and that the claimed ratios are for optimizing weight reduction while maintaining overall strength and/or stiffness of the barrier.
However, in reviewing the prior art the examiner observed that the disclosure of Benner discusses the various size options of the wire mesh that includes the vertical and horizontal wires 4, as well the size range of the post 2b. As a result, the previous 103 rejection citing routine optimization is no longer applied, and the prior art rejection is now a 102 rejection, as Benner discloses dimension options that result in the claimed ratios.
As noted in the above rejections, Benner discloses that the wire mesh as 1.5-2” wire mesh, putting the spacing between wires at 1.5-2”. With this information one can see that a variety of ratios can be present, including those claimed, depending on which of the many wires is selected in defining D1 and/or D2. For example, if D1 is defined as being the 4 wire out from the vertical portion, along the transverse portion, then D2 would be the second wire down on the vertical portion, meeting the 2:1 (or 1:0.5) ratio. Alternatively, D1 can be selected further out along the proximal section (ie. 5-7 wires out), closer toward the midpoint, and if D2 is still just the second wire down, then the ratio increases.
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Additionally, with respect to the other ratios claimed, those involving D3 and D4, examiner notes that since Benner discloses not only the mesh size but also the length of the 2b, a number of different ratios can be calculated depending on which wire is D1, as explained above, and within these options based on the disclosed sizes, are the claimed ratios. For example, in the event D1 extends 2 or 3 squares out, as explained in the rejections above, with the squares being 1.5-2”, D1 could be 3-4.5”, and the length of the D3 being 18-24”, D1:D3 would be less 1:5, as claimed in claim 9 (see Benner [0018] pivoting section 2b can be up to 18-24” long, and [0021] fencing 4 can be 1.5-2” steel wire mesh).
For at least these reasons applicant’s arguments are not found persuasive in the claims remain rejected as advanced above.
Conclusion
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.
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, 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
Prosecution Insights