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 .
Election/Restrictions
Applicant’s election without traverse of Species 4 in the reply filed on 6/15/25 is acknowledged.
Claims 3,4,7,15,18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/15/25.
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.
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 1-2,5-6,8-14,16,17 and all claims depending therefrom 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.
The claims include parenthetical reference characters “(100), (121), (106), (104), (10A), (10B), (116), (108), which are not described in the specification or shown in the drawings, therefore these are not actual reference characters referencing any feature of the disclosed invention. Accordingly, it is unclear what is encompassed by each of the recited parentheticals causing confusion regarding the scope of the claimed invention.
Regarding claims 11,12,13,14, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 11-14 recites a recitation of a broad dimension range, and the claim also recites a recitation of a narrower dimension range which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Accordingly the claims will be examined as best understood.
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) 1,2,5,6,89,16,17 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Gibbs (6052961).
Claim 1. Gibbs discloses a locating and waterproofing device (any of the embodiments of 16) is formed from a water impermeable medium (where it can be plastic as noted at col. 15, lines 25-35, the embodiment of figure 49 where pan 16 is plastic and/or where it is disclosed at least at col. 5 where the pan 16 creates a barrier so water does not penetrate), the device has a short edge (at 26) which is dimensioned to rest against, and be secured to a batten (14); and a long edge (16/22), whose upper portion rests on an upper surface of the batten (as seen in the figures and noted in the disclosure) and whose lower portion (at 24) rests on a lower slate or stone (18) and is sandwiched between the lower slate or stone and an upper slate or stone (as seen in the figures and noted in the disclosure), wherein a continuous barrier (such as at 26 or 28 and/or as similarly located in the various embodiments including but not limited to 138,366,414,482) is formed along the long edge to provide a water resistant barrier and to create a void between the lower slate or stone and the upper slate or stone (as seen in the figures).
Claim 2. A locating and waterproofing device according to claim 1 wherein the continuous barrier is formed as a curved corner between the short edge and the long edge (as seen in the figures).
Claim 5. A locating and waterproofing device according to claim 1 wherein a raised portion (such as 50 or 76 or 48 or 126 or 364 or 410 or as noted at col. 7, lines 65-67) is provided on the long edge between the continuous barrier and a tip (the bottom end) of the long edge.
Claim 6. A locating and waterproofing device according to claim 5 wherein the raised portion (as seen in the figures) is an undulation formed integrally with the long edge.
Claim 8. A locating and waterproofing device (100) according to claim 1 wherein a strip (such as 362 or 414 or 126 or 132 or 76) is provided on the long edge (as seen in the various figures).
Claim 9. A locating and waterproofing device according to claim 1 is formed from a synthetic plastics material (where it can be plastic as noted at col. 15, lines 25-35, the embodiment of figure 49 where pan 16 is plastic).
Claim 16. Gibbs discloses a method of installing a locating and waterproofing device (16 as seen in the various embodiments), resting a short edge of the device against a batten (14) and securing the device to the batten using a securement means (the hook as described at Col. 6, lines 42-49,) so that a long edge of the device rests on an upper surface of the batten (as seen in the figures) and so that a lower portion of the device rests on a lower slate or stone (18); placing an upper slate or stone (18 as seen in the figures) on the locating and waterproofing device, so that the locating and waterproofing device is sandwiched between the lower slate or stone and thereby forming a continuous barrier (as seen in the figures and noted in the disclosure) along the long edge to provide a water resistant barrier; and creating a void between the lower slate or stone and the upper slate or stone (as seen in the figures).
Claim 17. A method of installing a locating and waterproofing device according to claim 16 and securing the upper slate or stone with a slate hook (such as 414,364,126,132,76 as seen in the various embodiments).
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gibbs (6052961) in view of Italiane (20090241450).
Claim 10. Gibbs discloses the locating and waterproofing device according to claim 9 but does not disclose wherein the synthetic plastics material is polypropylene and/or glass reinforced polymers (GRP). However it is known in the art to make a roofing device of polypropylene, for example Italiane discloses a roofing product made of polypropylene (paragraph 0048,0175,0199). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to pursue known design options and modify the plastic material of Gibbs to polypropylene as taught by Italiane, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In the instant case it would have been obvious for at least the reason of it weather resistance.
Claim(s) 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gibbs (6052961).
Claims 11-14. Gibbs discloses a locating and waterproofing device according to claim 1 but does not expressly disclose wherein the device is provided in a length less than 6.0 m, preferably less than 4.0 m and most preferably less than 2.0 m; or
wherein the thickness of the device is between 0.5 mm and 1.5 mm, preferably 1mm; or
wherein the length of the short edge is between 1.0 cm and 3.5 cm, preferably between 2.0 cm and 3.5 cm and most preferably between 2.5 cm; or
wherein the length of the long edge is between 20 cm and 60 cm, preferably according to the corresponding variable size of slates being used.
Gibbs is silent regarding the dimensions of the device. However, the device is a for a slate roofing installation. Applicant has not disclosed that the device is provided in a length less than 6.0 m, preferably less than 4.0 m and most preferably less than 2.0 m; or
wherein the thickness of the device is between 0.5 mm and 1.5 mm, preferably 1mm; or
wherein the length of the short edge is between 1.0 cm and 3.5 cm, preferably between 2.0 cm and 3.5 cm and most preferably between 2.5 cm; or
wherein the length of the long edge is between 20 cm and 60 cm, preferably according to the corresponding variable size of slates being used, solves any stated problem or is for any particular purpose. Moreover, it appears that the device, or applicant' s invention, would perform equally well with a variety of dimensions as noted in applicants disclosure and claims.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to have modified Gibbs such that the device is provided in a length less than 6.0 m, preferably less than 4.0 m and most preferably less than 2.0 m; or
wherein the thickness of the device is between 0.5 mm and 1.5 mm, preferably 1mm; or
wherein the length of the short edge is between 1.0 cm and 3.5 cm, preferably between 2.0 cm and 3.5 cm and most preferably between 2.5 cm; or
wherein the length of the long edge is between 20 cm and 60 cm, preferably according to the corresponding variable size of slates being used, to achieve the predictable result of a securely attached device that provides waterproofing and resists undesired separation, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Gibbs.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA LAUX whose telephone number is (571)272-8228. The examiner can normally be reached M-F 7:30-3:30.
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JESSICA L. LAUX
Examiner
Art Unit 3635
/JESSICA L LAUX/Primary Examiner, Art Unit 3635