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 .
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 9 and 16 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.
Claim 9 recites the limitation "the upper third of the height of the posts" in the last clause. There is insufficient antecedent basis for this limitation in the claim because no particular height of the posts or upper third of the height has been previously identified in the claim.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 4, 6-17, and 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Powers, III (US 2012/0216466) in view of Takeuchi (JP 2000/145210; see English machine translation).
Regarding claims 1, 4, 6-8, Powers discloses a sunshade (80) comprising a roof structure (82), inclined so as to have an upper portion and a lower portion (see Figure 11, where it is inclined), and a plurality of posts (84) for anchoring the roof structure to the ground (see Figure 10), said plurality of posts supporting the roof structure at the upper part (it is disclosed roof 82 is attached to the upper ends of columns 84 at a desired angle; [0028]; see Figure 11), and that the structure can be used as a car port, patio cover, or the like ([0020]), but the reference does not expressly disclose the sunshade further comprising at least one balance wall attached to at least a first post of the plurality of posts and extending towards a second post of the plurality of posts, the at least one balance wall blocking 75% or less of the surface separating the first post and the second post.
Takeuchi discloses a patio sunshade or car port comprising a roof structure (see Figures 5, 7, 9, and 10), wherein the patio sunshade comprises at least one balance wall (blind mesh plate 3 and blindfold wall 6) attached to at least a first post of the plurality of posts and extending towards a second post of the plurality of posts (see Figures 5, 7, and 9-12), the at least one balance wall blocking 75% or less of the surface separating the first post and the second post (see Figures 5, 7, and 9-12, where the balance wall blocks up to about 50% of the surface between the posts).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a known technique to improve similar devices such as incorporating a blind mesh plate or blindfold wall between the posts in the device of Powers, as taught by Takeuchi above, so that the blind mesh plate provides privacy by allowing those on the inside to see to the outside but blocks those on the outside from seeing in while allowing some light and wind to pass through ([0008]-[0012]).
It is noted that if a technique is known to improve a device and one of ordinary skill in the art recognizes it would improve similar devices in the same way, the use of the known technique to improve similar devices would be prima facie obvious as the results would have been predictable to one of ordinary skill in the art unless the actual application of the technique would have been beyond the skill of one of ordinary skill in the art. KSR, 550 U.S. at 417, 82 USPQ2d at 1396.
Modified Powers further discloses the balance wall can be made to extend up to a position about the height of a human shoulder ([0009]), where some cover from the bottom up and some cover an area between the top and bottom of the posts, as set forth above, but the reference does not expressly disclose the balance wall blocks 75% or less, or 60% or less, or 50% or less, or 40% or less, or 30% or less, or 20% or less of the surface separating the first post and the second post.
As the amount of privacy and amount of materials used (and therefore cost) are variables that can be modified, among others, by adjusting said coverage of the balance wall, with said privacy and amount of materials (and therefore cost) used both increasing as the coverage of the balance wall (and therefore cost) is increased, the precise coating coverage of the balance wall for the surface separating said two posts would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed coverage of the balance wall for the surface separating said two posts cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the coverage of the balance wall for the surface separating said two posts in the apparatus of modified Powers to obtain the desired balance between the amount of privacy and the amount of materials used (and therefore cost) (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
While modified Powers does not expressly disclose the roof structure forms an angle between 60o and 87o with the plurality of posts, the reference discloses the roof 82 to be attached to the upper ends of columns 84 at virtually any desired angle ([0028]), where a 10 degree angle is illustrated in Figure 9 as an example ([0027]), which means an angle of 80 o is suitable between the roof structure and the plurality of posts.
As modified Powers is not limited to any specific examples of angles between the roof structure and the plurality of posts and as an angle of 80 o was well known in the art before the effective filing date of the claimed invention, as evidenced by Powers above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected any suitable angle between the roof structure and the plurality of posts, including an angle of 80 o in the device of modified Powers. Said combination would amount to nothing more than the use of a known element for its intended use in a known environment to accomplish an entirely expected result.
Regarding claim 2, modified Powers discloses all the claim limitations as set forth above, and further discloses the balance wall is provided at a distance from at least one end of the first post or the second post, optionally at a distance from both ends (see Figures 7 and 9-12).
Regarding claim 9, Powers discloses a sunshade (80) comprising a roof structure (82), inclined so as to have an upper portion and a lower portion (see Figure 11, where it is inclined), and a plurality of posts (84) for anchoring the roof structure to the ground (see Figure 10), said plurality of posts supporting the roof structure at the upper part (it is disclosed roof 82 is attached to the upper ends of columns 84 at a desired angle; [0028]; see Figure 11), wherein the lower portion of the roof structure extends as a cantilever relative to the plurality of posts (see Figure 11), and that the structure can be used as a car port, patio cover, or the like ([0020]), but the reference does not expressly disclose the sunshade further comprising at least one balance wall supported mechanically by at least a first post of the plurality of posts and extending towards a second post of the plurality of posts, the at least one balance wall blocking 75% or less of the surface separating the first post and the second post, and wherein the balance wall extends at most within the upper third of the height of the posts.
Takeuchi discloses a patio sunshade or car port comprising a roof structure (see Figures 5, 7, 9, and 10), wherein the patio sunshade comprises at least one balance wall (blind mesh plate 3 and blindfold wall 6) attached to at least a first post of the plurality of posts and extending towards a second post of the plurality of posts (see Figures 5, 7, and 9-12), the at least one balance wall blocking 75% or less of the surface separating the first post and the second post (see Figures 5, 7, and 9-12, where the balance wall blocks up to about 50% of the surface between the posts), wherein the balance wall extends at most within the upper third of the height of the posts.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a known technique to improve similar devices such as incorporating a blind mesh plate or blindfold wall between the posts in the device of Powers with the above-recited features, as taught by Takeuchi above, so that the blind mesh plate provides privacy by allowing those on the inside to see to the outside but blocks those on the outside from seeing in while allowing some light and wind to pass through ([0008]-[0012]).
It is noted that if a technique is known to improve a device and one of ordinary skill in the art recognizes it would improve similar devices in the same way, the use of the known technique to improve similar devices would be prima facie obvious as the results would have been predictable to one of ordinary skill in the art unless the actual application of the technique would have been beyond the skill of one of ordinary skill in the art. KSR, 550 U.S. at 417, 82 USPQ2d at 1396.
Regarding claim 10, modified Powers discloses all the claim limitations as set forth above, and further discloses the plurality of posts are arranged in a single row (see Figure 10).
Regarding claims 11-14, modified Powers discloses all the claim limitations as set forth above, and further discloses a height of the balance wall is comprised of between 2% and 100%, or between 20% and 90%, or between 40% and 80%, or between 0% and 98% of a height of the plurality of posts (as set forth above, where the height of the balance wall is at least half of the height of the posts).
Regarding claim 15, modified Powers discloses all the claim limitations as set forth above, but the reference does not expressly disclose the balance wall extends at most within an upper fourth of the height of the plurality of posts.
As the amount of privacy and amount of materials used (and therefore cost) are variables that can be modified, among others, by adjusting said coverage of the balance wall, with said privacy and amount of materials (and therefore cost) used both increasing as the coverage of the balance wall (and therefore cost) is increased, the precise amount the balance wall extends with respect to the height of the plurality of posts would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed amount the balance wall extends with respect to the height of the plurality of posts cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the amount the balance wall extends with respect to the height of the plurality of posts in the apparatus of modified Powers to obtain the desired balance between the amount of privacy and the amount of materials used (and therefore cost) (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 16, modified Powers discloses all the claim limitations as set forth above, and further discloses the roof structure forms an angle that is strictly greater than 0o and less than or equal to 90o with the plurality of posts (see Figure 11).
Regarding claim 17, modified Powers discloses all the claim limitations as set forth above, and further discloses the balance wall is vertical (as set forth above).
Regarding claim 20, modified Powers discloses all the claim limitations as set forth above, and further discloses the sunshade supports photovoltaic panels (sections 88, which are solar panels; [0006] and [0028]).
Regarding claim 21, Powers discloses a sunshade (80) comprising a roof structure (82), inclined so as to have an upper portion and a lower portion (see Figure 11, where it is inclined), and a plurality of posts (84) for anchoring the roof structure to the ground (see Figure 10), said plurality of posts supporting the roof structure at the upper part (it is disclosed roof 82 is attached to the upper ends of columns 84 at a desired angle; [0028]; see Figure 11), and that the structure can be used as a car port, patio cover, or the like ([0020]), but the reference does not expressly disclose the sunshade further comprising at least one balance wall supported mechanically by at least a first post of the plurality of posts and extending towards a second post of the plurality of posts, the at least one balance wall blocking between 5% and 75% of the surface separating the first post and the second post.
Takeuchi discloses a patio sunshade or car port comprising a roof structure (see Figures 5, 7, 9, and 10), wherein the patio sunshade comprises at least one balance wall (blind mesh plate 3 and blindfold wall 6) attached to at least a first post of the plurality of posts and extending towards a second post of the plurality of posts (see Figures 5, 7, and 9-12), the at least one balance wall blocking between 5% and 75% or less of the surface separating the first post and the second post (see Figures 5, 7, and 9-12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a known technique to improve similar devices such as incorporating a blind mesh plate or blindfold wall between the posts in the device of Powers, as taught by Takeuchi above, so that the blind mesh plate provides privacy by allowing those on the inside to see to the outside but blocks those on the outside from seeing in while allowing some light and wind to pass through ([0008]-[0012]).
It is noted that if a technique is known to improve a device and one of ordinary skill in the art recognizes it would improve similar devices in the same way, the use of the known technique to improve similar devices would be prima facie obvious as the results would have been predictable to one of ordinary skill in the art unless the actual application of the technique would have been beyond the skill of one of ordinary skill in the art. KSR, 550 U.S. at 417, 82 USPQ2d at 1396.
Regarding claim 22, modified Powers discloses all the claim limitations as set forth above. Takeuchi further discloses the balance wall blocks at least 10% of the surface separating said two posts (as set forth above).
Claim(s) 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Powers, III (US 2012/0216466) in view of Takeuchi (JP 2000/145210; see English machine translation) in view of Mori et al. (US 2017/0294873).
Regarding claims 18 and 19, modified Powers discloses all the claim limitations as set forth above, but the reference does not expressly disclose in projection on the plurality of posts, the lower portion is located at least two meters or at least 2.5 meters from a free end of the plurality of posts.
Mori discloses a cantilever sunshade comprising a roof structure and a solar panel (see Figure 1), wherein the solar panel has a dimension of 5 meters in length and width ([0080])
As modified Powers is not limited to any specific examples of the size of the roof structure comprising the solar panel and as a sunshade having a roof structure in a similar manner having a dimension of 5 meters in length and width was well known in the art before the effective filing date of the claimed invention, as evidenced by Mori above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected any suitable dimension for a car port or patio covering, including the lower portion of the roof structure being at least two or 2.5 meters from a free end of the plurality of posts in the device of modified Powers. Said combination would amount to nothing more than the use of a known element for its intended use in a known environment to accomplish an entirely expected result, such that an average sized human can walk beneath the roof structure without having to bend over.
Response to Arguments
Applicant's arguments filed 12/23/25 have been fully considered but they are not persuasive.
Applicant argues that Figure 11 of Powers shows a sunshade having a substantially horizontal solar panel and the skilled person would not form a roof structure having an angle between 60 o and 87 o with the plurality of posts. However, Powers discloses the roof to be at any virtually desired angle with the plurality of posts, where 10 degrees was shown as an angle in Figure 9, which translates to 80 o as claimed.
Applicant further argues that there is an unexpectable synergy between the claimed angle range and the presence of a balance wall as claimed. However, arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
Additionally, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness. However, the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed that an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.").
Therefore, the arguments were not found to be persuasive because no evidence was provided with respect to unexpected benefits of having a balance wall as part of a sunshade that was not taught by Takeuchi or the claimed range of the angle that forms between the roof structure and the plurality of posts.
Applicant further argues that providing a balance wall extending at most within the upper third of the height of the posts would not have been obvious for a skilled person because nothing in the cited references state such a feature and “when the balance wall extends at most within the upper third of the height of the posts, the balance wall does precisely not provide any privacy any longer” and “when the balance wall is located within the upper third of the height of the posts, the balance wall is too high and people can see and move under it”. First of all, it is unclear what is meant by “the balance wall does precisely not provide any privacy any longer”. Second of all, it appears Applicant is stating even when the balance wall extends at most within the upper third of the height of the posts, which is the claimed feature, the balance wall would not provide any privacy. Third of all, Applicant also states when the balance wall is located within the upper third of the height of the posts, the balance wall is too high and people can see and move under it, which is confusing because it is unclear why it would be too high and people can see and move under it without further explanation. Additionally, these appear to be opinions of Applicant’s without any factual basis or evidence. Nowhere does Takeuchi state the balance wall would no longer provide privacy, where it can be seen in Figures 9 and 10 the balance wall is “at most within the upper third of the height of the posts” and stated by Takeuchi to be about the height of a human shoulder, as previously cited. Applicant also did not respond to the rejection of claim 15 in which the claimed amount of the balance wall extension with respect to the height of the plurality of posts was determined to be a results effective variable besides the above speculative opinions.
Therefore, the argument was not found to be persuasive.
Applicant also argues that the Office Action alleges that Powers discloses at least one balance wall blocking between 5% and 75% of the surface separating the first post to the second post, where it is Applicant’s position that Powers does not disclose any blocking wall.
However, nowhere does the Office Action state Powers discloses at least one balance wall. The feature was taught by Takeuchi instead, as set forth in the Office Action.
Applicant further argues that the walls disclosed in Takeuchi are not disclosed in relation to any blocking ratio and the notion that Takeuchi discloses at least one balance wall blocking between 5% and 75% of the surface separating the first post and the second post is mere assumption. However, it is unclear how Takeuchi does not disclose at least one balance wall blocking between 5% and 75% of the surface separating the first post and the second post with explicit evidence and citation provided in the Office Action. Applicant argues that because Takuechi discloses openwork walls to block the line of sight while allowing sunlight and wind to pass through, the blocking ratio should be dept at a minimum and would not increase the blocking ratio to 5% or more or 10% or more. Applicant is encouraged to provide some sort of factual evidence to demonstrate Takeuchi does not disclose at least one balance wall blocking at least 5% of the surface separating the first post and the second post as shown in the reference. Additionally, nowhere does Takeuchi ever provide an example in which less than 5% of the surface between the first and second post is being covered in any of the provided Figures as the purpose of the balance wall in Takeuchi is to provide privacy by allowing those on the inside to see to the outside but blocks those on the outside from seeing in while allowing some light and wind to pass through, as set forth above, such that it is unclear how privacy is provided if the amount of blockage is less than 5% as asserted by Applicant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA CHERN whose telephone number is (408)918-7559. The examiner can normally be reached Monday-Friday, 9:30 AM-5:30 PM PT.
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, Niki Bakhtiari can be reached at 571-272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTINA CHERN/Primary Examiner, Art Unit 1722