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
Claims 22-23, 27, 33, 36, and 38-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/24/26.
Applicant’s election without traverse of Group I in the reply filed on 8/24/26 is acknowledged.
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) 1-4, 7-13 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferris et al. (US 2020/0266754 A1) in view of Elmes et al. (US 2010/154787 A1).
With regard to claim 1: Ferris et al. discloses a roofing system (10) (fig. 1, 7 and 9-10) comprising:
a plurality of structural beams (42) (figs. 1, 7 and 9; par. [0059]).
Ferris et al. further discloses roofing panels (12) comprising a solar module (figs. 1, 7 and 9-10; par. [0072]);
a plurality of top caps (44) corresponding to the number of the structural beams (42), the top caps (44) configured to secure the roofing panels (12) in place on the structural beams (42) (figs. 1, 7 and 9-10); gaskets (104) for sealing the roofing panels (12) (figs. 1, 7 and 9-10);
one or more interior gutters (64, 66) built into each of the structural beams (42) to drain any water that leaks between the gaskets (104) and the roofing panels (12) (fig. fig. 7).
Ferris et al. does not disclose that each structural beam comprises aluminum.
However, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ferris et al. to have the structural beams be formed of aluminum for its inherent material properties such as strength and being light in weight. No new or unpredictable results would be obtained from forming the structural beams of Ferris et al. to be made of aluminum. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
The structural beams being “extruded” is considered to be a product by process limitation.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
Ferris et al. does not disclose end fins attachable to at least one of the structural beams or the top caps to enclose end edges of the roofing system.
However, Elmes et al. discloses a structural beam (7) and top cap (8) including gaskets (7a, 8a) considered functionally equivalent to fins (7a, 8a) to enclose end edges of a system (figs. 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ferris et al. to include additional gaskets attachable to the structural beams or top caps such as taught by Elmes et al. to in order to provide additional means of sealing to mitigate fluid intrusion. As modified, Examiner notes that one set of gaskets engaging another panel is considered functionally equivalent to the claimed end fins. No new or unpredictable results would be obtained from modifying the roofing system of Ferris et al. to include additional gaskets attachable to the structural beams or top caps such as taught by Elmes et al. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
With regard to claim 2: Ferris et al. discloses one or more troughs (B) capable of use as one or more wire troughs capable of accommodating wiring for solar modules used as roofing panels, each of the one or more troughs (B) being attachable to a side of a structural beam (42) of the plurality of structural beams (42) (fig. 10).
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Fig. 10: Ferris et al. (US 2020/0266754 A1)
With regard to claim 3: Each of the structural beams (42) of Ferris et al. comprises one or more T-bolt slots (A) (fig. 1), the T-bolt slots (A) being usable in attaching a wire trough of the one or more wire troughs and capable of securing bolts to the respective structural beam for securement of structural attachment brackets for securing the respective structural beam to a building structure being roofed.
With regard to claim 4: The claim reciting “each of the one or more T-bolt slots in each of the structural beams is formed in the respective structural beam during extrusion of the respective structural beam” is considered a product by process claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
With regard to claim 7: Ferris et al. discloses that each of the structural beams (42) comprises a threaded channel (in upstand 76 receiving fastener) on a top portion of the respective structural beam (42) for securing a top cap of the plurality of top caps (44) to the respective structural beam (42).
Ferris et al. as modified by Elmes et al. discloses that each of the structural beams comprises channels (receiving gaskets and end fins) capable of use as one or more gasket attachment channels for securing bottom gaskets of the gaskets for forming a seal between the roofing panels to the respective structural beam.
With regard to claim 8: Ferris et al. as modified by Elmes et al. discloses that each of the one or more gasket attachment channels is usable for securing one of the end fins to the respective structural beam.
With regard to claim 9: Ferris et al. discloses channel walls (including vertical wall of 78) of the thread channel and one or more gasket attachment channels on each of the structural beams (42) forms side walls of the one or more interior gutters (64 , 66) (fig. 7).
With regard to claim 10: Ferris et al. as modified by Elmes et al. discloses that each of the one or more gasket attachment channels of the respective structural beam is formed as an integral part of the respective structural beam
As previously noted, “the extrusion process” is considered a product by process limitation.
With regard to claim 11: Ferris et al. discloses each of the top caps (44) comprises one or more gasket attachment channels (receiving seals 104) for securing top gaskets of the gaskets for forming a seal between the roofing panels (12) and the respective top cap (44) (figs. 7 and 9).
With regard to claim 12: Ferris et al. as modified by Elmes et al. discloses that each of the one or more gasket attachment channels is usable for securing one of the end fins to the respective top cap.
With regard to claim 13: Ferris et al. as modified by Elmes et al. discloses that each of the one or more gasket attachment channels (receiving gaskets and fins) of the respective top cap is formed as an integral part of the respective top cap.
Ferris et al. in view of Elmes et al. does not disclose that the top caps are formed of aluminum.
However, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ferris et al. to have the structural beams be formed of aluminum for its inherent material properties such as strength and being light in weight. No new or unpredictable results would be obtained from forming the top caps of Ferris et al. to be made of aluminum. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
The top cap being “extruded” is considered to be a product by process limitation.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
With regard to claim 20: Ferris et al. as modified by Elmes et al. discloses that the gaskets for sealing the roofing panels are flat gaskets (at portion engaging the top cap having flat sides) to accommodate side-by-side the roofing panels (12) (fig. 9).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited are directed to roofing and/or solar systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633
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