DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-9 are cancelled.
Claims 10-18 are pending.
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.
Claim 10-18 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.
Re claim 10, claim 10 recites, “the coatings” in line 9. There is insufficient antecedent basis for this limitation in the claims. It appears this language is intended to refer to, “the one or more surface coatings” and will be interpreted as such.
Re claim 11, claim 11 recites, “the decorative wall niche elements” in line 1-2, “the wall” in line 9, and “the wall” in line 10. There is insufficient antecedent basis for this limitation in the claims. It appears this language is intended to refer to, “the decorative wall niche element” and “a wall” in line 9 (thus correcting line 10 as well) and will be interpreted as such.
Re claim 18, claim 18 recites, “the mortar” in line 3. There is insufficient antecedent basis for this limitation in the claims. It appears this language is intended to refer to, “the adhesive mortar” and will be interpreted as such.
Claims 12-17 are rejected as being dependent on a rejected claim.
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, 12-14, 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kessler (US 4,999,957) in view of Ackerman JR (“Ackerman”) (US 2003/0056444).
Re claim 10, Kessler discloses a decorative wall niche element (2) for storage purpose configured to be installed inside a wall in areas with wet floors (as this is a statement of intended use, and 2 is capable of being installed inside a wall in areas with wet floors) including:
-a niche body (11) comprising at least one profile channel (21), the at least one profile channel (21) having dimensions (Fig. 2) configured to receive and slidable accommodate (Fig. 2) corner profiles (12) thereby ensuring that height differences arising from thickness of one or more surface coatings and an adhesive mortar applied to the coatings are prevented (there being no surface coating or mortar, no height difference requires prevention),
- the at least one profile channel (21) being suitable for the dimensions of the niche body (2), facilitating installation without the need for angled cuts on tile edges,
but fails to disclose a waterproofing membrane integrated with the niche body to wrap around an application wall and provide a complete seal.
However, Ackerman discloses a waterproofing membrane (38) integrated with the niche body (10) to wrap around an application wall (22) and provide a complete seal ([0028]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative wall niche element of Kessler with a waterproofing membrane integrated with the niche body to wrap around an application wall and provide a complete seal as disclosed by Ackerman in order to prevent intrusion of water ([0028]).
Re claim 12, Kessler as modified discloses the decorative wall niche element of claim 10, wherein the profile (12) includes at least one escape space (13) configured to accommodate adjustments resulting from variations in thickness difference of the one or more surface coatings (as this language is a statement of intended use), and thickness of the adhesive mortar applied during installation (as this is a statement of intended use, and the claims are drawn to a decorative building element itself, and not any system including mortar).
Re claim 13, Kessler as modified discloses the decorative wall niche element of claim 10, wherein the niche body (2) comprises at least one support element (the nails into 13) configured to enhance structural integrity and durability (Fig. 1) of the niche body (2).
Re claim 14, Kessler as modified discloses the decorative wall niche element of claim 10, wherein the niche body (2) includes an inclined surface (left surface of 11 in Fig. 2) formed at a bottom surface portion (as no point of reference is provided) thereof to facilitate water drainage (left surface of 11 would drain water). In the event the Examiner over broadly construed the phrase, “inclined surface,” see alternate rejection below.
Re claim 17, Kessler as modified discloses the decorative wall niche element of claim 10, Ackerman discloses wherein the waterproofing membrane (38) integrated with the niche body (10) extends beyond edges (Fig. 3) of an installation area (of 10), and wherein dimensions of the waterproofing membrane (38) are greater than the size (as 38 extends beyond the edges thereof) of the niche (10).
Re claim 18, Kessler as modified discloses the decorative wall niche element of claim 10, wherein the at least one profile channel (12) is configured to allow the adjustments compensating for variations in thickness of the mortar during installation (as this is a statement of intended use, and the claims are drawn to a decorative building element itself, and not any system including mortar).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kessler (US 4,999,957) in view of Ackerman JR (“Ackerman”) (US 2003/0056444) and Lieberman (US 1,852,017).
Re claim 11, Kessler as modified discloses a method (Fig. 1) of installing the decorative wall niche elements (2) of claim 10 (see above) comprising the steps of:
-defining a place (Fig. 1 showing 2 built, thus being a place) where the niche body (2) will be installed (Col 1 lines 50-51; Fig. 1),
-forming (Fig. 1) a wall cavity (into which 2 is placed) corresponding to the dimensions (Fig.1) of the niche body (2),
-placing (Col 1 lines 50-51) the niche body (2) into the wall cavity (per Col 1 lines 50-51),
-fixing (Col 2 lines 41-44) the niche body (2) to the wall (Col 1 lines 50-51),
-adhering (Ackerman: [0044]) the waterproofing membrane (Ackerman: 38) integrated with the niche body (Ackerman: 10) to the wall (Ackerman: 22) to ensure a complete seal (Fig. 2),
- positioning (Fig. 2 12) profiles (12) in the at least one profile channel (21) provided on the niche body (2), and
but fails to disclose performing of surface tiling on and around the niche body.
However, Lieberman discloses performing surface tiling (Page 2 lines 54-57) on and around the niche body (10).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative wall niche element of Kessler with performing of surface tiling on and around the niche body as disclosed by Lieberman in order to increase aesthetic appeal, as the process of tiling is very well-known and common in the art.
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kessler (US 4,999,957) in view of Ackerman JR (“Ackerman”) (US 2003/0056444) and Bridges et al (“Bridges”) (US 5,651,222).
Re claim 14 in the alternative , Kessler as modified discloses the decorative wall niche element of claim 10, wherein the niche body (2) includes a surface (top surface of 11 in Fig. 2) formed at a bottom portion thereof (as no point of reference is provided) to facilitate water drainage (any surface of 11 would drain water), but fails to disclose the surface as inclined.
However, Bridges discloses the surface (Fig. 5, top surface of 16) as inclined (Fig. 5).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative wall niche element of Kessler with the surface as inclined as disclosed by Bridges in order to aid in the draining of water (Col 2 lines 45-46).
Re claim 15, Kessler as modified discloses the decorative wall niche element of claim 14, but fails to disclose wherein the inclined surface has a slope of 0.1-5°.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative wall niche element of Kessler, as modified by Bridges, wherein the inclined surface has a slope of 0.1-5° in order to control the flow of water, but not so much as nothing may be set along the edges thereof. In addition, where 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.
Re claim 16, Kessler as modified discloses the decorative wall niche element of claim 15, but fails to disclose wherein the inclined surface has a slope of 1.5°.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative building element of Kessler, as modified by Bridges, wherein the inclined surface has a slope of 1.5° in order to control the flow of water, but not so much as nothing may be set along the edges thereof. In addition, where 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.
Response to Arguments
Objections to the Claims: Applicant’s argument with respect to the claim objections is persuasive and objection to the claims is hereby withdrawn.
Claim Rejections 35 USC 112: Applicant’s argument with respect to the claims rejected under 35 USC 112 is persuasive and rejection of the claims pursuant to 35 USC 112 is hereby withdrawn.
Claim Rejections 35 USC 103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
Applicant argues that Kessler and Ackerman are non-analogous art. In support, Applicant contends that the present application is directed to a “shower niche” or a “wall niche” for storage purposes to be used inside wall areas with wet floors. First, the claims are not directed to a shower niche, nor is any shower claimed. Second, the claims are directed to a “decorate wall niche element” and not an actual niche. Third, the claims state that the niche element is for storage purposes configured to be installed inside a wall area with wet floors. This language is directed to the intended use of the claimed element. The features cited in the prior art above are capable of use for storage and for use in wall areas with wet floors. Fourth, Merriam-Webster defines “niche” as “a recess in a wall.” Clearly, 2 of Kessler is installed in a recess in a wall, as is 12 of Ackerman. As such, both 2 of Kessler and 12 of Ackerman constitute “decorative wall niche elements” and are within the same field of endeavor as the claimed invention.
Applicant further contends that Kessler is directed to a window assembly and not a decorative building element. A window is functional, but is also decorative. In addition, Applicant argues that by definition, a window assembly cannot be used for storage purposes. “Storage purposes” are not defined by the claim. A window assembly “stores” a glass pane. Placement of objects on window sills is extremely commonplace and further constitutes “storage purposes.” Thus, a window is at the very least capable of being used for “storage purposes.”
Applicant next argues that neither reference discloses a waterproofing membrane integrated with the niche body to wrap around an application wall. Applicant contends this is due to each reference being directed to windows. This language was addressed in the previous rejection and is again addressed in the above. Applicant argues that Ackerman does not disclose a waterproofing membrane “integrated” with the niche body. “Integrated” is extremely broad and requires mere association, without additional clarity. Applicant argues that the waterproofing membrane of Ackerman does not wrap around an application wall specifically for niche installations. The language “niche” is discussed above. Finally, Applicant argues that the waterproofing membrane of Ackerman seals the sides of the window frame, whereas the present case has a membrane going throughout the entire niche body. This is a feature which is not claimed.
Applicant’s arguments concerning claims 11 (and any dependent claims) are addressed by the above.
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 KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635