DETAILED ACTION
This Office action is a reply to the amendment filed on 6/12/2026. Currently, claims 3-22 are pending. Claims 1-2 have been cancelled. No claims have been withdrawn. No new claims have been added.
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 3-22 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 3, “the plurality of second component horizontal, co-planar tabs” is indefinite because the limitation lacks antecedent basis. The claim does not previously define any of the previously recited tabs as being co-planar. Further, it is unclear what is required to be co-planar. As written, the claim appears to require the second horizontal tabs to be coplanar with each other. However, applicant’s specification and arguments filed on 6/12/2026 point to the plurality of second component horizontal tabs being coplanar with the plurality of first component horizontal tabs. Applicant is requested to clarify which claim elements are required to be co-planar and provide a point of reference for the co-planar relationship. For example, applicant could require the plurality of second component horizontal tabs being coplanar with the plurality of first component horizontal tabs. See also claim 13.
The remainder of claims in this section are rejected by virtue of dependency upon a rejected base claim.
Claim Rejections - 35 USC § 102/103
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) 3-7 and 13-17 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Curley (US 2445315) or, in the alternative, under 35 U.S.C. 103 as obvious over Curley in view of Wright (US 4045913).
Claim 3, Curley provides an assembly, comprising:
a first component 16 mounted on a bottom edge 12 of the fire-rated door (10; note that under the broadest reasonable interpretation, door 10 is a conventional door that at least somewhat resists fire, under the basic properties of materials, as exceedingly broadly claimed; col. 1, lines 39-40), wherein the first component is a generally U-shaped channel (Figs. 2-3) with a rectangular cross-section (Figs. 2-3), has a partially open side (Figs. 2-3), and has a plurality of first component horizontal tabs (see portions of 18; Figs. 2-3 and 6);
a second component 28 having a plurality of second component horizontal tabs (34; note that under the broadest reasonable interpretation, portions 34 of 28 extend at least somewhat outwardly in a horizontal direction and thus were treated as horizontal tabs, as exceedingly broadly claimed; Figs. 2-3, 5 and 7), the second component inserted through the partially open side and movable within the first component (28 is inserted through and movable within 16; Figs. 2-3, 5 and 7); and
at least one third component 38 mounted to a side of the fire-rated door (Fig. 4) and configured to define a movement boundary of the second component in relation to the first component within the first component (the at least one third component 38 is suitable to define a movement boundary of the second component 28 in relation to the first component 16 within the first component 16; Figs. 1-8),
wherein the second component is movable within a space between the movement boundary and the first component to temporarily accommodate uneven locations in a finished floor beneath the fire-rated door during a swing motion of the fire-rated door (the second component 28 is suitable to be moved within a space between the movement boundary and the first component to temporarily accommodate uneven locations in a finished floor beneath the fire-rated door during a swing motion of the fire-rated door, under the broadest reasonable interpretation, as the door can swing across the floor over uneven locations defined by the sill 32 and the floor, which collectively defines a finished floor; Fig. 2), and
wherein the plurality of first component horizontal tabs interacts with the plurality of second component horizontal, co-planar tabs (note that the claim does not define what the plurality of second component horizontal tabs is required to be co-planar with and under the broadest reasonable interpretation, element 28 is coplanar with element 36, as exceedingly broadly claimed; Fig. 7) such that the second component is prevented from falling out of the first component (the second component horizontal tabs at 34 contact the first component horizontal tabs on 16 on each side of the slot 18 such that the second component is prevented from fallout out of the first component, since the second component abuts against the first component, as shown in Fig. 3).
Note that the limitation, “wherein the second component is movable within a space between the movement boundary and the first component to temporarily accommodate uneven locations in a finished floor beneath the fire-rated door during a swing motion of the fire-rated door” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458,459 (CCPA 1963). In this claim, since Curley is capable of being moved within the space as claimed, Curley meets the claim.
In the event that applicant disagrees that Curley’s door is a fire-rated door, the examiner takes the position that such fire-rated doors are known in the art, and it would have been well within the level of ordinary skill in the art to use one. Wright teaches an assembly comprising a fire resistant, sound attenuating drop seal door comprising a fire-rated door (col. 3, lines 24-42; Fig. 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the door of the assembly to comprise a fire-rated door, with the reasonable expectation of success of increasing the resistance to flames and heat from a fire, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 4, Curley further teaches wherein the assembly is configured to correct a non-compliant, excessive gap condition between a bottom side of the second component and the finished floor (note that a non-compliant, excessive gap condition between a bottom side of the second component and the finished floor is not positively recited and thus not required, but that in Curley’s assembly, the second component extends downwardly toward the finished floor and thus is suitable to correct a non-compliant, excessive gap condition between a bottom side of the second component and the finished floor, as exceedingly broadly claimed; Figs. 2-3), wherein a height of the assembly extends a height of the fire-rated door (a height of 10; Figs. 1-8) and reduces a gap between the bottom side of the second component and the finished floor (the second component extends downwardly from a bottom of the door to reduce a gap between the bottom side of the second component and the finished floor; Figs. 2-3).
Claim 5, Curley further teaches a spring 22 configured to connect the first and second components and allow the second component to move within the first component in accordance with the movement boundary (col. 1, lines 38-48; Figs. 3-5).
Claim 6, Curley further teaches wherein the first component has a base panel (central web of 16; Figs. 2-3) and two L-shaped sidewalls (L-shaped sidewalls defining the first component tabs; Figs. 2-3), each of the two L-shaped sidewalls terminating in two inward-extending horizontal tabs that define the partially open side (Figs. 2-3).
Claim 7, Curley further teaches wherein the second component is a generally V-shaped channel having two outward-extending horizontal tabs (under the broadest reasonable interpretation, the second component 28 is a generally V-shaped channel having two outward-extending horizontal tabs at 34, as exceedingly broadly claimed; Figs. 2-3).
Claim 13, Curley provides a method for controlling and managing a door bottom clearance of a fire-rated door, the method comprising:
mounting a first component 16 of an assembly on a bottom edge of the fire-rated door (10; note that under the broadest reasonable interpretation, door 10 is a conventional door that at least somewhat resists fire, under the basic properties of materials, as exceedingly broadly claimed; col. 1, lines 39-40), wherein the first component is a generally U-shaped channel (Figs. 2-3) with a rectangular cross-section (Figs. 2-3), has a partially open side (at 18; Figs. 2-3), and has a plurality of first component horizontal tabs (portions 18; Figs. 2-3);
inserting a second component 28 of the assembly having a plurality of second component horizontal tabs (34; note that under the broadest reasonable interpretation, portions 34 of 28 extend at least somewhat outwardly in a horizontal direction and thus were treated as horizontal tabs, as exceedingly broadly claimed; Figs. 2-3, 5 and 7) through the partially open side (through opening between portions 18; Figs. 2-3, 5 and 7), where in the second component is movable within the first component (the second component 28 is permitted to move within the first component 16; Figs. 2-3);
mounting at least one third component 38 of the assembly to a side of the fire-rated door to define a movement boundary of the second component in relation to the first component within the first component (the third component provides boundary edges on each side of the door; Figs. 1-8); and
enabling the second component to be movable within space between the movement boundary and the first component to temporarily accommodate uneven locations in a finished floor beneath the fire-rated door during a swing motion of the fire-rated door (the second component 28 is suitable to be moved within a space between the movement boundary and the first component to temporarily accommodate uneven locations in a finished floor beneath the fire-rated door during a swing motion of the fire-rated door, under the broadest reasonable interpretation, as the door can swing across the floor over uneven locations defined by the sill 32 and the floor, which collectively defines a finished floor; Fig. 2),
wherein the plurality of first component horizontal tabs interacts with the plurality of second component horizontal, co-planar tabs (note that the claim does not define what the plurality of second component horizontal tabs is required to be co-planar with and under the broadest reasonable interpretation, element 28 is coplanar with element 36, as exceedingly broadly claimed; Fig. 7) such that the second component is prevented from falling out of the first component (the second component tabs at 34 contact the first component tabs on 16 on each side of the slot 18 such that the second component is prevented from fallout out of the first component, since the second components abut against the first component, as shown in Fig. 3).
Note that the limitation, “the second component to be movable within [a] space between the movement boundary and the first component to temporarily accommodate uneven locations in a finished floor beneath the fire-rated door during a swing motion of the fire-rated door” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458,459 (CCPA 1963). In this claim, since Curley is capable of being moved within the space as claimed, Curley meets the claim.
In the event that applicant disagrees that Curley’s door is a fire-rated door, the examiner takes the position that such fire-rated doors are known in the art, and it would have been well within the level of ordinary skill in the art to use one. Wright teaches an assembly comprising a fire resistant, sound attenuating drop seal door comprising a fire-rated door (col. 3, lines 24-42; Fig. 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the door of the assembly to comprise a fire-rated door, with the reasonable expectation of success of increasing the resistance to flames and heat from a fire, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 14, Curley further teaches wherein the assembly is configured to correct a non-compliant, excessive gap condition between a bottom side of the second component and the finished floor (note that a non-compliant, excessive gap condition between a bottom side of the second component and the finished floor is not positively recited and thus not required, but that in Curley’s assembly, the second component extends downwardly toward the finished floor and thus is suitable to correct a non-compliant, excessive gap condition between a bottom side of the second component and the finished floor, as exceedingly broadly claimed; Figs. 2-3), wherein a height of the assembly extends a height of the fire-rated door (a height of 10; Figs. 1-8) and reduces a gap between the bottom side of the second component and the finished floor (the second component extends downwardly from a bottom of the door to reduce a gap between the bottom side of the second component and the finished floor; Figs. 2-3).
Claim 15, Curley further teaches connecting the first and second components via a spring 22 to allow the second component to move within the first component in accordance with the movement boundary (col. 1, lines 38-48; Figs. 3-5).
Claim 16, Curley further teaches wherein the first component has a base panel (central web of 16; Figs. 2-3) and two L-shaped sidewalls (L-shaped sidewalls defining the first component tabs; Figs. 2-3), each of the two L-shaped sidewalls terminating in two inward-extending horizontal tabs that define the partially open side (Figs. 2-3).
Claim 17, Curley further teaches wherein the second component is a generally V-shaped channel having two outward-extending horizontal tabs (under the broadest reasonable projections the second component 28 is a generally V-shaped channel, as exceedingly broadly claimed and has two outward-extending horizontal tabs at 34, as exceedingly broadly claimed; Figs. 2-3).
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) 8-11 and 18-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Curley (US 2445315) and Wright (US 4045913) as above, and further in view of Dintheer (US 20170107755).
Claim 8, Curley and Wright teach all the limitations of claim 7 as above. Curley does not teach wherein the at least one third component is generally L-shaped and comprises: a vertical portion installed on an edge side of the fire-rated door, and a horizontal portion inserted into a space between the first and second components. However, Dintheer teaches an assembly, comprising at least one third component 1 that is generally L-shaped (Figs. 2-6) and comprises: a vertical portion 10 installed on an edge side of a door (T; Fig. 1), and a horizontal portion 11 inserted into a space between first and second components (in groove 33; [0091]; Fig. 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the assembly such that the at least one third component is generally L-shaped and comprises: a vertical portion installed on an edge side of the fire-rated door, and a horizontal portion inserted into a space between the first and second components, with the reasonable expectation of success of using a known shape of a third component to secure the first component to the door while permitting movement of the second component, since it has been held that a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claim 9, Curley further teaches wherein the space is defined by the two inward-extending horizontal tabs of the first component and the two outward-extending horizontal, co-planar tabs of the second component (Figs. 2-3).
Claim 10, Curley further teaches wherein the at least one third component is configured to set the movement boundary of the second component at the side of the fire-rated door to enable the first and second components to be mounted on the bottom edge of the fire-rated door at an angle across a width of the fire-rated door (under the broadest reasonable interpretation, the first and second components are permitted to be mounted on the bottom edge of the fire-rated door at an angle across a width of the fire-rated door; Figs. 1-8).
Claim 11, Curley further teaches a first third component installed on a first edge side of the fire-rated door, and a second third component installed on a second, opposing edge side of the fire-rated door (col. 2, lines 18-24; it is understood that plates 38 are installed on each side of the door; Fig. 4). Curley does not teach wherein the at least one third component is generally L-shaped. However, Dintheer teaches an assembly, comprising at least one third component 1 that is generally L-shaped (Figs. 2-6). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the assembly such that the at least one third component is generally L-shaped, with the reasonable expectation of success of using a known shape of a third component to secure the first component to the door while permitting movement of the second component, since it has been held that a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claim 12, Curley further teaches wherein the movement boundary comprises a first movement boundary of the second component in relation to the first component within the first component on the first edge side of the fire-rated door (on the top or bottom of the first component, or alternatively on the first side edge of door 10), and the movement boundary comprises a second movement boundary of the second component in relation to the first component within the first component on the second, opposing edge side of the fire-rated door (on the bottom or top of the first component, or alternatively on the second side of 10).
Claim 18, Curley and Wright teach all the limitations of claim 17 as above. Curley does not teach wherein the at least one third component is generally L-shaped and the method further comprises: installing a vertical portion of the at least one third component on an edge side of the fire-rated door; and inserting a horizontal portion of the at least one third component into a space between the first and second components. However, Dintheer teaches a method comprising an assembly, comprising at least one third component 1 that is generally L-shaped (Figs. 2-6) and comprises: installing a vertical portion 10 on an edge side of a door (T; Fig. 1), and installing a horizontal portion 11 into a space between first and second components (in groove 33; [0091]; Fig. 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the method such that the at least one third component is generally L-shaped, and installing a vertical portion on an edge side of the fire-rated door, and installing a horizontal portion into a space between the first and second components, with the reasonable expectation of success of using a known shape of a third component to secure the first component to the door while permitting movement of the second component, since it has been held that a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claim 19, Curley further teaches wherein the space is defined by the two inward-extending horizontal tabs of the first component and the two outward-extending horizontal, co-planar tabs of the second component (Figs. 2-3).
Claim 20, Curley further teaches wherein the at least one third component is configured to set the movement boundary of the second component at the side of the fire-rated door to enable the first and second components to be mounted on the bottom edge of the fire-rated door at an angle across a width of the fire-rated door (under the broadest reasonable interpretation, the first and second components are permitted to be mounted on the bottom edge of the fire-rated door at an angle across a width of the fire-rated door; Figs. 1-8).
Claim 21, Curley further teaches installing a first third component on a first edge side of the fire-rated door, and installing a second third component on a second, opposing edge side of the fire-rated door (col. 2, lines 18-24; it is understood that plates 38 are installed on each side of the door; Fig. 4). Curley does not teach wherein the at least one third component is generally L-shaped. However, Dintheer teaches an assembly, comprising at least one third component 1 that is generally L-shaped (Figs. 2-6). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the assembly such that the at least one third component is generally L-shaped, with the reasonable expectation of success of using a known shape of a third component to secure the first component to the door while permitting movement of the second component, since it has been held that a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claim 22, Curley further teaches wherein the movement boundary comprises a first movement boundary of the second component in relation to the first component within the first component on the first edge side of the fire-rated door (on the top or bottom of the first component, or alternatively on the first side edge of door 10), and the movement boundary comprises a second movement boundary of the second component in relation to the first component within the first component on the second, opposing edge side of the fire-rated door (on the bottom or top of the first component, or alternatively on the second side of 10).
Response to Arguments
Applicant’s arguments with respect to claim(s) 3-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Re claim(s) 3-7 and 13-17 under 35 U.S.C. 102(a)(1) as anticipated by Curley (US 2445315) or, in the alternative, under 35 U.S.C. 103 as obvious over Curley in view of Wright (US 4045913).
Re claim 3, applicant argues that Curley allegedly does not teach the claimed arrangement of the first and second component horizontal tabs being coplanar. However, applicant’s claim limitation is indefinite, as noted in the 112b rejection in this instant Office action. The claim does not previously define second component horizontal co-planar tabs. Further, the claim does not provide a point of reference for the second component horizontal tabs to be coplanar to anything, in particular. For examination purposes, Curley’s element 28 was treated as being co-planar with element 36, as exceedingly broadly claimed (Fig. 7). Thus, Curley meets the limitation.
Claims 4-7 and 13-17 stand or fall with claim 3 as above.
Claim(s) 8-11 and 18-22 under 35 U.S.C. 103 as being unpatentable over Curley (US 2445315) and Wright (US 4045913) as above, and further in view of Dintheer (US 20170107755).
Claims 8-11 and 18-22 stand or fall with claim 3 as 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 JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635
Prosecution Insights