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 .
Specification
The disclosure is objected to because of the following informalities:
Page 6, line 12, “positioned om” should be changed.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: Line 10, “first second edge” should be changed to --first side edge--.
Appropriate correction is required.
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 21 is 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 21 recites, as a method step, "as the sail lifts and spreads in response to blowing wind, reducing sail fluttering and noise generated by the sun shade assembly." This language does not recite an affirmative step performed by the method practitioner, but rather describes a result or effect of the previously-recited steps. Therefore, the scope of the method is unclear, and it is not apparent what acts constitute the claimed method.
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, 2, 4, 9, 11-13 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnes et al. (US 2023/0126867 A1).
Claim 1: Barnes et al. discloses a sun shade assembly comprising: a sail (first panel 44 closest to 14; paragraph 81) constructed of a first material selected from a group consisting of nylon, polyester, vinyl, rayon, canvas, acrylic fabric, neoprene, linen, polypropylene, hemp, cotton, or combinations thereof (paragraph 81, the shade assembly may be comprised of multiple materials, which includes nylon and polyester, therefore the sail could be made of one or both of those materials), and said sail defined by: a leading edge (42) and an opposed trailing edge (edge of 44 directly opposite 42); opposing first and second side edges (80, 82); a top face and an opposed bottom face (as a three-dimensional flat sheet, there inherently must be a top face and a bottom face); a noise-dampening attachment (other panel 44 connected to the sail, as seen in FIG. 1) extending from the first side edge of said sail to the second side edge of said sail (as seen in FIG. 1) and comprising a first edge (long edge closest to sail 44), second edge (43), and one or more side edges (80, 82), wherein the first edge is attached at the trailing edge of the sail (as seen in FIG. 1; paragraph 81); and wherein the said noise-dampening attachment is constructed of a second material (paragraph 81 discloses different portions or panels of the sun shade 12 as comprising different materials). While Barnes et al. teaches that the panels of the sun shade may be formed of different materials (including nylon, polyester, cotton, and mesh), and therefore any material could be chosen for either of the panels (sail and attachment), Barnes et al. does not explicitly teach the second material of the attachment to be softer than the first material of the sail. However, it would have been obvious to have the sail be formed of a solid material (like nylon, polyester, cotton, etc.) and have the attachment be formed of a softer material, such as mesh, than the first material of said sail so that the free end of the sun shade was lighter (due to less material/more apertures) and thus the sunshade would be able to be kept in a mostly horizontal position when the wind was blowing. Additionally, it is noted that fabric mesh is inherently “softer” than other materials, such as nylon, polyester, vinyl, canvas, etc.
Claim 2: Barnes et al. discloses at least one mast, a support defined by at least one arm or rib (14), or both.
Claim 4: Barnes et al. discloses the attachment lacks a coating (Barnes et al. does not teach a coating on any portion of the sun shade assembly).
Claim 9: Barnes et al. discloses the leading edge of the sail as having a length that comprises a channel (40) that spans the length (paragraph 83).
Claim 11: Barnes et al. discloses the attachment can be permanently attached to the trailing edge of the sail (paragraph 81; “coupled sections 44 and/or selectively engageable sections 44”).
Claim 12: Barnes et al. discloses the attachment can be releasably attached to the trailing edge of the sail. (paragraph 81; “coupled sections 44 and/or selectively engageable sections 44”).
Claim 13: Barnes et al. is silent on the dimensions of the attachment. However, it would have been obvious to make the attachment have a length of about 3-20 feet and a width of about 0.1-3 feet since it has generally been recognized that changes in size involve only routine skill in the art. In re Rose, 105 USPQ 137.
Claim 21: Barnes et al. teaches a method for dampening noise generated by a sun shade assembly, said method comprising: securing a sail (first panel 44 closest to 14; paragraph 81) of the sun shade assembly to a support structure (14), the sail having a free trailing edge (edge of 44 directly opposite 42) and opposing first and second side edges (80, 82), and wherein the sail is constructed of a first material selected from a group consisting of nylon, polyester, vinyl, rayon, canvas, acrylic fabric, neoprene, linen, polypropylene, hemp, cotton, or combinations thereof (paragraph 81, the shade assembly may be comprised of multiple materials, which includes nylon and polyester, therefore the sail could be made of one or both of those materials), and wherein the sun shade assembly further comprises a noise-dampening attachment (other panel 44 connected to the sail, as seen in FIG. 1) secured to the trailing edge of the sail and extending from the first side edge of the sail to the second side edge of the sail (as seen in FIG. 1), and wherein the noise-dampening attachment is constructed of a second material (paragraph 81 discloses different portions or panels of the sun shade 12 as comprising different materials); and as the sail lifts and spreads in response to blowing wind, reducing sail fluttering and noise generated by the sun shade assembly (as best understood, Barnes et al. teaches the noise made by the sun shade to be dampened; paragraphs 108, 164-166).
While Barnes et al. teaches that the panels of the sun shade may be formed of different materials (including nylon, polyester, cotton, and mesh), and therefore any material could be chosen for either of the panels (sail and attachment), Barnes et al. does not explicitly teach the second material of the attachment to be softer than the first material of the sail. However, it would have been obvious to have the sail be formed of a solid material (like nylon, polyester, cotton, etc.) and have the attachment be formed of a softer material, such as mesh, than the first material of said sail so that the free end of the sun shade was lighter (due to less material/more apertures) and thus the sunshade would be able to be kept in a mostly horizontal position when the wind was blowing. Additionally, it is noted that fabric mesh is inherently “softer” than other materials, such as nylon, polyester, vinyl, canvas, etc.
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnes et al. (US 2023/0126867 A1) as applied to claim 4 above, and further in view of James (WO 2021/040863 A1).
Barnes et al. is discussed above and teaches the sun shade assembly to provide ultraviolet protection (paragraph 81), but is not explicit on how this feature is accomplished. James discloses a sun shade assembly comprising: a sail (20) defined by: a leading edge (61) and an opposed trailing edge (62); at least one side edge (63) positioned between the leading and trailing edges; a top face (70) and an opposed bottom face (71); an attachment (hem 82) at the trailing edge of the sail (FIGF. 9d); and wherein the sail comprising a coating (21) on the top face, bottom face, or both (page 16, line 30 through page 17, lines 1-2), wherein the coating provides ultraviolet protection (page 16, lines 26-28), and wherein the coating is selected from one or more of urethane polyurethane, polyethylene, resin, epoxy, polystyrene, rubber, lacquer, or combinations thereof (page 17, lines 7-9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Barnes et al. to include a coating on the top face, bottom face or both of the sail, as taught by James, to provide an easy means to provide ultraviolet protection to any desired part of the sun shade so the user does not get burned during use of the sun shade assembly.
Claim(s) 1, 2, 4, 6-13 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over James (WO 2021/040863 A1) in view Barnes et al. (US 2023/0126867 A1).
Claim 1: James discloses a sun shade assembly comprising: a sail (20) constructed of a first material selected from a group consisting of nylon, polyester, vinyl, rayon, canvas, acrylic fabric, neoprene, linen, polypropylene, hemp, cotton, or combinations thereof (page 16, lines 21-25), and defined by: a leading edge (61) and an opposed trailing edge (62); opposing first and second side edges (63); a top face (70) and an opposed bottom face (71); an noise-dampening attachment (hem 82; page 17, lines 15-18) extending from the first side edge of said sail to the second side edge of said sail and at the trailing edge of the sail (FIGF. 9d). James lacks the attachment comprising a first edge, second edge, and one or more side edges, and wherein the attachment is constructed from silk, satin, sateen, mesh, or combinations thereof.
Barnes et al. discloses a sun shade assembly comprising: a sail (first panel 44 closest to 14; paragraph 81) constructed of a first material selected from a group consisting of nylon, polyester, vinyl, rayon, canvas, acrylic fabric, neoprene, linen, polypropylene, hemp, cotton, or combinations thereof (paragraph 81, the shade assembly may be comprised of multiple materials, which includes nylon and polyester, therefore the sail could be made of one or both of those materials), and said sail defined by: a leading edge (42) and an opposed trailing edge (edge of 44 directly opposite 42); opposing first and second side edges (80, 82); a top face and an opposed bottom face (as a three-dimensional flat sheet, there inherently must be a top face and a bottom face); a noise-dampening attachment (other panel 44 connected to the sail, as seen in FIG. 1) extending from the first side edge of said sail to the second side edge of said sail (as seen in FIG. 1) and comprising a first edge (long edge closest to sail 44), second edge (43), and one or more side edges (80, 82), wherein the first edge is attached at the trailing edge of the sail (as seen in FIG. 1; paragraph 81); and wherein the said noise-dampening attachment is constructed of a second material, such as mesh (paragraph 81 discloses different portions or panels of the sun shade 12 as comprising different materials, wherein one of those material may be mesh).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify James to include an attachment that comprises a first edge, second edge, and one or more side edges, wherein the first edge is attached at the trailing edge of the sail, and wherein the attachment is constructed from silk, satin, sateen, mesh, or combinations thereof, as taught by Barnes et al., as an equivalent means to achieve the same goal of noise reduction and less flapping if/when desired by the user.
Claim 2: James discloses at least one mast (30), a support defined by at least one arm (15) or rib (10), or both.
Claim 4: Barnes et al. does not teach the attachment as having a coating (Barnes et al. does not teach a coating on any portion of the sun shade assembly).
Claim 6: James discloses the sail as comprising a coating (21) on the top face, bottom face, or both (page 16, line 30 through page 17, lines 1-2).
Claim 7: James discloses the coating as having an ultraviolet protection coefficient rating of 30 or more in accordance with ASTM D6544 (page 16, lines 26-28).
Claim 8: James discloses the coating is selected from one or more of urethane polyurethane, polyethylene, resin, epoxy, polystyrene, rubber, lacquer, or combinations thereof (page 17, lines 7-9).
Claim 9: James discloses the leading edge of the sail as having a length that comprises a channel (65) that spans the length (FIG. 9d).
Claim 10: James discloses the channel comprises one or more apertures (91, 92) along the leading edge (Fig. 10d).
Claim 11: Barnes et al. discloses the attachment can be permanently attached to the trailing edge of the sail (paragraph 81; “coupled sections 44 and/or selectively engageable sections 44”).
Claim 12: Barnes et al. discloses the attachment can be releasably attached to the trailing edge of the sail. (paragraph 81; “coupled sections 44 and/or selectively engageable sections 44”).
Claim 13: Barnes et al. is silent on the dimensions of the attachment. However, it would have been obvious to make the attachment have a length of about 3-20 feet and a width of about 0.1-3 feet since it has generally been recognized that changes in size involve only routine skill in the art. In re Rose, 105 USPQ 137. Additionally, it is noted that the sail of James is taught to have a length/width of about 3-20 feet (page 16, lines 9-10), and therefore since the attachment extends from the first side edge to the second side edge of the sail, it would be obvious to have the attachment have a length of about 3-20 feet to match the length of the sail.
Claim 21: James teaches a method for dampening noise generated by a sun shade assembly, said method comprising: securing a sail (20) of the sun shade assembly to a support structure (comprised of 30, 15, 10), the sail having a free trailing edge (62) and opposing first and second side edges (63), and wherein the sail is constructed of a first material selected from a group consisting of nylon, polyester, vinyl, rayon, canvas, acrylic fabric, neoprene, linen, polypropylene, hemp, cotton, or combinations thereof (page 16, lines 21-25), and wherein the sun shade assembly further comprises a noise-dampening attachment (hem 82; page 17, lines 15-18) secured to the trailing edge of the sail and extending from the first side edge of the sail to the second side edge of the sail (FIGF. 9d); and as the sail lifts and spreads in response to blowing wind, reducing sail fluttering and noise generated by the sun shade assembly (as best understood, James teaches for the noise made by the sun shade to be dampened; page 16, line 29 through page 17, line 18). James lacks the noise-dampening attachment as being constructed from silk, satin, sateen, mesh, or combinations thereof.
Barnes et al. discloses a sun shade assembly comprising: a sail (first panel 44 closest to 14; paragraph 81) constructed of a first material selected from a group consisting of nylon, polyester, vinyl, rayon, canvas, acrylic fabric, neoprene, linen, polypropylene, hemp, cotton, or combinations thereof (paragraph 81, the shade assembly may be comprised of multiple materials, which includes nylon and polyester, therefore the sail could be made of one or both of those materials), and said sail defined by: a leading edge (42) and an opposed trailing edge (edge of 44 directly opposite 42); opposing first and second side edges (80, 82); a top face and an opposed bottom face (as a three-dimensional flat sheet, there inherently must be a top face and a bottom face); a noise-dampening attachment (other panel 44 connected to the sail, as seen in FIG. 1) extending from the first side edge of said sail to the second side edge of said sail (as seen in FIG. 1) and comprising a first edge (long edge closest to sail 44), second edge (43), and one or more side edges (80, 82), wherein the first edge is attached at the trailing edge of the sail (as seen in FIG. 1; paragraph 81); and wherein the said noise-dampening attachment is constructed of a second material, such as mesh (paragraph 81 discloses different portions or panels of the sun shade 12 as comprising different materials, wherein one of those material may be mesh).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify James to include an attachment constructed from silk, satin, sateen, mesh, or combinations thereof, as taught by Barnes et al., as an equivalent means to achieve the same goal of noise reduction and less flapping if/when desired by the user.
Response to Arguments
Applicant’s arguments, see pages 2-3, filed 3/4/2026, with respect to amended claim 1 have been fully considered and are persuasive. The rejection of claims 1, 4, 9, 10, 12 and 13 under Hart has been withdrawn.
Regarding the Barnes and James references, Applicant's arguments filed 3/4/2026 have been fully considered but they are not persuasive. Applicant argues that Barnes “does not identify noise from sail flutter as a problem to be addressed” (page 3, Remarks). However, as stated above, Barnes does in fact mention reducing noise from sail flutter as a concern and various methods to mitigate said problem (paragraphs 108, 159, 164-165). Applicant also argues that Barnes “does not disclose: (i) any “noise dampening attachment” at the trailing edge of a sail that extends from a first side edge to a second side edge; (ii) an attachment constructed of a second, softer material from the group of silk, satin, sateen, mesh, or combinations thereof; or (iii) the claimed juxtaposition of a first sail material from Applicant’s defined group with a second, softer noise dampening material from Applicant’s defined second material group. Barnes focuses on canopy support, frame geometry, and anchor configurations; it does not address noise reduction via a trailing edge attachment” (page 4, Remarks). It is noted that Barnes does want to solve the problem of noise reduction and already teaches a sun shade made of a multiple panels 44 (paragraph 81), wherein the panels can be made of different materials, including those listed in the groups of claim 1 (paragraph 81). As such, it would be reasonable to select two different materials, with the trailing attachment (panel) being made of a softer material than that of the sail if that would reduce the noise from sail flutter. Therefore, the Examiner maintains that Barnes teaches the limitations of claim 1.
Similarly, Applicant argues that James “does not disclose or suggest a noise dampening attachment at the trailing edge of the sail that extends from a first side edge to a second side edge” (page 5, Remarks). However, as stated in the rejection above, James does in fact mention reducing noise from sail flutter as a concern and various methods to mitigate said problem (page 16, line 29 through page 17, line 18). Applicant then argues that “James is not focused on acoustic noise reduction from flutter; it solves a different problem (automatic orientation and stability under wind load) using mechanical rotation and tensioning mechanisms, not material/edge treatment of the sail. Consequently, James does not supply the missing teaching of a specific trailing edge, softer material, noise dampening attachment” (page 5, Remarks). Again, it is noted that James does want to solve the problem of noise reduction and does so by adding a hem 82 that extends from the first side edge to the second side edge of the sail at the trailing edge of the sail (FIG. 9d; page 17, lines 15-18). Therefore, it would have been obvious to one of ordinary skill in the art to use a different, softer material in the form of an attachment comprising a first edge, second edge, and one or more side edges, wherein the first edge is attached at the trailing edge of the sail, as suggested by Barnes, to achieve the same result. As such, the Examiner maintains that James in combination with Barnes et al. does teach all of the limitations of claim 1.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning (pages 6-7, Remarks), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIELLE JACKSON whose telephone number is (571)272-2268. The examiner can normally be reached M-F: 11AM-7PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Dunn can be reached at (571)272-6670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DNJ/Examiner, Art Unit 3636
/DAVID R DUNN/Supervisory Patent Examiner, Art Unit 3636
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