DETAILED ACTION
This Office action is a reply to the amendment filed on 7/20/2026. Currently, claims 1-17 and 19 are pending. Claim 18 has been cancelled. No claims have been withdrawn. New claim 19 has been added.
Drawings
The drawings are objected to because of the following informalities:
Figs. 1-7, the hand-written reference characters and poor line quality renders part or all of the drawings illegible when reproduced. 37 CFR 1.84(l) (m) and (p)(1). 37 CFR 1.84(l) recites, “[a]ll drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.” Applicant is requested to submit replacement drawings that have darker, higher quality lines and reference characters. Preferably, the reference characters should be typed instead of being hand written.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-17 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, “the at least two separate packaging elements of the packed application specific flashing assembly include a first packaging element and a second packaging element collectively having all flashing members to flash the specific configuration of the at least two roof windows without any superfluous flashing member remaining in the first packaging element and the second packaging element after the at least two roof windows are flashed on all four sides of each of the at least two roof windows” was treated as new matter because this limitation was not adequately disclosed or described in applicant’s specification, drawings or claims. Applicant’s specification recites, “it is possible to reduce or eliminate scrapping of flashing members without causing any considerable increase in the number of items to be kept in stock” (specification [0008] as published). Applicant’s drawings illustrate various components intended to be placed in various packaging elements. However, applicant’s disclosure does not specify that the packaging elements are without any superfluous flashing members after flashing members are applied, as claimed. Further, it is not inherent from applicant’s disclosure that such packaging elements are without any superfluous flashing members after the windows are flashed. See also claim 9, which recites the same limitation as above, in addition to, “no flashing member remains in the first packaging element and the second packaging element obviating the need to scrap one or more superfluous flashing members”, in which the same rejection applies but is not repeated here for brevity.
The remainder of claims in this section are rejected by virtue of dependency upon a rejected base claim.
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 1-17 and 19 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 1, “all flashing members” is indefinite because it is unclear what the limitation requires, as the claim recites several different flashing members, including a first set and a second set of flashing members, each having a subset of flashing members. Which flashing members does applicant intend for the limitation to refer to in the claim? See also claim 9.
Claim 1, “any superfluous flashing member” is indefinite because it is unclear what the limitation requires, as the claim recites several different flashing members, including a first set and a second set of flashing members, each having a subset of flashing members. Which flashing members does applicant intend for the limitation to refer to in the claim? See also claim 9.
Claim 1, “a standard flashing assembly” is indefinite because “standard” is a relative term. The term “standard” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what a standard flashing assembly, as claimed requires or does not require. Applicant is requested to clarify the claim language. See also claim 9.
Claim 1, “an identical mid-section” is indefinite because it is unclear what the mid-section is required to be identical to in the claim, and thus the limitation lacks a point of reference. What is the mid-section identical to in the claim? See also claim 9.
The remainder of claims in this section are rejected by virtue of dependency upon a rejected base 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.
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) 1-5 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Velux BDX 4021 E (published in 2022) (‘Velux’).
Claim 1, Velux teaches a packed application specific flashing assembly having at least two separate packaging elements (shown below in screenshot from page 2)
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Screenshot from page 2 of Velux BDX 4021 E (published in 2022) (‘Velux’)
to form the packed application specific flashing assembly for a specific configuration of a group of roof windows comprising at least two roof windows mounted adjacent to each other in a sloped roof structure having a slope direction (shown below in Screenshot from page 1, note the slope of 15 to 90 degrees),
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Screenshot from page 1 of Velux BDX 4021 E (published in 2022) (‘Velux’)
where each of said at least two roof windows comprises a frame comprising a top frame member and a bottom frame member both extending horizontally in a mounted state of the roof window and two side frame members extending in the slope direction in the mounted state of the roof window (see Screenshot from page 1) (note that the windows and the roof are not positively recited and thus not required),
the at least two separate packaging elements of the packed application specific flashing assembly include a first packaging element (first packaging element selected from the packaging elements shown in Screenshot from page 2) and a second packaging element (second packaging element selected from the packaging elements shown in Screenshot from page 2) collectively having all flashing members to flash the specific configuration of the at least two roof windows (it is understood that two of the packaging elements have all the flashing members to flash the specific configuration of the at least two roof windows; Screenshots from pages 1-2) (note that the claim does not positively recite installing the flashing members on the roof), the first packaging element comprises a first set of flashing members (flashing members selected from the first packaging element shown in Screenshot from page 2) corresponding to a standard flashing assembly for a single roof window (shown in Screenshot from page 1; note that the claim is a comprising claim and that although the drawing shows two windows, the drawing satisfies the limitation of a single window, as exceedingly broadly claimed) (note that a single roof window is not positively recited and thus not required) and including one top flashing member configured for extending along the top frame member of the single roof window (note that the top flashing member is not required to be installed on the roof, but that one of the flashing members in Screenshots from pages 1-2 are suitable to extend along the top frame member of the single roof window), one bottom flashing member configured for extending along the bottom frame member of the single roof window (note that the bottom flashing member is not required to extend along the bottom frame member but that one of the flashing members in Screenshots from pages 1-2 are suitable to extend along the bottom frame member of the single roof window), and two side flashing members configured for extending along a corresponding side frame member of the single roof window (note that the two side members are not required to extend along the side frame members, but that two side flashing members shown in Screenshots from pages 1-2 are suitable to extend along a corresponding side frame member of the single roof window) having at least an identical mid-section (Screenshots from pages 1-2), and the second packaging element includes a second set of flashing members (flashing members selected from the second packaging element shown in Screenshot from page 2) including one middle gutter flashing member configured for extending between the at least two roof windows and two other flashing members (note that the claim does not require the gutter flashing member to be installed on the roof, but that one of the flashing members of Screenshots from pages 1-2 are suitable to extend between the at least two roof windows and two other flashing members).
Velux is silent as to the first and second packaging elements being without any superfluous flashing member remaining after the at least two roof windows are flashed on all four sides of each of the at least two roof windows.
However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to optimize the quantity and type of flashing members in the first and second packaging elements such that the first and second packaging elements are without any superfluous flashing member remaining after the at least two roof windows are flashed on all four sides of each of the at least two roof windows, with the reasonable expectation of success of including the exact number of flashing members needed for the installation, to lower material costs, to reduce packaging errors, to optimize inventory control, to permit package dimensions to be smaller, to minimize waste and to provide clear assembly validation with zero leftover parts to confirm that the user did not miss an installation step, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
All the claimed elements were known in the prior art as evidenced above, such a modification of grouping of components would have been well within the level of ordinary skill, using known methods with no change in their respective functions. Such a modification would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected.
Claim 2, as modified above, Velux teaches all the limitations of claim 1, and further teaches where the two other flashing members are side flashing members (two of the flashing members selected from the flashing members from Screenshot of page 2 as the two other flashing members as above are suitable to be side flashing members, as exceedingly broadly claimed; Screenshot from page 1).
Claim 3, as modified above, Velux teaches all the limitations of claim 2, and further teaches where the two other flashing members are a top flashing member and a bottom flashing (two of the flashing members selected from the flashing members from Screenshot 2 of page 2 as the two other flashing members as above are suitable to be a top flashing member and a bottom flashing member, as exceedingly broadly claimed; Screenshot from page 1).
Claim 4, Velux further teaches a third set of flashing members contained in a third packaging element (third flashing members in third packaging element from Screenshot of page 2) and comprising one middle gutter flashing member and two other flashing members (see Screenshot from pages 1-2 and see pages 5, 7 and 16, which illustrate additional flashing members used for additional windows).
Claim 5, Velux further teaches a fourth set of flashing members contained in a fourth packaging element (fourth flashing members in fourth packaging element from Screenshot of page 2) and comprising two middle gutter flashing members, one for use between roof windows mounted side by side and one for roof windows mounted one above another (see Screenshot from pages 1-2 and see pages 5, 7 and 16, which illustrate additional flashing members used for additional windows).
Claim 17, Velux further teaches another set of flashing members contained in a further packaging element (further flashing members in further packaging element from Screenshot of page 2) and comprising two middle gutter flashing members, one for use between roof windows mounted side by side and one for roof windows mounted one above another (see Screenshot from pages 1-2 and see pages 5, 7 and 16, which illustrate additional flashing members used for additional windows).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Velux BDX 4021 E (published in 2022) (‘Velux’) in view of EP 3231956 (‘EP ‘956’) (as provided by applicant).
Claim 6, Velux teaches all the limitations of claim 1 as above. Velux does not teach where the first set of flashing members further comprises a telescopic drainage gutter configured for extending along the top frame member of one roof window in an un-extended state and for extending along the top frame members of two roof windows in an extended state. However, EP ‘956 teaches a first set of flashing members comprising a telescopic drainage gutter (1a, 1b; Figs. 1-6) configured for extending along a top frame member of one roof window in an un-extended state and for extending along top frame members of two roof windows in an extended state (Figs. 1-6). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the first set of flashing members to comprise a telescopic drainage gutter configured for extending along the top frame member of one roof window in an un-extended state and for extending along the top frame members of two roof windows in an extended state, with the reasonable expectation of being able to install the telescopic drainage gutter along various lengths, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954). Claim 7, Velux teaches all the limitations of claim 4 as above. Velux does not teach where the third set of flashing members further comprises a drainage gutter. However, EP ‘956 teaches a set of flashing members comprising a drainage gutter (1a, 1b; Figs. 1-6). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the third set of flashing members to comprises a drainage gutter, with the reasonable expectation of success of using a known means to divert water outwardly away from the building to ensure that water does not track behind the wall of the building.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Velux BDX 4021 E (published in 2022) (‘Velux’) in view of EP 1485547 (‘EP ‘547’) (as provided by applicant).
Claim 8, Velux teaches all the limitations of claim 1 as above. Velux does not teach where a middle gutter flashing member comprises two components, each being configured for being arranged along a frame member of one of two adjacent roof windows, said frame members facing each other. However, EP ‘547 teaches a gutter flashing member comprising two components (Figs. 7a-7f) each being configured for being arranged along a frame member of one of two adjacent roof windows, said frame members facing each other (Figs. 7a-7f). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the packed flashing assembly such that a middle gutter flashing member comprises two components, each being configured for being arranged along a frame member of one of two adjacent roof windows, said frame members facing each other, with the reasonable expectation of success of being able to adjust the width (EP ‘547 specification), since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Velux BDX 4021 E (published in 2022) (‘Velux’) in view of Gale (US 5533667).
Claim 19, Velux teaches all the limitations of claim 1 as above. Velux does not teach the first and second packaging element being interconnected. However, Gale teaches first and second packaging elements being interconnected (Figs. 4-5 and 9-10). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the first and second packaging elements to be interconnected with the reasonable expectation of success of forming a separable modular container that permits two or more such individual packages to be removably joined together along a common side to improve efficiencies in shipping (Gale col. 1, lines 40-50).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Velux BDX 4021 E (published in 2022) (‘Velux’) in view of Flaherty (US 4669611).
Claim 19, Velux teaches all the limitations of claim 1 as above. Velux does not teach the first and second packaging element being interconnected. However, Flaherty teaches first and second packaging elements being interconnected (Fig. 1). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the first and second packaging elements to be interconnected with the reasonable expectation of success of grouping two or more packages together using known means, which is straightforward and relatively inexpensive (Flaherty col. 1, lines 40-60).
Allowable Subject Matter
Claims 9-16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, specifically Velux BDX 4021 E (published in 2022) (‘Velux’) does not teach or disclose, alone or in combination, all the elements and features of the claimed invention, including the steps of positioning, orientating and arranging the flashing members in the packaging assemblies and mounting the windows and flashing members around on the sloped roof, as claimed in independent claim 9. Claims 10-16 depend, directly or indirectly from claim 9. It would have been beyond the level of ordinary skill to combine or modify any of the cited prior art references of record to arrive at the claimed invention.
Response to Arguments
Applicant’s arguments, see pages marked 9-15, filed 7/20/2026, with respect to the following rejections have been fully considered and are persuasive:
Rejection of claim(s) 1-5, 9-13 and 17-18 under 35 U.S.C. 102(a)(1) as anticipated by Velux: Skylights – Roof Windows – Sun Tunnels – Blinds, published in 2011, ninety-six pages (‘Velux’) (as provided by applicant) or, in the alternative, under 35 U.S.C. 103 as obvious over Velux in view of Lehy (US 20170306610).
Rejection of claim(s) 6-7 and 14-15 under 35 U.S.C. 103 as being unpatentable over Velux: Skylights – Roof Windows – Sun Tunnels – Blinds, published in 2011, ninety-six pages (‘Velux’) (as provided by applicant) or, in the alternative, under 35 U.S.C. 103 as obvious over Velux in view of Lehy (US 20170306610) as above, and further in view of EP 3231956 (‘EP ‘956’) (as provided by applicant).
Rejection of claim(s) 8 and 16 under 35 U.S.C. 103 as being unpatentable over Velux: Skylights – Roof Windows – Sun Tunnels – Blinds, published in 2011, ninety-six pages (‘Velux’) (as provided by applicant) or, in the alternative, under 35 U.S.C. 103 as obvious over Velux in view of Lehy (US 20170306610) as above, and further in view of EP 1485547 (‘EP ‘547’) (as provided by applicant).
The above rejections have been withdrawn.
Objection to Drawings, specifically Figs. 1-7, due to the hand-written reference characters and poor line quality rendering part or all of the drawings illegible when reproduced.
Re applicant’s argument that the drawings are allegedly clear because the corresponding drawings in US Publication 20240279934 are allegedly clear, the examiner disagrees. The drawings in the US Publication are not clear. See annotated Fig. 2 shown below, pointing to some examples where clarity needs to be improved. Note that Fig. 2, which appears in a typed font is dark and crisp and thus is clear. The examiner recommends submitting replacement drawings with darker lines similar to the format of the label “Fig. 2”.
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Annotated Fig. 2 of the instant application (US 18/442,183)
Applicant’s arguments with respect to claim(s) 1-8 and 17 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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.
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 Mattei can be reached at 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635
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