DETAILED ACTION
This Office action follows the Restriction Requirement filed on 11/28/2025, and is responsive to applicant’s reply filed on 1/23/2026, which includes claim amendments. Currently, claims 1-18 are pending. No claims have been withdrawn, cancelled or added.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-8 and 17-18) in the reply filed on 1/23/2026 is acknowledged.
Claims 9-16 have been amended to incorporate the same packaging configuration for the flashing members, as recited in claims 1-8 and 17-18. Thus, the restriction requirement between Invention I and Invention II is hereby withdrawn.
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.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of the following informalities:
the abstract recites the phrase, “is disclosed” (line 3), which is already implied. This objection can be overcome by deleting the phrase, “is disclosed”.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 9 and 12-13 are objected to because of the following informalities:
Claims 9 and 12-13, recitation of “the step of” (claim 9, second page, line 3) and “the further steps of” (claims 12 and 13) is objected to because the claims are method claims and it is already implied that the recitations are steps. This objection can be overcome by deleting “the step of” and “the further steps of”. If applicant insists on reciting “steps”, applicant should recite, “a step of” (claim 9) and “further steps of” (claims 12 and 13), respectively.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “packaging elements” throughout the claims.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-18 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.
Claim 1, “a first set of flashing members including one top flashing member, one bottom flashing member, and two side flashing members” and “a second set of flashing members including one middle gutter flashing member and two other flashing members” is indefinite because the claim previously recites a plurality of flashing elements and it is unclear whether the recited flashing elements are referring to the previously recited flashing elements or different/additional flashing elements. As currently recited, the elements are recited twice and thus are drawn to a double inclusion. Applicant is requested to clarify the claim language. The same rejection applies to claim 18, which is not repeated here for brevity.
Claim 8, “a middle gutter flashing member” is indefinite because the limitation lacks antecedent basis. Note that claim 1 previously recites a middle gutter flashing member. It is unclear whether the limitation is referring to the previously recited middle gutter flashing member, or a different/additional one. As currently written, the limitation in claim 8 is a double inclusion.
Claim 9, “a first set of flashing elements including one top flashing member, one bottom flashing member, and two side flashing members” and “a second set of flashing elements including one middle gutter flashing member and two other flashing members” (second page of the claim, lines 4-8), “a first roof window”, “at least three flashing members of the a first set of flashing members” (second page of the claim, lines 9-11), and “a second roof window”, “at least one other flashing member of the first set of flashing members” and “the one middle gutter flashing member and the two other flashing members of the second set of flashing members” are indefinite because the limitations refer to claim elements that were previously recited in the claim. It is unclear whether the limitations are referring to the previously recited items, or different/additional items. Further note that “first set of flashing members” and “second set of flashing members” appear to be referring to the previously recited first set of flashing elements and second set of flashing elements, respectively.
Claim 18, “wherein the second packaging element omits a flashing member corresponding to a displaced flashing member of the first set of flashing members that the one middle gutter flashing member will displace when the one middle gutter flashing member is mounted at a first roof window allowing the displaced flashing member of the first set of flashing members when installed to be mounted at a corresponding portion of a second roof window to avoid scrapping of the displaced flashing member of the first set of flashing members” is indefinite because it is unclear what “displaced flashing member” requires and the limitation is partially written in future tense. Does applicant intend for “displaced flashing member” to mean a flashing member that is removed from an original installation? Further note that the limitation, “will displace” is written in future tense and it is unclear whether the limitations that follow are required by the claim or are intended use language. Applicant is requested to clarify.
The remaining claims in this section are rejected by virtue of dependency on a rejected base claim.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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) 1-5, 9-13 and 17-18 is/are rejected 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).
Claim 1, Velux teaches a packed flashing assembly (see pages marked 3.10 to 3.16; note that various configurations or sets are provided) for use with 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, 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 (note that the claim is drawn to a packed flashing assembly and since the group of roof windows and the sloped roof structure are not positively recited, the group of roof windows and the sloped roof structure are not required), where said packed flashing assembly comprises packaging elements (under the broadest reasonable interpretation of “packaging elements”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, which was treated as having packaging elements under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed) and at least one top flashing member (any of the top flashing members shown on pages 3.11 to 3.16, such as 0021 top or 0002E top; page marked 3.16) configured for extending along a top frame member (the top flashing members, such as 0021 top or 0002E top are each suitable to meet the intended use of extending along a top frame member, as the flashing shown on page 3.16 is installed on skylights or roof windows; page 3.16), at least one bottom flashing member (any of the bottom flashing members shown on pages 3.11 to 3.16, such as 0021 bottom of 0002E bottom; page 3.16) configured for extending along a bottom frame member (the bottom flashing members, such as 0021 bottom of 0002E bottom are each is suitable to meet the intended use of extending along a bottom frame member, as the flashing shown on page 3.16 is installed on skylights or roof windows; page 3.16), at least two side flashing members (any of the two side flashing members on pages 3.11 to 3.16, such as 0002 side, 0004 side, 0005 side or 0006 side) each configured for extending along a side frame member (the side flashing members, such as 0002 side, 0004 side, 0005 side or 0006 side are each suitable to meet the intended use of extending along a side frame member, as the flashing shown on page 3.16 is installed on skylights or roof windows; page 3.16), and at least one middle gutter flashing member (any of the middle gutter flashing members shown on pages 3.11 to 3.16, such as 0004 middle, 0005 middle, 0005 middle, 0006 middle; page 3.16) configured for extending between roof windows (the middle gutter flashing members, such as 0004 middle, 0005 middle, 0005 middle, 0006 middle are each suitable to meet the intended use of extending between roof windows, as the flashing shown on page 3.16 is installed on skylights or roof windows; page 3.16),
the packed flashing assembly comprises a first set of flashing members (selected from the sets shown on pages marked 3.11 to 3.16 and suitable for use with each other) including one top flashing member (one of the top flashing members on pages 3.11 to 3.16), one bottom flashing member (one of the bottom flashing members on pages 3.11 to 3.16), and two side flashing members (one of the bottom flashing members on pages 3.11 to 3.16) contained in a first packaging element (under the broadest reasonable interpretation of “first packaging element”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, and it is understood that a first set of components or a first kit is placed in a first packaging element, under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed), and a second set of flashing members (selected from the sets shown on pages marked 3.11 to 3.16 and suitable for use with each other) including one middle gutter flashing member (one of the middle gutter flashing members on pages 3.11 to 3.16) and two other flashing members (two other flashing members on pages 3.11 to 3.16) contained in a second packaging element (under the broadest reasonable interpretation of “second packaging element”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, and it is understood that a second set of components or a second kit is placed in a second packaging element, under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed).
In the event that applicant disagrees that Velux’s flashing members are placed in first and second packaging elements, the examiner takes the position that placement of such flashing members in first and second packaging elements would have been well within the level of ordinary skill.
Lehy teaches methods and systems for modular buildings in the form of a kit, comprising components including flashing, the components are packaged in several packaging elements, including a first packaging element and a second packaging element (see packaging elements shown in Fig. 3, including first and second packaging elements of, for example additional supplies 1120). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to arrange the packed flashing assembly in a first set of flashing members including one top flashing member, one bottom flashing member, and two side flashing members contained in a first packaging element, and a second set of flashing members including one middle gutter flashing member and two other flashing members contained in a second packaging element, with the reasonable expectation of success of better organizing the kit of the packed flashing assembly, increasing product protection for storage and transporting, enhancing organization of inventory control, reducing risk of losing or misplacing components, optimizing handling and space utilization of smaller, more manageable packaging elements, and/or branding and customer experience, including more organized components that have a professional appearance upon arrival, and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim 2, Velux further teaches where the two other flashing members are side flashing members (two side flashing members selected from the side flashing members on pages 3.11 to 3.16, such as 0002, 0004, 0005, 0006; page 3.16).
Claim 3, Velux further teaches where the two other flashing members are a top flashing member and a bottom flashing (selected from the top and bottom flashing members on pages 3.11 to 3.16, such as 0021, 002E; page 3.16).
Claim 4, Velux and Lehy teaches all the limitations of claim 1, and further teaches a third set of flashing members (Velux; selected from the flashing members on pages 3.11 to 3.16, such as 0002, 0004, 0005, 0006, 0002E and 0021; page 3.16) contained in a third packaging element (Velux; under the broadest reasonable interpretation of “third packaging element”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, and it is understood that a third set of components or a third kit is placed in a third packaging element, under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed; Lehy Fig. 3 additional components 1120) and comprising one middle gutter flashing member (Velux; middle gutter flashing member on pages 3.11 to 3.16, such as one of the middle gutter flashing members 0004, 005, 0006; page 3.16) and two other flashing members (Velux; selected from the flashing members on pages 3.11 to 3.16, such as 0002, 0021, 0004, 0006; page 3.16).
Claim 5, Velux and Lehy teaches all the limitations of claim 4, and further teaches a fourth set of flashing members (Velux; selected from the flashing members on pages 3.11 to 3.16, such as 0002, 0004, 0005, 0006, 0002E and 0021; page 3.16) contained in a fourth packaging element (Velux; under the broadest reasonable interpretation of “fourth packaging element”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, and it is understood that a fourth set of components or a fourth kit is placed in a fourth packaging element, under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed; Lehy Fig. 3 additional components 1120) and comprising two middle gutter flashing members (Velux; middle gutter flashing member on pages 3.11 to 3.16, such as one of the middle gutter flashing members 0004, 005, 0006; page 3.16), one for use between roof windows mounted side by side (such as middle gutter flashing members 0002, 0004, 0005; page 3.16) and one for roof windows mounted one above another (such as middle gutter flashing members 0004, 0005, 0006; page 3.16).
Claim 9, Velux teaches a method for weatherproofing 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 (see flashing kits on pages marked 3.10 to 3.16, which are used for weatherproofing a group of roof windows or skylights, such as the roof windows or skylights shown throughout Velux, comprising at least two of the roof windows or skylights, which can be mounted adjacent to each other in a sloped roof structure having a slope direction; 3.10-3.16), where each of said at least two roof windows comprises a frame (frame of the roof windows shown throughout Velux) comprising a top frame member (top frame member shown throughout Velux) and a bottom frame member (bottom frame member shown throughout Velux) both extending horizontally (the top and bottom frame members of the roof windows extend horizontally) and two side frame members extending in the slope direction (two side frame members of the roof window that each extend in the slope direction of the roof when installed), where a flashing assembly (selected from among the flashing kits shown on pages 3.10 to 3.16) is mounted with at least one top flashing member (selected from one of the top flashing members on pages 3.10 to 3.16, such as 0021, 0002E on 3.16) extending along a top frame member (it is understood that the top flashing member extends along a top frame member when installed; 3.10 to 3.26), at least one bottom flashing member selected from one of the top flashing members on pages 3.10 to 3.16, such as 0021, 0002E on 3.16) extending along a bottom frame member (it is understood that the bottom flashing member extends along a bottom frame member when installed; 3.10 to 3.26), at least two side flashing members (selected from one of the side flashing members on pages 3.10 to 3.16, such as 0004, 0005, 0006 on 3.16) extending along a side frame member (it is understood that the side flashing members extend along a side frame member when installed; 3.10 to 3.26), and at least one middle gutter flashing member (selected from one middle gutter flashing member on pages 3.10 to 3.16, such as 0004, 0005, 0006 on 3.16) extending between roof windows (it is understood that the at least one middle gutter flashing member extends between roof windows when installed; 3.10 to 3.26), comprising the steps of:
providing a packaging assembly (under the broadest reasonable interpretation of “packaging assembly”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, which was treated as having a packaging assembly under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed) including a first packaging element and a second packaging element (under the broadest reasonable interpretation, the sets of components or kits are understood to have first and second packaging elements, as exceedingly broadly claimed), said first packaging element containing a first set of flashing elements including one top flashing member (selected from among the top flashing members shown on pages 3.10-3.16, such as 0021, 0002E; page 3.16), one bottom flashing member (selected from among the bottom flashing members shown on pages 3.10-3.16, such as 0021, 0002E; page 3.16), and two side flashing members (selected from one of the side flashing members on pages 3.10 to 3.16, such as 0004, 0005, 0006 on 3.16) and the second packaging element containing a second set of flashing elements (selected from the flashing elements shown on pages 3.10-3.16) including one middle gutter flashing member (selected from one middle gutter flashing member on pages 3.10 to 3.16, such as 0004, 0005, 0006 on 3.16) and two other flashing members (selected from among other flashing members shown on pages 3.10-3.16),
mounting at a first roof window at least three flashing members of the a first set of flashing members (it is understood that at least three flashing members, selected from among the flashing members shown on pages 3.10-3.16 are mounted at a first roof window; for example, see layout shown in 3.16), and
mounting at a second roof window at least one other flashing member of the first set of flashing members and the one middle gutter flashing member and the two other flashing members of the second set of flashing members (it is understood that at least one other flashing member from the first set of flashing members and one middle gutter flashing member and the two other flashing members of the second set of flashing members, selected from among the respective flashing members shown on pages 3.10-3.16 are mounted at a second roof window; for example, see layout shown in 3.16).
In the event that applicant disagrees that Velux’s flashing members are placed in first and second packaging elements, the examiner takes the position that placement of such flashing members in first and second packaging elements would have been well within the level of ordinary skill.
Lehy teaches methods and systems for modular buildings in the form of a kit, comprising components including flashing, the components are packaged in several packaging elements, including a first packaging element and a second packaging element (see packaging elements shown in Fig. 3, including first and second packaging elements of, for example additional supplies 1120). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to arranged the flashing member in packaging by providing a packaging assembly including a first packaging element and a second packaging element, said first packaging element containing a first set of flashing elements including one top flashing member, one bottom flashing member, and two side flashing members and the second packaging element containing a second set of flashing elements including one middle gutter flashing member and two other flashing members, with the reasonable expectation of success of better organizing the kit of the packed flashing assembly, increasing product protection for storage and transporting, enhancing organization of inventory control, reducing risk of losing or misplacing components, optimizing handling and space utilization of smaller, more manageable packaging elements, and/or branding and customer experience, including more organized components that have a professional appearance upon arrival, and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim 10, Velux further teaches where the first and second roof windows are arranged one above the other in the slope direction and where the two other flashing members are side flashing members (see layout on page 3.16; see also layouts on pages 3.13 to 3.15).
Claim 11, Velux further teaches where the first and second roof windows are arranged side-by-side and where the two other flashing members are a top flashing member and a bottom flashing (see layout on page 3.16; see also layouts on pages 3.11, 3.12 and 3.15).
Claim 12, Velux and Lehy teach all the limitations of claim 9 as above, and further teaches providing the packaging assembly with a third packaging element which is a packaging element separate from the first packaging element and the second packaging element (Velux; under the broadest reasonable interpretation of “third packaging element”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, and it is understood that a third set of components or a third kit is placed in a third packaging element, under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed; Lehy Fig. 3 additional components 1120), where a third set of flashing members including one middle gutter flashing member (Velux; selected from the middle gutter flashing members on pages 3.10 to 3.16, such as 0004, 0005 or 0006; page 3.16) and two other flashing members are contained in the third packaging element of the packaging assembly (Velux; selected from other flashing members on pages 3.10 to 3.16; see Lehy packaging assembly comprising packaging elements 1120); and, mounting at a third roof window of the group of roof windows the third set of flashing members (Velux; see layout on page 3.16).
Claim 13, Velux and Lehy teach all the limitations of claim 12, and further teach providing the packaging assembly with a fourth packaging element which is a packaging element separate from the first packaging element, the second packaging element and the third packaging element (Velux; under the broadest reasonable interpretation of “fourth packaging element”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, and it is understood that a fourth set of components or a fourth kit is placed in a fourth packaging element, under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed; see also Lehy Fig. 3 additional components 1120 comprising a fourth packaging element), where a fourth set of flashing members including two middle gutter flashing members are contained in the fourth separate packaging element of the packaging assembly (Velux fourth set of flashing members including two middle gutter flashing members selected from the two middle gutter flashing members on pages 3.10 to 3.16, such as 0004, 0005, 0006; page 3.16); and, mounting at a fourth roof window of the group of roof windows one middle gutter flashing member from the fourth packaging element to extend between roof windows mounted side by side and the other middle gutter flashing member of the fourth packaging element to extend between roof windows mounted one above another (Velux; see layout on page 3.16; Lehy see packaging elements 1120; Fig. 3).
Claim 17, Velux and Lehy teaches all the limitations of claim 1, and further teaches a fourth set of flashing members (Velux; selected from the flashing members on pages 3.11 to 3.16, such as 0002, 0004, 0005, 0006, 0002E and 0021; page 3.16) contained in a fourth packaging element (Velux; under the broadest reasonable interpretation of “fourth packaging element”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, and it is understood that a fourth set of components or a fourth kit is placed in a fourth packaging element, under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed; Lehy Fig. 3 additional components 1120) and comprising two middle gutter flashing members (Velux; middle gutter flashing member on pages 3.11 to 3.16, such as one of the middle gutter flashing members 0004, 005, 0006; page 3.16), one for use between roof windows mounted side by side (such as middle gutter flashing members 0002, 0004, 0005; page 3.16) and one for roof windows mounted one above another (such as middle gutter flashing members 0004, 0005, 0006; page 3.16).
Claim 18, Velux teaches a packed flashing assembly (see pages marked 3.10 to 3.16; note that various configurations or sets are provided) for use with 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, where each of said at least two roof windows comprises a frame comprising a top frame member and a bottom frame member both extending transverse to the slope direction in the mounted state of the roof window and two side frame members extending in the slope direction in the mounted state of the roof window (note that the claim is drawn to a packed flashing assembly and since the group of roof windows and the sloped roof structure are not positively recited, the group of roof windows and the sloped roof structure are not required), where said packed flashing assembly comprises packaging elements (under the broadest reasonable interpretation of “packaging elements”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, which was treated as having packaging elements under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed) and at least one top flashing member (selected from the top flashing members on pages 3.10 to 3.16, such as top flashing members 0021 and 0002E on page 3.16) configured for extending along a top frame member (it is understood that the top flashing member is suitable to extend along a top frame member; page 3.16), at least one bottom flashing member (selected from the bottom flashing members on pages 3.10 to 3.16, such as bottom flashing members 0021 and 0002E on page 3.16) configured for extending along a bottom frame member (it is understood that the bottom flashing member is suitable to extend along a bottom frame member; page 3.16), at least two side flashing members (selected from the side flashing members on pages 3.10 to 3.16, such as side flashing members 0004, 0006 on page 3.16) each configured for extending along a side frame member (it is understood that the side flashing members are each suitable to extend along a side frame member; page 3.16), and at least one middle gutter flashing member (selected from the middle gutter flashing members on pages 3.10 to 3.16, such as middle gutter flashing members 0004, 0005, 0006 on page 3.16) configured for extending between roof windows (it is understood that the middle gutter flashing member is suitable to extend between roof windows; page 3.16),
the packed flashing assembly comprises a first packaging element (under the broadest reasonable interpretation of “first packaging element”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, and it is understood that a first set of components or a first kit is placed in a first packaging element, under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed) containing a first set of flashing members including one top flashing member, one bottom flashing member, and two side flashing members (selected from the flashing members on pages 3.10 to 3.16, including top flashing member selected from 0021, 0002E on page 3.16, one bottom flashing member selected from 0021, 0002E on page 3.16, two side flashing members selected from 0004 and 0006; page 3.16), and
the packed flashing assembly further comprises a second packaging element (under the broadest reasonable interpretation of “second packaging element”, Velux’s packed flashing assembly is in the form of a kit, “flashing kit” page marked 3.10, and it is understood that a second set of components or a second kit is placed in a second packaging element, under the plain meaning and in light of applicant’s specification, thus Velux meets the limitation, as exceedingly broadly claimed) containing a second set of flashing members including one middle gutter flashing member and two other flashing members contained in a second packaging element (selected from among the flashing members on pages 3.10 to 3.16, including one middle gutter flashing member selected from 0004, 0005 and 0006 on page 3.16, and two other flashing members, selected from the flashing members on page 3.16) wherein the second packaging element omits a flashing member corresponding to a displaced flashing member of the first set of flashing members that the one middle gutter flashing member will displace when the one middle gutter flashing member is mounted at a first roof window allowing the displaced flashing member of the first set of flashing members when installed to be mounted at a corresponding portion of a second roof window to avoid scrapping of the displaced flashing member of the first set of flashing members (it is understood that a corresponding packaging element will contain flashing members required to complete a flashing installation and will omit flashing members not needed for the flashing installation, as exceedingly broadly claimed; see page 3.16, where a flashing member between top left 0021 and 0002E is omitted such that instead of there being two flashing members 0004 between 0021 and 0002E, there is only one, as the other flashing member is omitted; pages. 3.10 to 3.16).
In the event that applicant disagrees that Velux’s flashing members are placed in first and second packaging elements, the examiner takes the position that placement of such flashing members in first and second packaging elements would have been well within the level of ordinary skill.
Lehy teaches methods and systems for modular buildings in the form of a kit, comprising components including flashing, the components are packaged in several packaging elements, including a first packaging element and a second packaging element (see packaging elements shown in Fig. 3, including first and second packaging elements of, for example additional supplies 1120). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to arrange the packed flashing assembly in a first set of flashing members including one top flashing member, one bottom flashing member, and two side flashing members contained in a first packaging element, and a second set of flashing members including one middle gutter flashing member and two other flashing members contained in a second packaging element, with the reasonable expectation of success of better organizing the kit of the packed flashing assembly, increasing product protection for storage and transporting, enhancing organization of inventory control, reducing risk of losing or misplacing components, optimizing handling and space utilization of smaller, more manageable packaging elements, and/or branding and customer experience, including more organized components that have a professional appearance upon arrival, and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
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) 6-7 and 14-15 is/are rejected 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).
Claim 6, Velux and Lehy teach 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 and Lehy teach 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 14, Velux and Lehy teach all the limitations of claim 19 as above. Velux does not teach where a telescopic drainage gutter belonging to the first set of flashing members is extended and mounted along the top frame members of two roof windows arranged side-by-side. However, EP ‘956 teaches a telescopic drainage gutter (1a, 1b; Figs. 1-6) belonging to a first set of flashing members is extended and mounted along top frame members of two roof windows arranged side-by-side (Fig. 6). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify method by incorporating a telescopic drainage gutter belonging to the first set of flashing members is extended and mounted along the top frame members of two roof windows arranged side-by-side, 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 15, Velux and Lehy teach all the limitations of claim 12 as above. Velux does not teach where a drainage gutter of the third set of flashing members is mounted along the top frame member of the third roof window of the group of roof windows. However, EP ‘956 teaches a drainage gutter (1a, 1b; Figs. 1-6) mounted along a top frame member of a roof window of a group of roof windows (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 method by incorporating a drainage gutter of the third set of flashing members being mounted along the top frame member of the third roof window of the group of roof windows, 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 and 16 is/are rejected 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).
Claim 8, Velux and Lehy teach 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 16, Velux and Lehy teach all the limitations of claim 9 as above. Velux does not teach where a middle gutter flashing member comprises two components, where one component is arranged along a frame member of one of two adjacent roof windows, and where the other component is then arranged along a frame member of the other of the two adjacent roof windows, said frame members facing each other. However, EP ‘547 teaches a gutter flashing member comprising two components (Figs. 7a-7f), where one component is arranged along a frame member of one of two adjacent roof windows, and where the other component is then arranged along a frame member of the other of the two adjacent roof windows, said frame members facing each other (Fig. 1 prior art figure shows it is known to have flashing between two windows, and Figs. 7a-7f show the embodiment of the invention having the two components forming a ”combined gutter flashing”; specification; 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 method such that a middle gutter flashing member comprises two components, where one component is arranged along a frame member of one of two adjacent roof windows, and where the other component is then arranged along a frame member of the other of the two adjacent roof windows, said frame members facing each other, 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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635