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 .
Election/Restrictions
Applicant's election with traverse of Group I (Claims 1-4) in the reply filed on 4/14/2026 is acknowledged. The traversal is not persuasive because applicant failed to provide any grounds or arguments in support of the traverse.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bechtel (U.S. Patent Publication No. 2022/0297469).
Regarding Claim 1, Bechtel teaches a metal sheet screw position template (Fig. 2, 10), comprising:
a horizontal alignment hole (Fig. 2, 26) to indicate a proper horizontal screw position ([0032]: the proper positioning of the tool relative to the workpiece in the longitudinal direction…);
a vertical alignment hole (Fig. 5, 31a) to indicate a proper vertical screw position ([0003]: drilling one or more holes through the panels to accommodate the passage of threaded fasteners therethrough, and the like.) ([0028]: The housing 41 of the operation-performing device 40 is then moved through the opening 31a or the body until the housing 41 is located in a desired location relative to the bod of the tail portion 30.) (Fig. 2, a vertical direction aligns with a direction of the tail portion 30); and
a divot (Fig. 2, 35a) designed to receive a metal sheet rib (Fig. 2, 102) ([0031]).
Examiner notes that the claim language such as “designed to receive a metal rib” is a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the structure of Bechtel’ template is clearly capable of performing the intended use. (see MPEP 2114)
Regarding Claim 3, Bechtel teaches the metal sheet screw position template of claim 1 further comprising a handle (Fig. 1, 30) for carrying said metal sheet screw position template (Fig. 1, the tail portion (30) have a hat cross-section that would be ideal for holding with a hand.).
Examiner notes that the claim language such as “for carrying said metal sheet screw position template” is a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the structure of Bechtel’ tail portion (30) is clearly capable of performing the intended use. (see MPEP 2114)
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bechtel (U.S. Patent Publication No. 2022/0297469) in view of Brewington (U.S. Patent Publication No. 2006/0133902).
Regarding Claim 2, Bechtel teaches the metal sheet screw position template of claim 1, but does not teach further comprising a magnet for firmly attaching a metal sheet to said metal sheet screw position template.
Examiner takes official notice that it is old and well known in the art to make the corrugated panels commonly used in a structure such as roof and wall panels in building (Bechtel [0003]) using a metal. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the corrugated panels of Bechtel with a metal since the metal is relatively light, inexpensive, strong, durable and weather resistant.
Brewington teaches a magnet (Fig. 1, 3) for firmly attaching a door jamb to said a drilling template (Fig. 1, 1) ([0005]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide one or more magnets to the metal sheet screw position template in order to firmly attach the metal sheet screw position template of Bechtel to the corrugated panels made of metal.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Taylor (U.S. Patent Publication No. 2022/0127865) teaches divots (Fig. 2A, 50), however does not teach a horizontal alignment hole and a vertical alignment hole.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN S YOO whose telephone number is (571)270-7141. The examiner can normally be reached 9AM-5PM.
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, SUNIL SINGH can be reached at (571) 272-3460. 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.
/JUN S YOO/Primary Examiner, Art Unit 3726 7/29/2026
Prosecution Insights