DETAILED ACTION
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 Species 11, Figure 21 in the reply filed on 9/12/2025 is acknowledged. The traversal is on the ground(s) that the species of Figures 3, 4, 18, 19, and 20 are similar and not patentably distinct, and should also be examined with the species of elected Figure 21.
Upon review of the drawings and claims as amended, the restriction requirement between Figures 3, 4, 18, 19, 20, and 21 will be partially Withdrawn, and the Species of Figures 3, 4, 18, 19, 20, and 21 will be examined together as a group. Examiner notes that in view of the above noted partial withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claims 12-16 are withdrawn. Claims 7-11 and 17-22 will be examined hereafter.
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.
Claims 7, 9-11, 17, 19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Berger, Jr. (US 2005/0257901) (hereinafter Berger) in view of Berger, Jr. (US 6,062,293) (hereinafter ‘293).
Regarding claim 7, Berger discloses a garage door panel rail reinforcement device configured for a ship lap style garage door, the garage door panel rail reinforcement device comprising: a first upper surface disposed at a first height (See Figure 1 below); a second upper surface (See Figure 1 below) disposed at a second height (See Figure 1 below); a first vertical surface (See Figure 1 below) between the first upper surface and the second upper surface: a first bottom surface (See Figure 1 below); a first side (See Figure 1 below) disposed between the first upper surface and the first bottom surface, and joining the first upper surface and the first bottom surface: a second side (See Figure 1 below) disposed between the second upper surface and the first bottom surface, and joining the second upper surface and the first bottom surface; a second vertical surface joining the first bottom surface and the second bottom surface. Examiner notes that, although the first vertical surface includes a small gap, and therefore does not uninterruptedly join the first and second upper surfaces, Berger explicitly recites “Different embodiments may be made of the inventive concept of this invention. It is to be understood that all matter disclosed herein is to be interpreted merely as illustrative, and not in a limiting sense” (See paragraph [0031]). Additionally, ‘293 teaches that it is known in the art to configure a garage door panel rail reinforcement device that includes a continuous exterior surface (See Figure 4, element 41). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the garage door panel rail reinforcement device of Berger such that it included a continuous exterior surface (and therefore a first vertical surface joining the first upper surface and the second upper surface), as taught by ‘293, since this would provide improved structural rigidity, which would be desirable in particular applications, and since a modification of this nature would not be critical to the design and would have produced no unexpected results. Additionally, all the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, or substituted one known element for another, using known methods with no change in their respective functions. Such a combination or substitution 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. MPEP 2143. Further, Berger does not explicitly disclose a first detent disposed on the first side and a second detent disposed on the second side. Berger does however, disclose use of detents (see at least elements 155, 159, 165) for the purpose of providing structural reinforcement. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second sides of garage door panel rail reinforcement device of Berger such that they include detents, similar to the other detents disclosed by Berger, as this would provide an improved structural reinforcement for the first and second sides, which would be desirable for particular applications, and since a modification of this nature would not be critical to the design and would have produced no unexpected results. Additionally, all the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, or substituted one known element for another, using known methods with no change in their respective functions. Such a combination or substitution 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. MPEP 2143
[AltContent: arrow][AltContent: textbox (Figure 1: Berger, Jr. (US 2005/0257901), Figure 5 (Examiner Amened) )]
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Regarding claim 9, Berger discloses one or more openings (See Figure 1 above). Examiner notes that claim 9 is considered to be a product-by-process claim (due to the limitation “comprising one or more extrusion openings”). Examiner notes that it has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Additionally, the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985). Further, Examiner notes that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the garage door panel rail reinforcement device using extrusion, since it is prima facie obvious to choose from a finite number of identified, predictable solutions with a reasonable expectation of results (MPEP 2143(E)).
Regarding claim 10, Berger does not explicitly disclose the material used in forming the garage door panel rail reinforcement device. ‘293, however, teaches that it is known in the art to manufacture a garage door panel rail reinforcement device such that the garage door panel rail reinforcement device is formed from one of metal, plastic, wood, or composite (See at least column 4, lines 11-20, “The same can be roll-formed out of steel, or break-formed out sheet steel, or extruded aluminum”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the garage door panel rail reinforcement device is formed from metal, since metal would be a logical and obvious material choice, due to the desirable material characteristics of metal for the purpose of Berger, and since the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also see In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)
Regarding claim 11, Berger does not explicitly disclose the manner in which the garage door panel rail reinforcement device is attached to the garage door panel. ‘293, however, teaches that it is known in the art to manufacture a garage door panel rail reinforcement device such that the garage door panel rail reinforcement device is attached to the garage door panel using a screw, a nut and bolt, a rivet, welding, brazing, or an adhesive (See abstract and column 1, lines 38-65, “Desirably, the reinforcing members are secured in place by means of cementaceous material”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an adhesive for the attachment of the garage door panel rail reinforcement device of Berger since adhesive would help to ensure that the garage door panel rail reinforcement device of Berger remains properly seated and continues to function as intended. Examiner additionally notes that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use “a screw, a nut and bolt, a rivet, welding, brazing, or an adhesive” for the purpose of attaching the garage door panel rail reinforcement device to the garage door, since it is prima facie obvious to choose from a finite number of identified, predictable solutions with a reasonable expectation of results (MPEP 2143(E)), and the use of well-known fastening devices for the purpose of fastening two structural elements is considered to be a predictable solution with a reasonable expectation of results.
Regarding claim 17, Berger discloses a first body member formed of the first upper surface, the first bottom surface, and the first side (See Figure 1 above, Examiner notes that the term “body member” is very broad); and a second body member formed of the second upper surface, the second bottom surface, and the second side and an interior side (See Figure 1 above); wherein the first body member is connected to the second body member by an extension of the second upper surface and an extension of the first bottom surface (Examiner notes that the fist and second bottom surfaces are connected, and the first and second upper surfaces would be connected as modified for claim 7 above).
Regarding claim 19, Berger discloses a third detent disposed on the interior side (See Figure 1 above).
Regarding claim 22, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the garage door panel rail reinforcement device of Berger, as modified for claim 7 above, such that the first detent is disposed substantially in the middle of the first side, the second detent is disposed on substantially in the middle of the second side, or a combination thereof, since the middle portion of the first and second sides would be a logical and obvious location for the detent, and since Berger already discloses positioning a detent in the middle of a side (Figure 4, elements 155 and 165), and since positioning the first detent substantially in the middle of the first side and positioning the second detent substantially in the middle of the second side would function as intended for the purpose of Berger. Additionally, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the art in this way, since it has been held that changes in shape, form, or configuration of components of a device are obvious absent persuasive evidence that the particular shape, form, or configuration would be found significant to a person of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Such modifications are not critical to the design and would have produced no unexpected results. In addition, the prior art element performs the function specified in the claim in substantially the same manner as the function is performed by the corresponding element described in the specification, and such structure are considered art recognized equivalent structures and would have functioned at least equally as well. It would have been obvious to modify the device in this way for the purpose of providing an alternative arrangement that would have functioned at least equally as well.
Claims 7, 9-11, 17-19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Berger, Jr. (US 2005/0257901) (hereinafter Berger) in view of Berger, Jr. (US 6,062,293) (hereinafter ‘293).
Regarding claim 7, Berger discloses a garage door panel rail reinforcement device configured for a ship lap style garage door, the garage door panel rail reinforcement device comprising: a first upper surface disposed at a first height (See Figure 2 below); a second upper surface (See Figure 2 below) disposed at a second height (See Figure 2 below); a first vertical surface (See Figure 2 below) joining the first upper surface and the second upper surface: a first bottom surface (See Figure 2 below); a first side (See Figure 2 below) disposed between the first upper surface and the first bottom surface, and joining the first upper surface and the first bottom surface: a second side (See Figure 2 below) disposed between the second upper surface and the first bottom surface, and joining the second upper surface and the first bottom surface; a second vertical surface between the first bottom surface and the second bottom surface. Examiner notes that, although the second vertical surface includes a small gap, and therefore does not uninterruptedly join the first and second bottom surfaces, Berger explicitly recites “Different embodiments may be made of the inventive concept of this invention. It is to be understood that all matter disclosed herein is to be interpreted merely as illustrative, and not in a limiting sense” (See paragraph [0031]). Additionally, ‘293 teaches that it is known in the art to configure a garage door panel rail reinforcement device that includes a continuous exterior surface (See Figure 4, element 41). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the garage door panel rail reinforcement device of Berger such that it included a continuous exterior surface (and therefore a second vertical surface joining the first bottom surface and the second bottom surface), as taught by ‘293, since this would provide improved structural rigidity, which would be desirable in particular applications, and since a modification of this nature would not be critical to the design and would have produced no unexpected results. Additionally, all the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, or substituted one known element for another, using known methods with no change in their respective functions. Such a combination or substitution 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. MPEP 2143
Further, Berger does not explicitly disclose a first detent disposed on the first side and a second detent disposed on the second side. Berger does however, disclose use of detents (see at least elements 155, 159, 165) for the purpose of providing structural reinforcement. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second sides of garage door panel rail reinforcement device of Berger such that they include detents, similar to the other detents disclosed by Berger, as this would provide an improved structural reinforcement for the first and second sides, which would be desirable for particular applications, and since a modification of this nature would not be critical to the design and would have produced no unexpected results. Additionally, all the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, or substituted one known element for another, using known methods with no change in their respective functions. Such a combination or substitution 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. MPEP 2143
[AltContent: textbox (Figure 2: Berger, Jr. (US 2005/0257901), Figure 5 (Examiner Amened) )][AltContent: arrow]
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Regarding claim 9, Berger discloses one or more openings (See Figure 2 above). Examiner notes that claim 9 is considered to be a product-by-process claim (due to the limitation “comprising one or more extrusion openings”). Examiner notes that it has been held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Additionally, the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985). Further, Examiner notes that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the garage door panel rail reinforcement device using extrusion, since it is prima facie obvious to choose from a finite number of identified, predictable solutions with a reasonable expectation of results (MPEP 2143(E)).
Regarding claim 10, Berger does not explicitly disclose the material used in forming the garage door panel rail reinforcement device. ‘293, however, teaches that it is known in the art to manufacture a garage door panel rail reinforcement device such that the garage door panel rail reinforcement device is formed from one of metal, plastic, wood, or composite (See at least column 4, lines 11-20, “The same can be roll-formed out of steel, or break-formed out sheet steel, or extruded aluminum”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the garage door panel rail reinforcement device is formed from metal, since metal would be a logical and obvious material choice, due to the desirable material characteristics of metal for the purpose of Berger, and since the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also see In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)
Regarding claim 11, Berger does not explicitly disclose the manner in which the garage door panel rail reinforcement device is attached to the garage door panel. ‘293, however, teaches that it is known in the art to manufacture a garage door panel rail reinforcement device such that the garage door panel rail reinforcement device is attached to the garage door panel using a screw, a nut and bolt, a rivet, welding, brazing, or an adhesive (See abstract and column 1, lines 38-65, “Desirably, the reinforcing members are secured in place by means of cementaceous material”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an adhesive for the attachment of the garage door panel rail reinforcement device of Berger since adhesive would help to ensure that the garage door panel rail reinforcement device of Berger remains properly seated and continues to function as intended. Examiner additionally notes that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use “a screw, a nut and bolt, a rivet, welding, brazing, or an adhesive” for the purpose of attaching the garage door panel rail reinforcement device to the garage door, since it is prima facie obvious to choose from a finite number of identified, predictable solutions with a reasonable expectation of results (MPEP 2143(E)), and the use of well-known fastening devices for the purpose of fastening two structural elements is considered to be a predictable solution with a reasonable expectation of results.
Regarding claim 17, Berger discloses a first body member formed of the first upper surface, the first bottom surface, and the first side (See Figure 2 above); and a second body member formed of the second upper surface, the second bottom surface, and the second side and an interior side (See Figure 2 above); wherein the first body member is connected to the second body member by an extension of the second upper surface and an extension of the first bottom surface (Examiner notes that the fist and second upper surfaces are connected, and the first and second bottom surfaces would be connected as modified for claim 7 above).
Regarding claim 18, Berger discloses wherein the extension of the first bottom surface is at substantially a 45-degree angle to the first bottom surface (See Figure 2 above)
Regarding claim 19, Berger discloses a third detent disposed on the interior side (See Figure 2 above).
Regarding claim 22, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the garage door panel rail reinforcement device of Berger, as modified for claim 7 above, such that the first detent is disposed substantially in the middle of the first side, the second detent is disposed on substantially in the middle of the second side, or a combination thereof, since the middle portion of the first and second sides would be a logical and obvious location for the detent, and since Berger already discloses positioning a detent in the middle of a side (Figure 4, elements 155 and 165), and since positioning the first detent substantially in the middle of the first side and positioning the second detent substantially in the middle of the second side would function as intended for the purpose of Berger. Additionally, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the art in this way, since it has been held that changes in shape, form, or configuration of components of a device are obvious absent persuasive evidence that the particular shape, form, or configuration would be found significant to a person of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Such modifications are not critical to the design and would have produced no unexpected results. In addition, the prior art element performs the function specified in the claim in substantially the same manner as the function is performed by the corresponding element described in the specification, and such structure are considered art recognized equivalent structures and would have functioned at least equally as well. It would have been obvious to modify the device in this way for the purpose of providing an alternative arrangement that would have functioned at least equally as well.
Allowable Subject Matter
Claims 8 and 19-21 are 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN B REPHANN whose telephone number is (571)270-7318. The examiner can normally be reached Monday-Friday 8:00am-4:30pm.
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/JUSTIN B REPHANN/Examiner, Art Unit 3634