Notice of Pre-AIA or AIA Status
This is a first office action on the merits for application serail number 18/505,482 filed 11/09/23. Claims 1-20 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The information disclosure statements (IDS) submitted on 2/26/24 and 5/09/24 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
A third party submission was filed 4/13/25 and has been considered by the examiner.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed materials of the flexible poles (See MPEP 608.02 IX), the tapered cross section, the solar panel, the battery, the LED lighting and a frame providing support for each base must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Any detail added that is not clearly supported with be considered new matter.
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.
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 7 and 18 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.
There is an adequate written description of an embodiment that has a cord connecting the sail to the end cap of a pole wherein the sail is in a cantilevered position. While figure 8C shows a cantilevered embodiment the is no cord attaching the sail to an end cap and even if there were the sail would not extend outwardly cantilevered but rather would just hang/sag. By definition a cantilevered sail would be supported only at one end.
There is an inadequate written description of the frame built to provide support for each base. Figure 6 shows a frame member 60 but no frame and certainly no frame providing support to any base. Paragraph [0045] describes a frame for supporting the base(s) but without any sufficient detail how the frame is constructed or supports the base(s).
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 4, 12, 17 and 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.
It is not clear what the metes and bounds are of “a tapered cross-section throughout the length(s)”. Is applicant attempting to recite the poles have a continuous taper from end to the other or that the cross-section has a tapered shaped throughout the length of the poles, for example as in a tear drop cross section? The specification and figures offer no guidance as to what intended the metes and bound of this limitation are.
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.
Claims 1, 8, 11 and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent 4,164,233 to McAndrew.
McAndrew provides system for covering a car, which inherently provides shade, comprised of flexible poles 6/7 of circular cross section (figures) and comprised of fiberglass (col. 2, lines 21-25), having hooks or “end caps” 8/9 at the distal end and each connected to a base 14 at a proximal end. A first cord 40 connects a first end of a waterproof cover or “sail” 37 to a first pole 6 and a second cord 41 attaches a second end to a second pole 7. The bases are respectively fixed to car bumpers 3/4 or “supporting surfaces”.
With respect to claim 16, fiberglass is a reinforced thermoset composite.
Fiberglass (more accurately called Fiberglass Reinforced Plastic or FRP) is a composite material made from glass fibers embedded in a thermosetting resin. The thermoset resin undergoes a chemical process to become a rigid, solid material that permanently holds its shape and cannot be re-melted or reshaped, which gives fiberglass its durable and stable properties.
With respect to claim 18 the car inherently has a frame.
Claims 1, 8, 11, 12, 15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent 11,156,012 to Graham.
Graham provides a system for shading (Fig.6) comprised of telescoping poles 50 comprised of materials that are inherently flexible (col.5, lns. 15-23). The poles are connected to a base 10 at their proximal ends and having an end cap at their distal ends provided with a grommet or eyelet (figures) through which an attachment device 80 which may be a cord (col. 11, ln. 22) attaches a shade 20 or “sail”.
With respect to claims 12 and 17, the stepped telescopic sections meet the limitation of tapered throughout the length. Alternatively, see col. 5, lns. 20-23, which recites that the poles may have any geometric cross-sectional shape or which triangular would meet a tapered cross-section as best understood. Further, col. 5, line 17 recites stainless steel.
Claims 1, 5, 7, 8 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2017/0321426 to Greer.
Greer provides a shade system comprised of a PVC post 14 which is inherently flexible, an end cap having a aperture for receipt of cord attached to a grommet of canopy or “sail” 16. The sail supported in a cantilevered fashion (Fig.2). The proximal end attached to a base (Fig. 3).
With respect to claims 5 and 13, see PV or solar cells 72 to charge batteries [0084].
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 2, 3, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 4,164,233 to McAndrew.
Mc.Andrew provides each of the elements of the claims except for specifying the pole(s) are comprised of an unsaturated polyester resin [cls. 2, 9] or comprised of a unidirectional fiberglass rod with a thermoplastic veil [cls. 3, 10].
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to have selected poles comprised of an unsaturated polyester resin or comprised of a unidirectional fiberglass rod with a thermoplastic veil, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). The claimed materials have inherent material properties which would lend themselves as suitable for providing the flexible poles of McAndrew and a person with ordinary skill has good reason to pursue known options within his or her technical grasp. There would have been no unexpected or unpredictable results obtained in forming poles comprising the claimed materials.
Claims 2-4, 9, 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 11,156,012 to Graham.
Graham provides each of the elements of the claims except for specifying the pole(s) are comprised of an unsaturated polyester resin [cls. 2, 9, 16] or comprised of a unidirectional fiberglass rod with a thermoplastic veil [cls. 3, 10, 16].
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to have selected poles comprised of an unsaturated polyester resin or comprised of a unidirectional fiberglass rod with a thermoplastic veil, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). The claimed materials have inherent material properties which would lend themselves as suitable for providing support posts of Graham and a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Graham suggests the posts may be comprised of one or more of many materials known in the art, including stainless steel or other metal with or without a plastic or other polymer coating, plastic with or without a polymer coating or similar light weight and sturdy materials. There would have been no unexpected or unpredictable results obtained in forming poles comprising the claimed materials.
Claims 5, 6, 13, 14, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 4,164,233 to McAndrew in view of U.S. 2008/0029141 to Grand Pre et al.
McAndrew provides each of the elements of the claims as noted above except for providing the shade or sail with a solar panel connected to a battery [cls. 5, 13, 19 ] and LED lighting [cls. 6, 14, 20 ].
Grand Pre teaches that at the time of the effective filing date of the invention it was known to provide a vehicle shade with an LED lighting system connected to a battery powered by a solar panel [0004, 0031].
It would have been obvious at the time of the effective filing date of the invention to one having ordinary skill in the art that the system of the McAndrew would have been provided with a solar panel, battery and LED lighting as taught by Grand Pre to providing powered by a renewable power source.
Moreover, all the claimed elements are known in the prior art and one skilled in the art would have combined the elements at the time of the effective filing date of the invention as claimed by known methods with a reasonable expectation of success with no change to their respective functions, and the combination would have yielded predictable results to one having ordinary skill in the art of providing lighting powered by a renewable power source to the system of McAndrew.
Claims 5, 6, 13, 14, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 4,164,233 to McAndrew in view of U.S. 2008/0029141 to Grand Pre et al.
Graham provides each of the elements of the claims as noted above except for providing the shade or sail 20 with a solar panel connected to a battery [cls. 5, 13, 19 ] and LED lighting [cls. 6, 14, 20 ].
Grand Pre teaches that at the time of the effective filing date of the invention it was known to provide a vehicle shade with an LED lighting system connected to a battery powered by a solar panel [0004, 0031].
It would have been obvious at the time of the effective filing date of the invention to one having ordinary skill in the art that the system of the Graham would have been provided with a solar panel, battery and LED lighting as taught by Grand Pre to providing powered by a renewable power source.
Moreover, all the claimed elements are known in the prior art and one skilled in the art would have combined the elements at the time of the effective filing date of the invention as claimed by known methods with a reasonable expectation of success with no change to their respective functions, and the combination would have yielded predictable results to one having ordinary skill in the art of providing lighting powered by a renewable power source to the system of Graham.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Note:
The various flexible pole 20 materials disclosed in U.S. Patent 4,750,508 to Tatoian used to support a sail 14 via cords 42. Tatoian provides no distal end caps.
WO 2007/051921 to Riera applied as an X reference in the search report mailed 3/14/25 in corresponding PCT/US23/79230. Riera has not been applied to avoid undue multiple rejections as it adds nothing that has not already been provided.
U.S. Patent 5,778,613 to Thompson attaches a panel 16 or “sail” to end caps 61 at the top end of posts. 60
.S. Patent 9,714,068 to Greer provides a shade system comprised of a PVC post 14 which is inherently flexible, an end cap having a aperture for receipt of cord attached to a grommet of canopy or “sail” 16. The sail supported in a cantilevered fashion (Fig.2). The proximal end attached to a base (Fig. 3).
U.S. Patent 11,629,521 to Zarkesh-Ha et al. teaches the use of LED lighting with a canopy attached to the distal end of poles with cables or “cords”. The canopy provides lighting on any desired area during the night, using light-weight LEDs attached under the canopy.
U.S. 2015/0034137 to Tanaeim teaches the use of battery powered LED lighting for illuminating the interior of a tent.
U.S. 2008/0173341 to Falin provides a pole supported canopy with solar cell 10 powered LED lighting 3 and a batteries 9 [0036,0056].
U.S. 2012/0103377 to Sheridan provides a pole supported canopy with solar 52 powered LED lighting 54 and a battery [0016].
U.S. 2014/0246063 to Galea teaches providing a pole 18 supported canopy 14 with solar panels 26 to recharge a battery [0036].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT CANFIELD whose telephone number is (571)272-6840. The examiner can normally be reached M-F 10-6, some Saturdays.
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ROBERT CANFIELD
Primary Examiner
Art Unit 3636
/Robert Canfield/Primary Examiner, Art Unit 3636