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 1-11 and species 1-13 in the reply filed on 10/26/25 is acknowledged. The traversal is on the ground(s) that the elected claims are drawn to a single inventive concept encompassing both the structurally defined system and its installation method. This is not found persuasive because the method includes the step of cutting a corner panel OR an outside return panel at an angle to incorporate a channel, installing on a stair tread and heating the one of the components for flexing and bending relative to each other to a folded condition with a curvature of a nosing.
The product claim includes both a corner panel AND a return panel interlocked with a separate channel component via a cutout section and does not require that it be made by the process of heating and flexing around a tread relative to the other components.
Applicant appears to disclose a method that includes a customized system. However the claims of Group I are drawn to a system including a single staircase cap As best understood the invention as recited in Group I appears to be drawn to a single embodiment of an assembled staircase cap, whereas the invention of Group II appears to be drawn to a method of making a different embodiment of assembled staircase cap. The structurally defined system of Invention I as in claims 1-11 cannot be made by the installation method of Group II, claims 12-20. Thus applicant’s arguments are not persuasive.
Applicant has not elected a single species, instead applicant elected the embodiments of species 1-13 as being drawn to a single inventive concept of a staircase capping system including multiple embodiments of a staircase cap. For example, the embodiment of the staircase cap in figure 3E is structurally distinct from the embodiment of the staircase cap shown in figure 3F where 3E includes corner panel 108 on one end of horizontal section 306 and semicircular cutout 308 at the opposite end whereas the embodiment of 3F includes corner panel at both ends of channel member 102. Both of those are distinct from the embodiment of figure 3G which includes a solid wood curved length for channel member 102 with no cutout. This is distinct from the straight length of channel member 102 with horizontal and bend sections as shown in the embodiment of figures 1A,B, which also includes a cutout 204. Additionally, the embodiment of 4A appears to have a cutout section 402 and horizontal section 406 which are structurally distinct from the embodiment of figure 1A including 108/102 and the embodiments of figures 3E and 3F as described above. Further, the embodiment of the staircase cap of figures 5A-D includes outside return panel attached to channel 102 at the cutout 204, which is structurally distinct from the previous embodiments noted above. Accordingly while the invention is to a staircase capping system including a staircase cap there are multiple embodiments of a staircase cap disclosed, each staircase cap is structurally distinct. Accordingly applicants arguments regarding the species restriction are not persuasive because applicant has not demonstrated that the species as disclosed form a single patentable inventive concept. In response to this Office Action applicant must indicate a single species for election.
The requirement is still deemed proper and is therefore made FINAL.
Claim 1 is a system having a staircase cap, which is drawn to a single embodiment of an assembled system. The drawings and specification do not teach or suggest a corner panel interlocked with a channel via a cutout and an outside return panel interlocked with the channel via the same cutout as presently claimed in claim 1. The claim appears indefinite and the scope cannot be ascertained. To advance compact prosecution the claims will be examined as best understood.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/26/25.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the corner panel and outside return panel interlocking with the channel as described in the specification and as claimed. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 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 1-11 and all claims depending therefrom 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 recites “a corner panel interlocked with the channel via a cutout section” in line 8 and “an outside return panel interlocked with the channel via the cutout section” in line 16. It is unclear how both the corner panel and the outside return panel are interlocked with channel via the same cutout section. As best understood from the drawings and specification the channel has a cutout at 204, it appears that a corner panel is adjacent the channel (102) at the cutout, the drawings and specification do not support an outside return panel also attached at the same cutout. Therefore the scope of the claimed invention is not understood in light of the disclosure.
Further the claim recites “wherein perimeter of the plurality of edge strips” and “perimeter of the return nosing” which is confusing as the structure of the plurality of edge strips and return nosing does not support or suggest a perimeter; and “are configured to custom match” it is unclear what is encompassed or meant by the phrase “custom matched” causing confusion regarding the scope of the claimed invention. The claim previously recites the plurality of edge strips “bend and wrap” around the return nosing, it is unclear what is meant by “custom match” in addition to the previous recitation of “bend and wrap”, thus the scope of the claimed invention is unclear.
The claim recites “protect return nosing” in line 17, it is unclear if this is the same as or in addition to the return nosing previously recited causing confusion regarding the scope of the claimed invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “interlocked” is used in claim 1, the accepted meaning of the term interlock is “engage by the fitting together of projections and recesses”. Applicant has not described or shown in the figures any “interlocking” based on the generally accepted meaning. Instead applicant states interlocked but describes and shows adjacent attachment or connection or glue (which is adhesive bonding, distinct from interlocking). As best understood in light of the specification and drawings Applicant intends of the term “interlocked” as used by applicant and recited in the claim to mean “attached”. Therefore, the term is indefinite because the specification does not clearly redefine the term. If applicant intends to mean interlock, appropriate support in the drawings and specification must be included.
Claim 4 recites “to custom match with the perimeter of the return nosing” it is unclear if this is the same as or in addition to the “bend and wrap” and/or the “custom match” as previously recited in claim 1 causing confusing regarding the scope of the claimed invention.
Claim 6 recites “the plurality of edge strips is fixed with glue” it is unclear how the edge strips are fixed and also “bend and wrap” and/or “custom match” as previously recited in claim 1 causing confusion regarding the scope of the claimed invention.
Claim 8 recites “the adhesive layer corresponds to a dry fit type of adhesive”, it is unclear what is encompassed by the phrase “corresponds to a dry fit type” thus is unclear whether the limitations following the term are part of the claimed invention.
Regarding claim 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Accordingly the claims will be examined as best understood.
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) 1-7,11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young (20220003001) in view of Franklin (2220898).
Claim 1. Young discloses a staircase capping system, comprising:
a staircase cap (10) comprising;
a channel (12 with 14) installed along a length and width of staircase, the channel comprises:
a horizontal section (12) configured to secure a stair tread of the staircase (as note4d at least at paragraph 0063), and
a bend section (14) configured to secure a floor nosing of the staircase (as seen in the figures);
a corner panel (161) interlocked with the channel via a cutout section (as seen at detail 23 of figures 22-23 or alternatively the cutout section 26 of 16 as seen at figure 21), the corner panel comprises:
a semicircular panel (where it is a panel with a semicircular portion at 28F as seen in figures 15-21) installed over at least one side of the staircase (as seen in the figures and noted in the disclosure); and
a plurality of edge strips (as seen in the annotated figure below) fabricated along the semicircular panel, wherein perimeter of the plurality of edge strips are configured to custom match with perimeter of the return nosing (as seen in the figures and throughout the disclosure); and
an outside return panel (162) interlocked with the channel via the cutout section (as seen in the figures and noted in the disclosure, where it interlocks int eh same manner as 161), configured to protect return nosing of the staircase.
Young does not expressly disclose that the plurality of edge strips are configured to bend and wrap around a return nosing of the staircase. Instead Young discloses a straight return side with nosing having no curved or circular portion, thus there is no requirement for bending or wrapping around the return side and nosing.
Franklin discloses a staircase having a tread with a horizontally semicircular shaped return side and nosing (1 as seen at the end of the lowermost step as seen in figures 1,4-5) and edge strip (2) where the edge strip 2/4 includes a plurality of edge strips 5 fabricated along the length of panel and is configured to bend and wrap around the return side of the staircase (as seen in figures 1-5 and noted in col. 2, lines 16-55).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to pursue known design options and modify the corner panel to be horizontally semicircular panel and a plurality of edge strips configured to flexibly bend and wrap around a semicircular return side and nosing of the staircase, as taught by Franklin, to achieve the predictable result of a cap system that can accommodate the various known staircase design configurations, including a rounded end stair shape to achieve a desired design aesthetic or match an existing design.
Claim 2. The staircase capping system of claim 1, wherein the horizontal section is configured to cover contour of the stair tread (as seen in the figures and noted throughout the disclosure).
Claim 3. The staircase capping system of claim 1, wherein the cutout section is cut at an angle having a range between 0-90 angle (as seen in figures 21-23).
Claim 4. The staircase capping system of claim 1, wherein the plurality of edge strips is fabricated to form a plurality of grooves, and the plurality of grooves provides adjustment space to the plurality of edge strips to custom match with the perimeter of the return nosing (as noted in col. 2, lines 16-55 of Franklin).
Claim 5. The staircase capping system of claim 4, wherein the plurality of grooves is equidistantly spaced along the perimeter of the corner panel, and is configured in symmetrical shape including a gear shape, a zig zag shape or a V shape cutout (as seen in the figures and noted in col. 2, lines 15-55 of Franklin).
Claim 6. The staircase capping system of claim 1, wherein the plurality of edge strips is fixed with glue to aid in installation over the return nosing (paragraphs 0045 and 0051 of Young).
Claim 7. The staircase capping system of claim 1, wherein the channel is configured with an adhesive layer (as noted at least at paragraph 0045 where the connection at 14 and 12 includes an adhesive layer) to install over the stair tread and floor nosing of the staircase.
Claim 11. The staircase capping system of claim 1, wherein the channel, the corner panel, and the outside return panel are configured to be installed with different types of staircases with or without removing the spindles, including curve stairs, open stairs, closed stairs, and hanging stairs (as noted throughout Young).
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Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young (20220003001) in view of Franklin (2220898) and further in view of Spielman (9399874).
Claim 8. Young in view of Franklin disclose the staircase capping system of claim 7, but does not expressly disclose wherein the adhesive layer corresponds to a dry fit type of adhesive that is heat activated for easy application. Young does disclose using a polyvinyl acetate adhesive. Spielman discloses a staircase cap system that uses a hot melt adhesive that is heat activated (col. 4, lines 55-60). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to pursue known design options and modify the adhesive of Young to be heat activated to achieve the predictable result of improving installation and forming a more secure bond of the staircase cap with underlying staircase improving safety.
Claim(s) 9,10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young (20220003001) in view of Franklin (2220898) and further in view of Nedza (20200131779).
Claims 9-10. Young in view of Franklin disclose the staircase capping system of claim 1, but do not expressly disclose wherein the channel and the outside return panel is made from a material selected from a group of materials of synthetic materials, such as, polyvinyl chloride (PVC), polyurethane (PU), polyethylene (PE) and polyethylene terephthalate (PET); or that the channel is configured with a scratch resistant layer to protect against scratches and dirt.
Nedza discloses a staircase capping system where the capping system components are made from a material selected from a group of materials of synthetic material such as a polyvinyl chloride (PVC) material (the support layer 12, paragraph 0032,0044), polyurethane (layer 14, paragraph 0032), polyethylene terephthalate (layer 13, paragraph 0041) having a scratch resistant layer (the protective surface wear layer,14 paragraph 0035) configured protect against scratches and dirt (as noted at least at paragraphs 0008-0012,0024,0035).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to pursue known design options and modify the staircase capping system of Young to be made from a group of materials of synthetic material such as polyvinyl chloride (PVC), polyurethane (PU), and polyethylene terephthalate (PET) and including a scratch resistant layer to protect against scratches and dirt as taught by Nedza to achieve the predictable result of staircase capping system that does have expansion and contraction due to temperature changes, maintaining a seamless connection of the components and increasing the longevity of the installed product and decreasing the installation time.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young (20220003001) in view of Franklin (2220898) and further in view of McCool (20130305635).
Claim 10. Young in view of Franklin disclose the staircase capping system of claim 1, but does not expressly disclose wherein the channel is configured with a scratch resistant layer to protect floor panel against scratches and dirt.
McCool discloses a staircase cap system including a scratch resistant layer to protect floor panel against scratches and dirt (as noted at paragraph 0054 where it includes finish coating).
Accordingly it would have been obvious to one of ordinary skill in the art at the time the invention was filed to pursue known design options and modify the staircase cap of Young to include a scratch resistant layer as taught by McCool to achieve the predictable result of protecting the material of staircase cap from undue wear and tear, thus increasing the longevity of the product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA LAUX whose telephone number is (571)272-8228. The examiner can normally be reached M-F 7:30-3:30.
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JESSICA L. LAUX
Examiner
Art Unit 3635
/JESSICA L LAUX/Primary Examiner, Art Unit 3635