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 .
Examiner’s Note
The Examiner acknowledges the amendment of claim 1, the cancellation of claims 3, 15 – 29, 33, & 36 – 39, and the addition of new claims 70 – 71.
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 7 – 8 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.
The amendment of claims 7 – 8 to be dependent on claim 1, wherein amended claim 1 now recites that the teeth extend away from a first side or second side of the retention clip seems to contradict the recitation a tooth that is oriented at an angle of 0° relative to a lengthwise axis of the weather strip, as recited claims 7 – 8. The retention clip is configured to interconnect the weather strip, such that the retention clip and the weather clip run parallel to each other along the lengthwise direction (AL) of the retention clip, as shown in Figs. 5 – 6 & 9 (shown below). When the angle of the at least first and second teeth are oriented zero degrees relative to lengthwise axis of the weather strip, then the teeth are not “extended from” the retention clip. Thus, it is not clear how the recited 0° angle of the plurality of teeth meet the claim limitation “extending away from the retention clip,” as recited in amended claim 1.
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Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 2, 4 – 5, 7 – 10, 12 – 14, 24, & 32 are rejected under 35 U.S.C. 103 as being unpatentable over Yackiw, in view of W.R. Wood (U.S. Patent No. 1,557,227).
With regard to claim 1, Yackiw teaches a casement window (i.e., “a fenestration system”) (Fig. 1) comprising:
A frame member (i.e., “a structural member”) (12) comprising a slot (30) (i.e., “defining a weather strip receiving channel”), a flexible membrane or film (39) of water-resistant material (i.e., “weather strip”)) comprising an anchor lobe (26) configured to fit within the slot (30), and an anchoring member, such as strip (32) of hook-shaped cross-section (i.e., “retention clip”), wherein the strip is configured to interconnect the flexible membrane or film and the slot and hold the membrane flexible membrane or film in position (Figs. 4 – 5).
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Yackiw fails to teach the anchoring member/strip (i.e., “retention clip”) defines a plurality of teeth, the plurality of teeth comprises at least a first tooth extending from a first side of the retention clip and a second tooth extending from a second side of the retention clip.
Wood teaches a weather strip device comprising a weather strip (C) cooperating with a groove liner (i.e., “retention clip”) (B), wherein the groove liner comprises a serrated edges (5) (i.e., “a plurality of teeth”) extending from a first side and a second side of the retention clip (Pg. 1, Lines 80 – 81, Figs. 2, 7, & 6). The serrated edges are driven into the wood of the window sash at the bottom of the groove (i.e., “corner”) (Pg. 1, Lines 106 – 110). The liner and weather strip are held in place by the teeth and offers resistance against warping of the sash (Pg. 2, Lines 3 – 40).
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Therefore, based on the teachings of Wood, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a plurality of serrated edge teeth on both a first side and a second side of the anchoring member/strip (i.e., “retention clip”) taught by Yackiw in order to hold the anchoring member/strip and weather strip in place and resists warping of a wood sash of a window or wood door.
With regard to claim 2, Yackiw teaches strip (32) of hook-shaped cross-section (i.e., “retention clip”) is configured to hold the film/membrane (i.e., “weather strip”) in position with respect to the length of the slot (30) (i.e., “weather strip receiving channel”) (Figs. 4 – 5 above).
With regard to claims 4 – 5, as shown above, Wood teaches the serrated edges (5) (i.e., “a plurality of teeth”) define a corner of the clip and are triangular (Pg. 1, Lines 80 – 81, Figs. 2, 7, & 6)
With regard to claims 7 – 8, Wood teaches the serrated edges (teeth) are oriented at an axis of 0 degrees relative to the lengthwise axis of the weatherstrip (c) (Fig. 1 shown above).
With regard to claim 9, as shown in Figs. 4 – 5 above, Yackiw teaches the retention clip is positioned at an end of the weather strip receiving channel.
With regard to claim 10, Yackiw does not explicitly teach the fenestration comprises a second anchoring member/strip (i.e., “retention clip”), wherein the second retention clip is positioned at an opposite end of the weather strip receiving channel.
Yackiw teaches slot (30) (i.e., “receiving channel”) is located in the corner of a window (Fig. 2 & 4) and in linear portions of the frame (Fig. 5 shown above). The weather strip 22 is secured in a continuous slot 30 in frame members 12, as shown in Figs. 1 & 2. The corners of the window cause wrinkling of the weather strip, resulting in leakage to occur in the corners. Fig. 4 (shown above) suggests incorporating the anchoring member/strip (i.e., “retention clip”) in a corner. There are four corners of a window/door.
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Therefore, it would been obvious to one of ordinary skill in the art prior to the effective filing date to form a second, third, and fourth anchoring member/strip (i.e., “retention clip”) in the corners of the window, which are located at the opposite end of the slot (i.e., “receiving channel”) formed in linear portions of the frame.
With regard to claim 12, as shown in Figs. 4 – 5 above, Yackiw teaches the retention clip comprising:
A first leg (i.e., “side”) portion; and
A second leg portion, wherein the first side portion and the second side portion are interconnected at an angle with respect to one another.
With regard to claim 13, as shown in Figs. 4 – 5, the first leg portion is taller than the second side portion.
With regard to claim 14, as discussed above for claim 1, the structure member is a frame member, such as the topmost part of the frame member (i.e., “a head jamb”) (Fig. 1).
With regard to claim 24, Yackiw does not explicitly teach the slot (30) (i.e., “weather strip receiving channel”) is a kerf (a slit or notch made by a saw or cutting torch).
However, claim 24 defines the product by how the product was made (i.e., made by a saw or cutting torch). Thus, claim 24 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply an open channel. The reference suggests such a product in Figs. 4 – 5 shown above.
Examiner refers applicant to MPEP § 2113 [R - 1] regarding product-by-process claims. “The patentability of a product does not depend on its method or production. If the product in the product-by-process claim is the same as or obvious from a product or the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777, F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citation omitted)
Once the examiner provides a rationale tending to show that the claimed product appears to be same or similar to that of the prior art, although produced by a different process, the burden shifts to the applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218, USPQ 289, 292 (Fed. Cir. 1983)
With regard to claim 32, Yackiw teaches the flexible membrane or film (i.e., “weather strip”) is composed of a water-resistant material, such as plasticized polyvinylchloride, polyurethane. or low-density polyethylene (i.e., “thermoplastic material”) (Col. 2, Line 64 – Col. 3, Line 17).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yackiw & Wood, as applied to claim 1 above, and further in view of Cebulla (U.S. Patent No. 6,679,005).
With regard to claim 11, Yackiw suggests in Fig. 5 that that the strip 32 (i.e., “retention clip”) contracts one side of slot 30 along leg 34, but does not show direct contact of leg 36 along the opposing surface of the slot 30.
However, Yackiw teaches when fully inserted, lobe 26 urges leg 36 into alignment with slot shoulder 38 for releasably securing the weatherstrip in slot 30 (Col. 2, Line 25 – 31 & Col. 3, Lines 18 – 31).
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Furthermore, Cebulla teaches holding lip 22 acts in profile receptable as a kind of barb (in contact with opposing sides of the receptacle) to prevent accidental release or slipping of the sealing profile out of the profile receptacle 14 (Col. 8, Lines 60 – 65 & Fig. 3, shown below).
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Therefore, based on the teachings of Yackiw & Cebulla, it would have been obvious to one of ordinary skill in the art to form leg 36 of the strip (i.e., “retention clip”) taught by Yackiw such that it contacts two opposing surfaces of the slot to prevent accidental release or slipping out of the slot 30.
Claim(s) 30 – 31 are rejected under 35 U.S.C. 103 as being unpatentable over Yackiw & Wood, as applied to claim 1 above, and further in view of Von Ryberg et al. (WO 2018/099533 A1).
With regard to claims 30 – 31, Yackiw teach any suitable material having the required flexibility and rigidity may be used for the flexible strip (32) (i.e., “retention clip”). However, Yackiw does not teach the retention clip is formed of sheet metal, specifically stainless steel.
Von Ryberg et al. teach a flexible and oblong seal (i.e., “weather strip”) for sealing a gap between a door leaf and an adjacent surface. The seal assembly may have at least one mounting strip (e.g., connecting plate) (506) (i.e., “retention clip”), which may be made of stainless steel, and which connects the reinforced flexible seal (501) (i.e., “weather strip”) to the edge of the door (507) (pg. 5, lines 6 – 14).
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Therefore, based on the teachings of Von Ryberg et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a mounting strip (i.e., “retention clip”) for mounting a weather strip to the edge of a window or a door using materials known in the art to be effective for its purpose, such as stainless steel.
Claim(s) 34 is rejected under 35 U.S.C. 103 as being unpatentable over Yackiw & Wood, as applied to claim 1 above.
With regard to claim 34, Yackiw do not explicitly teach the thermoplastic material has a coefficient of thermal expansion of about 25 x 10-6 in/in/°F to 60 x 10-6 in/in/°F.
Yackiw teach the coefficient of thermal expansion of convention weather strip materials, such as rigid PVC and polypropylene copolymer, are typically in the range of 2.9 x 10-5 in/in/°F to 7.5 x 10-5 in/in/°F (i.e., 29 x 10-6 in/in/°F to 75 x 10-6 in/in/°F) (Col. 3, Line 67 – Col. 4, Line 2), which overlaps with Applicant’s claimed range of 25 x 10-6 in/in/°F to 60 x 10-6 in/in/°F. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Yackiw teach such a high coefficient of thermal expansion would normally be undesirable because the wood of the door has a coefficient of thermal expansion of about 2.8 x 10-6 in/in/°F, which leads to an undesirable large gap at the end of each piece of weather strip, leading to substantial air infiltration and destroying the sealing integrity of the door or window (Col. 3, Line 58 – Col. 4, Line 19).
However, Yackiw teach the soft synthetic foam material composed of similar materials, such as PVC, polyethylene, or other thermoplastic material of the weather strip of their invention makes the coefficient of thermal expansion of the weather strip material irrelevant because the foam material will be sufficiently resilient to follow the expansion of the adjacent material (Col. 4, Line 19 – 29).
Claim(s) 35 is rejected under 35 U.S.C. 103 as being unpatentable over Yackiw & Wood, as applied to claim 1 above, and further in view of McCutchen, Jr. (U.S. Patent No. 6,150,003).
With regard to claim 35, Yackiw fails to teach the weather strip comprises rigid carrier strip, wherein the rigid carrier fits within the anchoring member (i.e., “retention clip”).
McCutchen, Jr. teaches a wire carrier strip for use as reinforcement, wherein the wire carrier comprises stiffening elements (i.e., “rigid”) (Col. 2, Lines 51 – 67) inside synthetic resin, such as a weather seal (Col. 1, Lines 5 – 23).
Therefore, based on the teachings of McCutchen, Jr., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to reinforce the weather strip taught by Yackiw by incorporating a rigid wire carrier (strip) inside the entire length of flexible synthetic resin polymer of the weather strip, including the end portion incorporated into the anchoring member/strip taught by Yackiw.
Allowable Subject Matter
Claim 6 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.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claim 6, Wood fails to teach the plurality of teeth (5) alternate extending from opposite sides of the clip.
The closest art is Levi (GB 1039492 A). Levi teaches an element which can be applied as a trimming or seal (i.e., “weather strip”) to the edges of metal sheets or the like, particularly for parts of car bodies and doors (Col. 1, Lines 8 – 12). A metal band 1 is formed at suitable intervals with tranverse cutous alternating starting from the opposite longitudinal edges. A U-section metal core formed with a slot 5 to receive the edge of a metal plate. Inwardly-directed teeth 3 are arranged in staggered (alternating) relation and are each opposite a cut-out extending inwards from the edge member 1 (Col. 2, Lines 56 – 60).
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Unlike Yackiw who teaches an anchoring member engages with wooden sides of a slot and soft synthetic polymer foam, Levi teaches a metal sheet comprising alternating cutouts engages the inside of the U-shaped structure comprising teeth.
One of ordinary skill in the art would not be motivated to form the teeth taught by the combination of Yackiw and Wood in an alternating configuration as taught by Levi because the alternating configuration of the teeth do not serve the purpose of engaging with alternating cutouts of a metal sheet.
Claims 70 – 71 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claims 70 – 71, the references cited above fail to teach the plurality of teeth comprise a first tooth orientated at a first angle relative to a lengthwise axis of the weather strip and a second tooth orientated at a second angle relative to the lengthwise axis of the weather strip, wherein the first angle is different from the second angle.
Response to Arguments
Applicant argues, “Yackiw fails to teach or suggest at least ‘the retention clip defining a plurality of teeth, the plurality of teeth comprising at least a first tooth extending from a first side of the retention clip and a second tooth extending from a second side of the retention clip’ as required by claim 1” (Remarks, Pg. 7).
Applicant argues, “Wood fails to cure the deficiencies of Yackiw” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed above, Wood et al. teach Applicant’s claimed “the retention clip defining a plurality of teeth, the plurality of teeth comprising at least a first tooth extending from a first side of the retention clip and a second tooth extending from a second side of the retention clip,” as required by claim 1.
Applicant argues, “Cebulla fails to cure the deficiencies of Yackiw” (Remarks, Pg. 8).
Applicant argues, “Von Ryberg fails to cure the deficiencies of Yackiw” (Remarks, Pg. 9).
Applicant argues, “McCutchen Jr. fails to cure the deficiencies of Yackiw” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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