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 .
Response to Amendment
The following office action is in response to the amendment filed on May 28, 2026. Claims 1, 5-12, and 15-19 are pending. Claims 2-4, 13-14, and 20-21 have been cancelled.
Drawings
Figures 2A and 2B should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5-12, and 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,946,263. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claims 1, 5-12, and 15-19 are taught by claims 1-14 of the ‘263 patent. Both sets of claims disclose a roof vent for attachment to a metal roof comprising a foot with at least one ridge and pan. The ridge and pan sections obviously make the foot contoured. Both sets of claims also an annular collar and a cap with the same features claimed. Finally, both sets of claims claim an aperture disposed within the periphery of the foot.
Claim Rejections - 35 USC § 103
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 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 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Haines (20120073239).
In regard to claim 1, Haines discloses a roof vent (figs. 4-5) for attachment to a contoured metal roof 14, comprising: a contoured foot 18 comprising a material and contoured to engage the contoured metal roof when attached to the contoured metal roof, the contoured foot having a top surface and a bottom surface and further including: an aperture 34 disposed within a periphery of the contoured foot and extending through the contoured foot between the top surface and the bottom surface; first and second pan sections (fig. 4, i.e. the sections that are on top of the pan sections of the roof panel 14), wherein lower surfaces of the first and second pan sections are disposed in a common reference plane; and a first rib section (fig. 4, the rib section in the center of foot 18 that is over the rib of 14 near where 16 is pointing to in figure 4) disposed between the first and second pan sections, wherein a lower surface of the first rib section is recessed relative to the common reference plane forming a recessed channel in the bottom surface of the contoured foot extending between opposing edges of the contoured foot (the rib runs from one end of the foot to the other only broken by the opening 34), wherein an upper surface of the first rib section forms a ridge on the top surface of the contoured foot; the aperture disposed within the periphery of the contoured foot is disposed along the first and second pan sections and the first rib section and includes a lower peripheral edge contoured to match the contour of the upper surface of the contoured foot (as clearly shown in figure 4); and an annular collar 30 having a lower edge affixed about a periphery of the aperture and extending above the top surface of the contoured foot; and a cap 22 configured to extend over a hollow interior of the collar, wherein the cap has an upper surface that extends over the hollow interior of the collar and at least one sidewall surface extending downward from the upper surface of the cap and toward the top surface of the foot (The top and annular wall are clearly shown in figure 4. The annular wall extends downwardly from the top towards the top surface of the foot).
Haines does not specifically disclose that the contoured foot is made of a rigid material. However, the examiner would first like to point out that rigidity is a relative term and can have a range of meanings. The applicant has not given their term any specific meaning in their disclosure, so the term “rigid” will be interpreted within broadest reasonable interpretation. In this case, the examiner will interpret “rigid” as a material that is capable of holding its own shape. Therefore, even though Haines refers to his member 18 as a flexible member, Haines also discloses that the material could be a synthetic resin (e.g., plastic) [0019]. Haines also shows his member 18 in figures 4 and 5 as having ridges and contours [0020]. Therefore, the examiner contends that it would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the contoured foot at least rigid enough to hold its own shape so that it would be easier to apply over the ridges and pan sections of the roof 14. Further, a rigid thermoplastic material will still maintain the ability to be heated and sealed to the roof 14 in the same manner disclosed by Haines at paragraph [0022]. Thus, by merely making the plastic of Haines rigid enough to hold its own shape, would be within the level of ordinary skill in the art and would not destroy the claimed invention. Finally, the examiner would like to point out that Haines refers to his metal sheets 14 as rigid [0018]. However, anyone of ordinary skill in the metal roofing art knows that even corrugated metal sheets are able to bend and flex. Thus, merely having the ability to bend or flex does not mean that a member is not rigid as evidenced by Haines when referring to the metal sheets as rigid knowing that they are capable of flexing and bending.
In regard to claim 6, Haines discloses the basic claimed invention of claim 1, wherein the recessed channel in the bottom surface of the contoured foot has first and second sections on opposing sides of the aperture, wherein the recessed channel is discontinuous between the opposing edges of the contoured foot; wherein the bottom surface of the contoured foot has pan section channels; and wherein the pan section channels are adapted to engage pan section ridges formed in the contoured metal roof (the above features are clearly shown in figure 4).
In regard to claim 7, Haines discloses the basic claimed invention of claim 1, wherein the lower edge of the collar affixed about the periphery of the aperture includes at least one notch configured to receive the ridge on the top surface of the contoured foot. Figure 4 clearly shows the notch that receives the ridge.
In regard to claim 8, Haines discloses the basic claimed invention of claim 1, wherein an upper edge of the collar affixed about the periphery of the aperture extends further above the top surface of the contoured foot than the ridge. Figure 4 shows the edge above the ridge.
In regard to claim 9, Haines discloses the basic claimed invention of claim 1, further comprising a third pan section separated from the first pan section or the second pan section by a second rib section. Figure 4 shows a high rib in the center of panel 14 and two lower ribs to each side of the higher rib. Each of the flat sections between all of the ribs are being considered multiple pan sections.
In regard to claim 10, Haines discloses the basic claimed invention of claim 1, wherein the contoured foot and the annular collar are integrally formed [0020].
In regard to claim 11, Haines discloses the basic claimed invention of claim 1, wherein the recessed channel extends between forward and rearward edges of the contoured foot and is disposed mid-way between first and second lateral edges of the contoured foot, fig. 4.
Claim(s) 5, 12, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Haines (20120073239) in view of Damron (5561952).
In regard to claim 5, Haines discloses the basic claimed invention, except for specifically disclosing that the sidewall of the cap includes a plurality of vent slits. Damron teaches that it is known to provide a cap having a sidewall 18 with a plurality of vent slits 17 that is attached to an annular collar. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate Damron’s teaching into Haines’ invention, because vent slits in roof vent caps and sidewalls that surround collars in roof vents are well-known. The slits are known to provide ventilation therethrough so that hot air from attic spaces can vent out of the attic in a more efficient manner and the sidewalls surrounding the collar help prevent debis and precipitation from entering the roof opening.
In regard to claim 12, Haines in view of Damron disclose the basic claimed invention. All the limitations of claim 12 have been previously addressed and can be seen in at least the above rejections of claims 1, 5, and 9 above.
In regard to claims 15 and 16, Haines in view of Damron disclose the basic claimed invention of claim 12, wherein the plurality of ridges are parallel, and wherein each ridge has a trapezoidal shape. Haines also discloses that the first and second ridges have different heights. Figure 4 of Haines clearly shows these features.
In regard to claim 17, Haines in view of Damron disclose the basic claimed invention of claim 12, wherein at least one of the recessed channels (the channel containing member 16) in the bottom surface of the contoured foot is discontinuous across the aperture; wherein one ridge of the plurality of ridges is on the contoured foot; and wherein the ridge of the plurality of ridges on the contoured foot has a corresponding recess or channel that is sized and shaped to engage another ridge of a R-panel (Haines, fig. 4).
In regard to claim 18, Haines in view of Damron disclose the basic claimed invention of claim 17, wherein the lower edge of the collar affixed about the periphery of the aperture includes at least one notch configured to receive the ridge on the top surface of the contoured foot. Figure 4 of Haines clearly shows the notch that receives the ridge.
In regard to claim 19, Haines in view of Damron disclose the basic claimed invention of claim 12, wherein the contoured foot and the annular collar are integrally formed, Haines [0020].
Response to Arguments
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive.
In regard to the applicant’s argument pertaining to the statutory double patenting rejection of the previous office action, the arguments are persuasive. However, in light of applicant’s amendment, the claims are currently rejected under non-statutory double patenting in view of US Pat. No. 11,946,263 as set forth above.
In regard to the applicant’s arguments pertaining to Forrest (US 10723547) and Payne (GB 311105), the arguments are moot because those references were not used in any current or previous rejections.
The applicant argues that the reference to Haines does not read on the claimed invention, because Haines does not teach a rigid contoured foot. The examiner respectfully disagrees. As pointed out above in the rejection of claim 1, the applicant has not given any special meaning or definition to the term rigid. Therefore, under broadest reasonable interpretation, the examiner contends that any material that can hold its shape could be considered to have some rigidity, or be at least somewhat rigid. There are different degrees of rigidity. They could range from a metal roofing sheet that can flex and bend, but is hard and can hold its own shape to a steel block that does not deform at all. Thus, as pointed out above, since Haines’ contoured foot is made of plastic and can be seen holding its own shape in figure 5, the examiner contends it obviously meets the claimed limitations. Further, Haines even discloses that the member may comprise one or more contours therein [0020]. If the member 18 had no rigidity, it would not be capable of having a contour formed therein and be able to hold that contour.
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 Brian E Glessner whose telephone number is (571)272-6754. The examiner can normally be reached Monday to Friday 8:00 to 4:00.
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, Namrata Boveja can be reached at 571-272-8105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E GLESSNER/Supervisory Patent Examiner, Art Unit 3633
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