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 without traverse of invention I in the reply filed on February 3, 2026 is acknowledged.
Specification
The disclosure is objected to because of the following informalities: Paragraphs [0003], [0004], [0005] each include blank lines referring to application numbers not indicated.
Appropriate correction is required.
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 1-10 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-10, 18 and 23-29 of copending Application No. 18/603345 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application recites all of the subject matter of the co-pending application in broader terms.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over McMullen, JR. et al. (US 2017/0204644), hereinafter referred to as McMullen, in view of Wilke (US 6,422,287).
Regarding claim 1, McMullen discloses a fenestration unit, comprising:
a frame (12; Fig 1) defining a frame plane and including a sill (bottom), a head (top) opposite the sill, a first jamb and a second jamb opposite the first jamb (Fig 1);
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a second panel (34) supported by the frame and configured for pivot mode operation (Fig 1 shows pivot and Fig 2 shows closed position), wherein during the pivot mode operation the second panel can pivot between a closed position generally parallel to the frame plane and a pivot open position beyond the frame plane, wherein the second panel (34) extends over a second lateral portion of the frame (Figs 6 and 7) when in its pivot closed position;
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a first panel (36) supported by the frame and configured for slide mode operation and pivot mode operation with respect to the frame, wherein during the slide mode operation the first panel is in a slide position generally parallel to the frame plane and can slide within the frame between slide closed and slide open positions (Figs 1 and 2), and during the pivot mode operation the first panel can pivot outwardly beyond the frame plane (Figs 1 and 7), and
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wherein when the first panel is in the slide closed position the first panel extends over a first lateral portion of the frame (Fig 6);
a screen (64) supported by the frame (Fig 6) and
a screen carrier (at least areas of element 28, 38, and 30) coupling the screen to the frame and to facilitate slide mode operation and pivot mode operation of the screen, wherein during the slide mode operation the screen can slide within the frame between a slide closed position corresponding to the slide closed position of the first panel (paragraph [0023]),
a slide open position (Fig 3) at least partially overlapping the second panel when the second panel is in its pivot closed position, and a pivot ready position engaged with the second panel when the second panel is in its pivot closed position, and wherein during its pivot mode operation the screen is in its pivot ready position and can move outwardly beyond the frame plane with the second panel during the pivot mode operation of the second panel (see further discussion below),
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wherein the screen carrier includes a first section (elements 28 and 30) mounted to the frame and guide at least portions of the screen over at least a portion of the first lateral portion of the frame and at least portions of the second lateral portion of the frame;
and wherein when the screen is in the pivot ready position, the screen is disengaged from the first section of the screen carrier and attached to the second panel (Fig 7, and see further discussion below).
Although McMullen lacks specific detail with regard to pivoting movement of the screen, it is understood that the screen (element 64) necessarily pivots with the first and second panels (elements 34 and 36) when the door system is placed in the “open position” as shown in Figures 1 and 7 (See Abstract, paragraphs [0001-0002], [0016-0017], and [0024]) in order to provide access to the fully exposed opening (element 26) of the door frame, which is one of the explicit purposes of McMullen, as the fully exposed opening would not be accessible if the first and second panels were pivoted away, while the screen remained in the opening. Even so, it is noted that Wilke teaches that it is known in the art to configure a fenestration unit, comprising: a frame (element 12) a second panel (element 20) supported by the frame; a first panel (element 26) supported by the frame and configured for slide mode operation and pivot mode operation with respect to the frame, wherein during the slide mode operation the first panel is in a slide position generally parallel to the frame plane and can slide within the frame between slide closed and slide open positions (Fig 1-3 and 11), and during the pivot mode operation the first panel can pivot outwardly beyond the frame plane; a screen (element 60) supported by the frame; and a screen carrier (Fig 1) coupling the screen to the frame and to facilitate slide mode operation and pivot mode operation of the screen, wherein during the slide mode operation the screen can slide within the frame between a slide closed position corresponding to the slide closed position of the first panel, a slide open position at least partially overlapping the second panel when the second panel is in its pivot closed position, and a pivot ready position (Figs 1-3) engaged with the second panel when the second panel is in its pivot closed position, and wherein during its pivot mode operation the screen is in its pivot ready position and can move outwardly beyond the frame plane with the second panel during the pivot mode operation of the second panel.
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 door system of McMullen such that the screen was capable of pivoting functionality with the first and second panels, as taught by Wilke (See Figure 11 of Wilke), as this would provide the capability of providing a completely exposed and unhindered opening for the door system of McMullen, while also including the benefit of having a sliding screen member for use when only the sliding panel (element 36) of McMullen is in the open position, which would be highly desirable for particular applications. 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. As modified, when the screen is in the pivot ready position, the screen is disengaged from the first section of the screen carrier and attached to the second panel.
Regarding claim 2, McMullen discloses wherein the screen carrier includes a second section (elements 38 and 42) mounted to the second panel, wherein the screen transitions between the first section of the screen carrier and the second section of the screen carrier during its slide mode operation (paragraph [0018], “Each of the first lip 38 and the second lip 42 is aligned with an associated one of the tracks 30 when the door 32 is positioned in the closed position. The second half 36 is slidable along each of the tracks 30” and [0020], “Each of the rollers 54 rolls along an associated one of the tracks 30 and the first lip 38 when the second half 36 is positioned between the closed position and the open position.”).
Regarding claim 3, McMullen discloses wherein the second section of the screen carrier extends over at least a portion of the second panel, and supports and guides portions of the screen extending over the second panel during the slide mode operation of the screen (Figs 1 and 6, paragraphs [0017-0018]).
Regarding claim 4, McMullen discloses wherein the screen carrier further includes a disengagement structure (Fig 1, considered end portion of lower element 30) that causes the screen to disengage from the first section of the screen carrier when the screen is at its pivot ready position (Figs 1 and 6, Examiner notes that the screen is disengaged from element 30 when oriented in “pivot ready position”).
Allowable Subject Matter
Claims 5-10 and 18 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 and the provisional rejections on the grounds of double patenting are overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Johnnie A. Shablack whose telephone number is (571)270-5344. The examiner can normally be reached Mon-Thu 6am-3pm EST, alternate Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Cahn can be reached at 571-270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Johnnie A. Shablack/Primary Examiner, Art Unit 3634
Prosecution Insights