DETAILED ACTION
The Examiner acknowledges Claims 1, 2, 6 and 9 have been amended, Claims 14-22 have been cancelled and Claims 23-29 have been added.
Response to Arguments
Applicant’s arguments and amendments with respect to the Prior Art rejections have been considered but are moot because the amendment(s) have necessitated a new ground(s) of rejection.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4, 7, 10, 13, 23-26 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by German Patent # DE 19741526 to Schmoeller.
Regarding claim 1, Schmoeller teaches in Figure 1 [annotated below], a moulding (18) for covering a space (13) between a frame (11) and a wall (25), comprising: a first side (A) configured to face away from the frame (11); a second side (B) opposite the first side (A) and configured to face the frame (11); a projection (22a) extending from the second side (B), the projection (22a) being configured to extend into the space (13) between the frame (11) and the wall (25), and to abut a portion of the wall (25); and a recess (23) in the second side (B).
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Regarding claim 2, Schmoeller teaches in Figure 1 [annotated above], an inward facing side (C) configured to face toward a central opening (D) defined by the frame (11), and wherein the projection (22a) is offset from the inward facing side (C) by an overlap width, the overlap width determining, when installed, a distance the moulding (18) extends over the frame (11) in a direction toward the central opening (D).
Regarding claim 4, Schmoeller teaches in Figure 1 [annotated above], the overlap width is less than a width of the frame (11) in the direction towards the central opening (D) such that a portion of a side of the frame (11) facing the second side (B) is not covered by the moulding (18).
Regarding claim 7, Schmoeller teaches in Figure 1, the projection (22a) comprising a substantially planar side configured to abut the portion of the wall (25).
Regarding claim 10, Schmoeller teaches in Figure 1, a wall of the recess (23) transitions directly into the projection (22a).
Regarding claim 13, Schmoeller teaches in Figure 3, the first side comprising a profile defining an ornamental design.
Regarding claim 23, Schmoeller teaches in Figure 1 [annotated above], the second side (B) of the moulding (18) is substantially planar across the distance the moulding extends over the frame (11) in the direction toward the central opening (D) when installed.
Regarding claim 24, Schmoeller teaches in Figure 1, the recess (23) is adjacent the projection (22a).
Regarding claim 25, Schmoeller teaches in Figure 1 [annotated above], a moulding (18) for covering a space (13) between a frame (11) and a wall (25), comprising: a first side (A) configured to face away from the frame (11); a second side (B) opposite the first side (A) and configured to face the frame (11); and a projection (22a) extending from the second side (B), the projection (22a) being configured to extend into the space (13) between the frame (11) and the wall (25), and to abut a portion of the wall (25).
Regarding claim 26, Schmoeller teaches in Figure 1 [annotated above], an inward facing side (C) configured to face toward a central opening (D) defined by the frame (11), and wherein the projection (22a) is offset from the inward facing side (C) by an overlap width, the overlap width determining, when installed, a distance the moulding (18) extends over the frame (11) in a direction toward the central opening (D).
Regarding claim 28, Schmoeller teaches in Figure 1 [annotated above], the second side (B) of the moulding (18) is substantially planar across the distance the moulding extends over the frame (11) in the direction toward the central opening (D) when installed.
Claims 25, 26 and 28 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent Application Publication # 2009/0013636 to Wilson.
Regarding claim 25, Wilson teaches in Figure 1 [annotated below], a moulding (Z) for covering a space (Y) between a frame (27) [door jamb (Paragraph 0037)] and a wall (21) (Paragraph 0037) comprising: a first side (X) configured to face away from the frame (27); a second side (W) opposite the first side (X) and configured to face the frame (27); a projection (36) extending from the second side (W), the projection (36) being configured to extend into the space (Y) between the frame (27) and the wall (21), and to abut a portion of the frame (27).
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Regarding claim 26, Wilson teaches in Figure 1 [annotated above], an inward facing side (V) configured to face a central opening (U) defined by the frame (27), and wherein the projection (36) is offset from the inward facing side (V) by an overlap width, the overlap width determining, when installed, a distance the moulding (Z) extends over the frame (27) in a direction towards the central opening (U).
Regarding claim 28, Wilson teaches in Figure 1 [annotated above], the second side (W) of the moulding (Z) is substantially planar across the distance the moulding (Z) extends over the frame (27) in the direction toward the central opening (U) when installed.
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.
Claims 3, 5, 6, 8, 9, 12, 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over German Patent # DE 19741526 to Schmoeller.
Regarding claim 3, Schmoeller teaches a moulding with an overlap width but is silent about the value of the overlap width. However, it would have been an obvious matter of design choice to specify a certain value for the overlap width since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). It would have been an obvious matter of design choice to specify an overlap width between 0.5 and 1 inch since the Applicant has not disclosed that such an overlap width solves any stated problem or is of any particular purpose and it appears that the overlap width of Schmoeller would perform equally well.
Regarding claim 5, Schmoeller teaches a moulding with a projection but is silent about the value of the projection distance. However, it would have been an obvious matter of design choice to specify a certain value for the projection distance since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). It would have been an obvious matter of design choice to specify a projection distance between 0.05 and 0.5 inches since the Applicant has not disclosed that such a projection distance solves any stated problem or is of any particular purpose and it appears that the projection distance of Schmoeller would perform equally well.
Regarding claim 6, Schmoeller teaches a moulding with a projection having a width but is silent about the value of width. However, it would have been an obvious matter of design choice to specify a certain value for the width since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). It would have been an obvious matter of design choice to specify a width between 0.05 and 0.3 inches since the Applicant has not disclosed that such a width solves any stated problem or is of any particular purpose and it appears that the width of Schmoeller would perform equally well.
Regarding claim 8, Schmoeller teaches a moulding with a projection but does not teach it has a curved side. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make one side of the projection curved since a change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). In the instant case, it would have been obvious to try to one of ordinary skill in the art, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding claim 9, Schmoeller teaches a molding with a projection and a recess but does not teach a distance the projection extends is less than a maximum depth of the recess. However, it would have been an obvious matter of design choice to specify the projection to extend less than a maximum depth of the recess since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). The Examiner finds the limitation that starts with “such that” to be a recitation of the intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 12, Schmoeller teaches a moulding with a recess but does not teach an angle between a wall of the recess and the second side is greater than 90 degrees. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the angle between the wall and the recess greater than 90 degrees since a change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). It would have been an obvious matter of design choice to specify the angle to be greater than 90 degrees since the Applicant has not disclosed that such an angle solves any stated problem or is of any particular purpose and it appears that the angle of Schmoeller would perform equally well.
Regarding claim 27, Schmoeller teaches in Figure 1 [annotated above], a recess (23) in the second side (B) but does not teach a distance the projection extends is less than a maximum depth of the recess. However, it would have been an obvious matter of design choice to specify the projection to extend less than a maximum depth of the recess since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). The Examiner finds the limitation that starts with “such that” to be a recitation of the intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 29, Schmoeller teaches in Figure 1, the projection (22a) comprising a substantially planar side configured to abut the portion of the wall (25) but does not teach the projection has a curved side. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make one side of the projection curved since a change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). In the instant case, it would have been obvious to try to one of ordinary skill in the art, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication # 2009/0013636 to Wilson.
Regarding claim 29, Wilson teaches in Figure 1 [annotated above], the projection (36) comprising: a substantially planar side configured to abut the portion of the frame (27) but does not teach a curved side opposite the substantially planar side. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make one side of the projection curved since a change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). In the instant case, it would have been obvious to try to one of ordinary skill in the art, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
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 ANDREW J TRIGGS whose telephone number is (571)270-3657. The examiner can normally be reached Mon-Thurs 6am-2pm EST.
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/ANDREW J TRIGGS/Primary Examiner, Art Unit 3635