DETAILED ACTION
This communication is a first Office Action Non-Final rejection on the merits. The Restriction election received on 02/17/2026 has been acknowledged. Claims 1-20 are now pending and have been considered below.
Election/Restrictions
1. Applicant’s election of Group I (claims 1-14 and 18-20) and Species 3 (figures 1-12) in the reply filed on 02/17/2026 is acknowledged.
2. Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected invention Group II. Election was made with traverse in the reply filed on 02/17/2026.
Applicant's election with traverse of Group I and Species 3 in the reply filed on 02/17/2026 is acknowledged. The traversal is on the ground(s) that the application does not claim foreign priority. This is persuasive because the original restriction erroneously assumed foreign priority. After a discussion with the applicant’s representative regarding the Groups and Species, it was agreed that the Species restriction would be withdrawn since the embodiments are part of the same combination, and that the method claims would be restricted and withdrawn as being a separate process of manufacturing which would involve a separate classification and that the process as claimed can be used to make another and materially different product and result in a serious search and/or examination burden if restriction were not required. Therefore, the Species restriction requirement has been withdrawn and the Group election upheld with the applicant electing Group I.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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.
Claim(s) 9-13, are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Regarding claims 9 and 10, at lines 2 and 3, the recitation “configured to cooperate” renders the claim indefinite because the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In particular, it is unclear as to what constitutes “to cooperate” particularly if the recitations that follow are not being positively claimed.
Regarding claim 11, at line 5, the recitation “is fully established” renders the claim indefinite because the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In particular, it is unclear as to what constitutes being fully established. For the purpose of this office action, it is best understood that the claim recitation is understood to mean --is overlapping--.
Regarding claim 12, at line 5, the recitation “is inactive” renders the claim indefinite because the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. In particular, it is unclear as to what constitutes being inactive. For the purpose of this office action, it is best understood that the claim recitation is understood to mean --is not overlapping--.
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.
Claim(s) 1-4, 9-12, 14, 18, and 19, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MeGee (U.S. Patent No. 10,626,617).
Regarding claim 1, MeGee teaches a flashing assembly (abstract) capable of use for a roof element, capable of being configured for mounting in a sloped roof structure defining a slope direction and comprising a frame having a top frame member and a bottom frame member both extending horizontally in a the mounted state of the roof element in a width direction, and two side frame members extending in the slope direction in the mounted state of the roof element (the examiner notes that the frame having a top frame member and a bottom frame member both extending horizontally in a the mounted state of the roof element in a width direction, and two side frame members extending in the slope direction in the mounted state of the roof element, is not being positively claimed), said flashing assembly comprising a top flashing arrangement (12 / 14) configured for extending along the top frame member in the mounted state of the flashing assembly (figure 6), the top flashing arrangement comprises at least one pair of an inner top flashing element (14) and an outer top flashing element (12), and that each inner top flashing element and an associated outer top flashing element are configured to be interconnected in a telescopic joint (figure 7).
Regarding claim 2, MeGee teaches each inner top flashing element comprises a first leg (22) configured for extending up along an outer side of the top frame member (figures 6 and 7), and a second leg (20) configured for extending substantially in plane with the sloped roof structure and comprising engagement means configured to form part of the telescopic joint (figures 6 and 7).
Regarding claim 3, MeGee teaches each outer top flashing element comprises a substantially plane base (16) provided with top engagement means (top of 18) at an inner edge portion configured to form part of the telescopic joint (figure 7).
Regarding claim 4, MeGee teaches an outer edge portion of the second leg is bent (at 22) to form the engagement means of the inner top flashing element to engage with the top engagement means formed by a bent inner edge portion of the outer top flashing element (figure 7).
Regarding claim 9, MeGee teaches the inner top flashing element is capable of being configured to cooperate with a side flashing element at a corner section (the examiner notes that the side flashing element at a corner section is not being positively claimed).
Regarding claim 10, MeGee teaches the inner top flashing element, the outer top flashing element and the side flashing element are capable of being configured to cooperate with an extension flashing element by engagement of a side edge of the extension flashing element with a slit-shaped pocket formed between a lower outer edge and an edge portion of the corner section (the examiner notes that the extension flashing element and a slit-shaped pocket formed between a lower outer edge and an edge portion of the corner section, are not being positively claimed).
Regarding claim 11, MeGee teaches the inner top flashing element and the outer flashing element define a maximum measure in the slope direction (D; arbitrary direction of any slope), corresponding to a position in which the outer flashing element overlaps the inner flashing element to a minor extent and the telescopic joint is fully established (figures 6 and 7).
Regarding claim 12, MeGee teaches the inner top flashing element and the outer flashing element define a minimum measure in the slope direction (arbitrary measure in the arbitrary direction), corresponding to a position in which the outer flashing element overlaps the inner flashing element to a major extent and the telescopic joint is inactive (figures 6 and 7).
Regarding claim 14, MeGee teaches a roof element system comprising at least two roof elements (figure 3, figure 6), capable of being configured to be mounted adjacent to each other in a width direction (figure 3, figure 6), each roof element comprising a frame (54, 62) having a top frame member (54, 62) extending horizontally in the mounted state of the roof element (figure 3, figure 6), wherein the top frame member of one roof element is located at a different position in the slope direction than the top frame member of a neighboring roof element (figure 3, figure 6), and wherein a flashing assembly according to claim 1 is provided and configured such that the inner top flashing element and the outer top flashing element of the top flashing arrangement associated with the one roof element are positioned at a different telescopic relationship than in the top flashing arrangement associated with the neighboring roof element (figure 3, figure 6).
Regarding claim 18, MeGee teaches the roof element is a roof window (sky light 60).
Regarding claim 19, MeGee teaches each outer top flashing element comprises a substantially plane base (16) provided with top engagement means (top of 18) at an inner edge portion configured to form part of the telescopic joint (figure 7) and an outer edge portion of the second leg is bent (at 22) to form the engagement means of the inner top flashing element to engage with the top engagement means formed by a bent inner edge portion of the outer top flashing element (figure 7).
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 of this title, 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) 13 and 20, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over MeGee (U.S. Patent No. 10,626,617).
Regarding claim 13, MeGee does not specifically disclose the maximum measure lies in the range 200 to 250 mm, and wherein the minimum measure lies in the range 100 to 125 mm and/or a measure of the joint lies in the range 20 to 80 mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to contrive any number of desirable ranges wherein the maximum measure lies in the range 200 to 250 mm, and wherein the minimum measure lies in the range 100 to 125 mm and/or a measure of the joint lies in the range 20 to 80 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that by discovering an optimum value of a result, the effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to contrive any number of desirable ranges wherein the maximum measure lies in the range 200 to 250 mm, and wherein the minimum measure lies in the range 100 to 125 mm and/or a measure of the joint lies in the range 20 to 80 mm, in order to provide the optimal overlap of the telescoping elements to reduce waste of material while still maintaining a seal between the connecting flashing elements.
Regarding claim 20, MeGee does not specifically disclose each of the at least two roof element is a roof window.
However, it would have been an obvious matter of choice to one of ordinary skill in the art to have modified the apparatus to have a duplicate roof window, since such a modification would have only involved a mere duplication of a component. Absent any persuasive evidence that a particular configuration of the claimed duplicate part is significant, a duplicate part is generally recognized as being within the level of ordinary skill in the art In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). It has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. Therefore, it would have been obvious to one of ordinary skill in the art to include a second roof window, in order to provide optimal sunlight to various interior portions of a home, to provide the desired design ambience and enhance energy efficiency.
Claim(s) 5 and 6, is/are rejected under 35 U.S.C. 103 as being unpatentable over MeGee (U.S. Patent No. 10,626,617) in view of Østergaard (DK 179519 B1).
Regarding claim 5, MeGee does not specifically disclose each inner top flashing element comprises a corner section at each side, the corner section being separated from the second leg by a ridge portion.
Østergaard discloses a roof flashing (abstract) including a corner section (23) at each side (paragraph 26), the corner section being separated from the second leg by a ridge portion (at 223; figure 3).
Therefore, from the teaching of Østergaard, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the flashing assembly of MeGee such that each inner top flashing element comprises a corner section at each side, the corner section being separated from the second leg by a ridge portion, as taught by Østergaard, in order to securely provide a continuous seal around the corner of the window frame, to further prevent infiltration and potential water damage to the roof structure.
Regarding claim 6, MeGee as modified teaches each outer top flashing element comprises side engagement means (hemmed edges 30) at opposite side edge portions of the substantially plane base (figure 7) to engage with side engagement means of the corner section (hemmed edges of the corner section of Østergaard; figure 3) of the inner top flashing element, said side engagement means of the corner section being formed by an edge portion of the corner section (figure 3 of Østergaard).
Regarding claim 7, MeGee does not specifically disclose each outer top flashing element is provided with a cut-out with an extension in the width direction substantially corresponding to or exceeding a width of the corner section.
Østergaard discloses a roof flashing (abstract) including a cut-out (at 226) with an extension in the width direction substantially corresponding to or exceeding a width of the corner section (figure 4).
Therefore, from the teaching of Østergaard, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the flashing assembly of MeGee such that each outer top flashing element is provided with a cut-out with an extension in the width direction substantially corresponding to or exceeding a width of the corner section, as taught by Østergaard, in order to securely provide a continuous seal around the corner of the window frame, to further prevent infiltration and potential water damage to the roof structure.
Regarding claim 8, Østergaard in the combination discloses the width of the cut-out substantially corresponds to a spacing between an end of the top engagement means and the side engagement means (in the combination, it is understood that the width of the cut-out of Østergaard would substantially correspond to a spacing between an end of the top engagement means and the side engagement means of MeGee).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The cited patents listed on the included form PTO-892 further show the state of the art with respect to roof flashing in general.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMAR HIJAZ whose telephone number is (571)270-5790. The examiner can normally be reached on 8-6 EST Monday-Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached on (571) 270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMAR F HIJAZ/Examiner, Art Unit 3633