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
Newly submitted (amended) claim 9 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Amended claim 9 adds a bottom flange, according to the specification this bottom flange is component 118, found in fig. 7 which is a different embodiment from that of claim 1, fig. 1.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 9-16 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim(s) 1-8 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,735,084 to Zaccagni et al. in view U.S. Patent No. 5,937,592 to Tamlyn.
Regarding claims 1, 4, and 19, Zaccagni discloses a fascia trim piece having a face section (fig. 2: 110), a bottom section (130) extending from the face section, a soffit channel (140, 144, 142, area where 170 fits) adjacent to the bottom section. However, Zaccagni does not disclose the bottom section having openings. Tamlyn discloses a soffit vent having a front wall (126), and bottom section with staggered rows of circular openings (fig. 5: see rows with 48). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Zaccagni by adding such holes as disclosed by Tamlyn in order to better vent and reduce moisture. Regarding the limitation of the piece being unitary, this is not disclosed. However, Tamlyn discloses such a vent (column 3, lines 18-33). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Zaccagni by creating a unitary piece as disclosed by Tamlyn to increase strength and speed production.
Regarding the limitation of the soffit channel having a first wall perpendicular to the first wall and a sidewall parallel to the face and perpendicular from the bottom, this is not disclosed by Zaccagni. However, Tamlyn discloses such a sidewall (Tamlyn 126) and first wall (Tamlyn 124). The second wall (144) and third wall (140) are disclosed by Zaccagni. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Zaccagni by using such wall shapes as disclosed by Tamlyn as an obvious design choice since they both deal with the same shaped components and are functionally equivalent.
Regarding claim 2, the channel (fig. 4: 140) is generally parallel to the bottom section (130).
Regarding claim 3, claim 3 is rejected for reasons cited in the rejection of claim 1 in view of Tamlyn. Additionally, it should be noted that the openings of Tamlyn are throughout the bottom which makes some of the openings adjacent to the face and some openings adjacent to the channel.
Regarding claim 5, Zaccagni in view of Tamlyn discloses the basic claim structure of the instant application but does not disclose specific dimensions of the holes. Applicant fails to show criticality for specifically claimed dimensions, therefore it would have been an obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Zaccagni in view of Tamlyn to use the dimensions such as specified in these claims as the larger holes would allow more ventilation as small holes require less which would be an obvious design choice based upon the amount of ventilation needed.
Regarding claims 6, 18, the face has a folded flange (112).
Regarding claim 7, the folded flange (112) is on the end of the face furthest away from the bottom section.
Regarding claims 8, the third wall (140) is longer than the first wall (142).
Regarding claim 17, claim 17 is rejected for reasons cited in the rejection of claim 1. Additionally, a soffit (170) is in the soffit channel.
Regarding claim 20, the soffit has a height which is approximately the same as the height of the channel (see fig. 4 soffit height and channel vertical wall height).
Response to Arguments
Applicants’ arguments filed 8/12/26 have been fully considered but they are not persuasive. The Applicant argues the combination of the references as not obvious because the combination would change the principle of operation. However, the principle of operation is not changed, both references are concerned with the same matter in the same art. Regarding design choice, a mere change in shape which does not affect functionality may be an obvious design choice, especially when taught by a secondary reference which is already known in the art. Regarding the amended claims, these are addressed in the new office action above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Basil Katcheves whose telephone number is (571)272-6846. The examiner can normally be reached Monday-Thursday, 8:00 am to 6:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached on (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/BASIL S KATCHEVES/Primary Examiner, Art Unit 3633
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