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 . 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 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.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Great Britain on April 20, 2023. It is noted, however, that applicant has not filed a certified copy of the GB 2305787.0 application as required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.84(h)(1) because Figure 4 includes an exploded view, on the same page as other views, where the separated parts of the invention are not embraced by a bracket. The Examiner notes providing dotted lines indicating directed of connection, similar to Figures 1, 5, and 8, would also be acceptable.
The drawings are objected to under 37 CFR 1.84(h) and 37 CFR 1.84(u) because Figure 10 includes multiple views under a single label, and therefore the views are not “clearly separated from one another”. Further, “[t]he different views must be numbered in consecutive Arabic numerals”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
Specification
The abstract is objected to for beginning with a phrase which can be implied. See “The present application provides” in line 1. See MPEP 608.01(b). The Examiner notes simply removing this phrase and beginning the abstract with --A fence panel…-- would place the abstract in proper form and overcome the objection. Appropriate correction is required.
Claim Objections
Claim 15 is objected to because in line 2, “a plurality of pickets” should read --the plurality of pickets--, and in line 4, “a rod” should read --the rod--, as both these limitations are already present in claim 1, from which claim 15 depends. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 4, and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “at least 75% of the length of the rail”, and the claim also recites “at least 90% of the length of the rail” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. This issue is also present in claims 4 and 5.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 recites limitations which can all be found in claim 1, from which claim 14 depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 3, 6, and 8-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,982,933 (Schultz).
Regarding claim 1, Schultz discloses a fence panel (10; see Figures 1-15) comprising:
at least one rail (14a, 14b), wherein a side of the rail comprises a plurality of holes (at 42a, 42b in Figures 13-15) therethrough;
a plurality of pickets (18) comprising apertures (18a, 18b) in opposite side walls thereof, such that the apertures create a channel extending through the picket width, wherein each of the plurality of pickets extends through a different hole in the rail, such that the apertures in the pickets are aligned (see Figures 13-15); and
a rod (44a, 44b) extending along at least part of the length of the rail, wherein the rod extends through the channel between the apertures in each of the pickets (see Figures 13-15 and column 4, line 54, through column 5, line 21).
Regarding claim 3, Schultz discloses the rod (44a, 44b) has a circular cross-section and the apertures (18b) in the pickets have an oval or an elongated oval cross-section (see Figure 15).
Regarding claim 6, Schultz discloses the apertures (18a, 18b) on opposite side walls of the picket (18) are identical (see Figures 13-15 and column 4, line 54, through column 5, line 21).
Regarding claim 8, Schultz discloses the holes (at 42a, 42b in Figures 13-15) in the rail (14a, 14b) are larger than a cross-section of the picket (18; see Figures 13-15 and column 4, line 54, through column 5, line 7).
Regarding claim 9, Schultz discloses the rail (14a, 14b) is a horizontal rail (see Figures 1, 2, and 13-15).
Regarding claim 10, Schultz discloses the distance between the edge of the aperture (18a, 18b) furthest from the end of the picket (18) and the end of the picket itself is less than the width of the rail (14a, 14b; see Figures 13-15).
Regarding claim 11, Schultz discloses the rail (14a, 14b) has a square, rectangular or U-shaped cross section and/or wherein the pickets (18) have a circular, square or rectangular cross-section (see Figure 3).
Regarding claim 12, Schultz discloses the rail (14a, 14b) is connected to a fence post (12) at one or both ends thereof (see Figure 1).
Regarding claim 13, Schultz discloses two or more rails (14a, 14b), wherein the pickets (18) extend through holes (at 42a, 42b in Figures 13-15) in each of the rails, optionally wherein each of the two or more rails are connected to a fence post (12) at one or both ends thereof (see Figure 1).
Regarding claim 14, Schultz discloses a kit of parts for creating a fence panel (10; see Figures 1-15) according to Claim 1, comprising:
at least one rail (14a, 14b), wherein a side of the rail comprises a plurality of holes (at 42a, 42b in Figures 13-15) therethrough;
a plurality of pickets (18) comprising apertures (18a, 18b) in opposite side walls thereof, such that the apertures create a channel extending through the picket width, wherein each of the plurality of pickets is sized to extend through a hole in the rail (see Figures 13-15); and
a rod (44a, 44b) sized to extend through the apertures in the pickets and to extend along at least part of the length of the rail (see Figures 13-15 and column 4, line 54, through column 5, line 21).
Regarding claim 15, Schultz discloses a method of assembling a fence panel (10; see Figures 13-15) according to Claim 1, comprising the steps of:
inserting an end of each picket (18) of a plurality of pickets into a different hole in a surface of the rail (14a, 14b); and
passing a rod (44a, 44b) through the apertures (18a, 18b) in the pickets, thereby connecting the pickets together (see Figures 13-15 and column 4, line 54, through column 5, line 21).
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 2 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Schultz.
As to 35 U.S.C. 102(a)(1), Schultz discloses the fence panel according to Claim 1, wherein the rod (44a, 44b) extends along at least 75% of the length of the rail (14a, 14b), preferably along at least 90% of the length of the rail.
As shown in Figures 3 and 4, the rod (44a, 44b) extends up to a flange (62) of a connector (53), which is provided for connecting to a bracket (16) of a fence post (12; see Figure 1). As shown in Figure 1, there are 9 pickets and 2 fence posts spaced apart, where the rod extends through all 9 pickets, but not to the fence posts. As such, the rod extends through at least 9/11ths, or 81.8% of the rail.
As to 35 U.S.C. 103, Schultz discloses the fence panel according to Claim 1, but does not explicitly disclose the rod (44a, 44b) extends along at least 75% of the length of the rail (14a, 14b), preferably along at least 90% of the length of the rail.
Applicant is reminded that it has been held that discovering an optimum value of a result effective variable (i.e. the length of a rod) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Applicant is further reminded that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the fence panel of Schultz such that the rod extends along at least 75% of the length of the rail, preferably along at least 90% of the length of the rail, as such a modification involves only routine skill in the art. One of ordinary skill in the art would have been motivated to make such a modification in order to provide adequate support for the pickets along a majority of the rail.
In the interest of compact prosecution, the following alternative interpretation of claim 2 is provided:
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Schultz in view of US 5,372,354 (Caciedo).
Schultz discloses the fence panel according to Claim 1, but does not explicitly disclose the rod (44a, 44b) extends along at least 75% of the length of the rail (14a, 14b), preferably along at least 90% of the length of the rail.
Caciedo teaches a rod (43, 44) extending along at least 75% of the length of the rail (14a, 14b), preferably along at least 90% of the length of a rail (26, 28; see Figure 1 where the rod extends the entire length of the rail). Caciedo teaches this structure provides support for the pickets throughout the entire rail (see Figure 1 and column 2, line 48, through column 3, line 35). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the fence panel of Schultz such that the rod extends along at least 75% of the length of the rail, preferably along at least 90% of the length of the rail, as taught in Caciedo, in order to provide support for the pickets throughout the entire rail.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Schultz.
Regarding claim 4, Schultz discloses the fence panel according to Claim 1, but does not expressly disclose the width of the rod (44a, 44b) is between 70% and 95% of the width of the aperture (18a, 18b), preferably between 75% and 90%. Schultz does however contemplate changing the width of the aperture in order to allow easy assembly and to provide a certain amount of play to allow for construction on uneven terrain (see column 4, line 54, through column 5, line 21).
Applicant is reminded that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Applicant is further reminded that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the fence panel of Schultz such that the width of the rod is between 70% and 95% of the width of the aperture, preferably between 75% and 90%, as such a modification involves only routine skill in the art. One of ordinary skill in the art would have been motivated to make such a modification in order to allow easy assembly and to provide a certain amount of play to allow for construction on uneven terrain.
Regarding claim 5, Schultz discloses the fence panel according to Claim 1, but does not expressly disclose the height of the rod (18a, 18b) is between 55% and 85% of the height of the apertures in the picket (18), preferably between 60% and 80%. Schultz does however contemplate changing the height of the aperture in order to allow easy assembly and to provide a certain amount of play to allow for construction on uneven terrain (see column 4, line 54, through column 5, line 21).
Applicant is reminded that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Applicant is further reminded that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the fence panel of Schultz such that wherein the height of the rod is between 55% and 85% of the height of the apertures in the picket, preferably between 60% and 80%, as such a modification involves only routine skill in the art. One of ordinary skill in the art would have been motivated to make such a modification in order to allow easy assembly and to provide a certain amount of play to allow for construction on uneven terrain.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 6,910,664 (Bolinder).
Schultz discloses the fence panel according to Claim 1, but does not expressly disclose at least one of the ends of the rod (44a, 44b) is pointed.
Bolinder teaches providing a point at the end of a rod (38) in order to make it easier to insert into a further member (12; see Figure 5 and column 3, lines 44-53). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify at least one of the ends of the rod of Schultz to be pointed, as taught in Bolinder, in order to make it easier to insert into the picket.
Conclusion
The prior art set forth in the attached Notice of References Cited (PTO-892) made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Josh Skroupa whose telephone number is (571)270-3220. The examiner can normally be reached M-F 7:30 AM – 3:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached on (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Josh Skroupa/Primary Examiner, Art Unit 3678
January 21, 2026