DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
2. Claims 1-12 as filed on 03/17/2026 are pending and herewith considered as indicated below.
Priority
3. Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. IT 102023000008790, filed on 11/24/2024.
4. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)- (d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
5. Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
6. Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
7. Claims 6 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter type rejection.
In regards to Claim 6, claim 6 (line 6) recites, “an elastic return without deformation.” However, after a review of the original disclosure (and of the disclosure of the applications to which the pending application claims priority, if such priority is claimed), the Examiner can find no support for this limitation. The language requires that the stem has a predetermined torsional elasticity, so as to allow a rotation of the transverse element joined to the first end of the stem, around the longitudinal axis of the stem, by at least 90 with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and an elastic return with deformation of the transverse element. However, the specification makes no mention of an elastic return with deformation, nor do the figures show simultaneous adjustment. [Page 7, Line 16-18] states that “the stem may have a predetermined torsional elasticity (defining a torsion bar), so as to allow a rotation of the transverse element joined to the first end of the stem, around the longitudinal axis of the stem, of at least 90° (preferably between 90° and 180°) with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and the elastic return of the
transverse element to the starting position” However, nowhere in the specification is it disclosed that the stem has a predetermined torsional elasticity, so as to allow a rotation of the transverse element joined to the first end of the stem, around the longitudinal axis of the stem, by at least 90 with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and an elastic return with deformation of the transverse element. Thus, there appears to be no support as originally filed for the limitation. In the event that the Applicant is of the opinion that this language is supported as originally filed, the Examiner requests Applicant to please cite to where the language is supported as originally filed.
In regards to Claim 10, “a return without deformation” as recited in lines 12-13 indicates the subject matter as new matter not supported by the specification or original claims. It appears “a return without deformation” is intended to recite “a return”.
In regards to Claim 10, claim 10 (lines 12-13) recites, “a return without deformation.” However, after a review of the original disclosure (and of the disclosure of the applications to which the pending application claims priority, if such priority is claimed), the Examiner can find no support for this limitation. The language requires each stem preferably having a predetermined torsional elasticity, so as to allow a rotation of the respective transverse element joined to the first end of the stem, around the longitudinal axis of the same stem, by at least 90° with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and a return without deformation of the transverse element to a starting position between the adjacent tiles. However, the specification makes no mention of a return without deformation, nor do the figures show simultaneous adjustment. [Page 7, Line 16-18] states that “the stem may have a predetermined torsional elasticity (defining a torsion bar), so as to allow a rotation of the transverse element joined to the first end of the stem, around the longitudinal axis of the stem, of at least 90° (preferably between 90° and 180°) with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and the elastic return of the
transverse element to the starting position” However, nowhere in the specification is it disclosed of a return without deformation of the transverse element. Thus, there appears to be no support as originally filed for the limitation. In the event that the Applicant is of the opinion that this language is supported as originally filed, the Examiner requests Applicant to please cite to where the language is supported as originally filed.
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.
8. Claims 1-12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In regards to Claim 1, “The at least two adjacent laying tiles” in lines 13-14 lacks proper antecedent basis this language is being interpreted as “two adjacent laying tiles”.
In regards to Claim 6, (line 6) recites, “an elastic return without deformation.” However, after a review of the original disclosure (and of the disclosure of the applications to which the pending application claims priority, if such priority is claimed), the Examiner can find no support for this limitation. First, the language “an elastic return without deformation” does not appear to be discussed or disclosed in the specifications as originally filed. Moreover, the figures do not appear to disclose or show tis feature. The recitation pertaining to an elastic return are as follows; [Page 7, Line 16-18] states that “the stem may have a predetermined torsional elasticity (defining a torsion bar), so as to allow a rotation of the transverse element joined to the first end of the stem, around the longitudinal axis of the stem, of at least 90° (preferably between 90° and 180°) with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and the elastic return of the transverse element to the starting position”. Thus, it is unclear how “an elastic return without deformation” . For purposes of this examination, this language will be interpreted as if supported as originally filed, though clarification of support is requested.
In regards to Claim 10, “preferably” in line 8 is indefinite because it is not clear if the subsequent limitations are required by the claim, preferably is being interpreted as the limitations “required”.
In regards to Claim 10, (lines 12-13) recites, “a return without deformation.” However, after a review of the original disclosure (and of the disclosure of the applications to which the pending application claims priority, if such priority is claimed), the Examiner can find no support for this limitation. First, the language “a return without deformation.” does not appear to be discussed or disclosed in the specifications as originally filed. Moreover, the figures do not appear to disclose or show this feature. The recitation pertaining to a return are as follows; [Page 7, Line 16-18] states that “the stem may have a predetermined torsional elasticity (defining a torsion bar), so as to allow a rotation of the transverse element joined to the first end of the stem, around the longitudinal axis of the stem, of at least 90° (preferably between 90° and 180°) with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and the elastic return of the transverse element to the starting position”. Thus, it is unclear how “a return without deformation.” . For purposes of this examination, this language will be interpreted as if supported as originally filed, though clarification of support is requested.
In regards to Claims 2-5, 7-9, 11-12, rejected due to dependency on rejected independent claims.
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.
9. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sighnolfi (US 2019/0345724) (Herein with Sighnolfi),
In regards to Claim 1, Sighnolfi A tile levelling device (10) configured for the mutual levelling of two or more tiles (Claim 1) (P) already laid on a not fully hardened glue [0068], wherein a joint [0202] [Figs 16a-16d] is defined between two adjacent laying tiles (P), wherein the tile levelling device (10) comprises:
a monolithic tie rod (40) comprising,
at least one transverse element (20) elongated along at least one longitudinal axis [Fig 2] and defining a rest plane [Fig 2] for two adjacent laying tiles (P).
at least one longitudinal stem (31) protruding from the transverse element (20) with a central axis squared with the rest plane [Fig 2] of the transverse element (20) and having a first end [Unnumbered, Fig 4] (see examiners comment) joined to the transverse element (20) , the stem (31) has a height greater [Fig 16a] than the maximum thickness of without overflow [Fig 16a] in between the two adjacent laying tiles (P) to be levelled; and
at least one abutment body (40) [Figs 4-5] joined to a second end [Unnumbered, Fig 4] the tile levelling device (10) further comprising:
a presser (50) adapted to cooperate with the abutment body (40) [Figs 4-5] of the monolithic tie rod (40) and configured to exert pressure [0137] on the two adjacent tiles (P) and
However, Sighnolfi fails to discuss wherein the stem has a transverse overall dimension equal to or less than the width of said joint.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the stem of Sighnolfi to have a transverse overall dimension equal to or less than the width of said joint in shape in order to bring adjoining tiles into alignment and reduce tile lippage. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the transverse element of Sighnolfi to have a maximum width of the transverse element is equal to or less than a width of the joint defined between the at least two adjacent laying tiles in order to bring adjoining tiles into alignment and reduce tile lippage, furthermore also allowing access post tile installation instead of pre tile installation. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
In regards to Claim 2, Sighnolfi discloses the tile levelling device (10) according to claim 1, wherein the first end [Unnumbered Fig 4] (see examiners comments) of the stem (30) [Fig 2] is joined to the transverse element [Figs 1-2] in a frangible manner [0081].
In regards to Claim 3, Sighnolfi discloses the tile levelling device (10) according to claim 2, wherein the first end [Unnumbered Fig 4] (see examiners comments) of the stem (30) [Fig 2] forms with the transverse element (20) an edge that acts as a fracture trigger line (34) [Fig 2] at a stem-transverse [Fig 2] element connection.
In regards to Claim 4, Sighnolfi discloses the tile levelling device (10) according to claim 1, however fails to disclose wherein the stem has a constant cross-section over an entire height of the stem .
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the stem of Sighnolfi to have the stem has a constant cross-section over an entire height of the stem in order to further facilitate tile adjustment and transverse element rotation. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
In regards to Claim 5, Sighnolfi discloses the tile levelling device (10) according to claim 1, however fails to disclose wherein the stem has a cross section having an elongate, shape, wherein a larger diameter is orthogonal to the longitudinal axis of the transverse element.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the stem of Sighnolfi to have the stem has a cross section having an elongate, wherein a larger diameter is orthogonal to the longitudinal axis of the transverse element in shape in order to further facilitate tile adjustment and transverse element rotation. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
In regards to Claim 6, Sighnolfi discloses the tile levelling device (10) according to claim 1, first end of the stem (30) [Unnumbered, Fig 4] (see examiner comments), second end [Unnumbered, Fig 4] (see examiner comments). However, fails to disclose, wherein the stem has a predetermined torsional elasticity, so as to allow a rotation of the transverse element joined to the first end of the stem, around the longitudinal axis of the stem , by at least 90° with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and an elastic return without deformation of the transverse element to a starting position between the adjacent tiles.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tile leveling device of Sighnolfi to include a predetermined torsional elasticity, so as to allow a rotation of the transverse element joined to the first end of the stem, around the longitudinal axis of the stem , by at least 90° with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and the elastic return of the transverse element to the starting position in order to place the transverse element between both tiles, as it has been held that aapplying a known technique (rotation of the transverse element) to a known device (tile leveling device) improvement to yield predictable results, allowing the transverse element to gain access underneath the tiles is within the level of ordinary skill in the art. See MPEP 2143 (D).
In regards to Claim 7, Sighnolfi discloses the tile levelling device (10) according to claim 1, wherein the abutment body (40) comprises a threaded pin (41) provided with a thread [Fig 4] having a parallel screwing axis [Fig 4] coinciding with the central axis of the stem (31) and the presser (50) comprises a knob (51) provided with a screw nut [Fig 1] (see examiners comments) that can be screwed [Fig 4] on the threaded pin (41).
In regards to Claim 12, Sighnolfi discloses the tile leveling device (10) according to claim 1. However, fails to disclose wherein the stem has a cross section having an elliptical shape, wherein a larger diameter is orthogonal to the longitudinal axis of the transverse element.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the stem of Sighnolfi to further incorporate a stem that has a cross section having an elliptical shape, wherein a larger diameter is orthogonal to the longitudinal axis of the transverse element in shape in order to further facilitate tile adjustment and transverse element rotation. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
10. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sighnolfi (US 2019/0345724) (Herein with Sighnolfi), as applied to claim 1 above, and further in view of Signinolifi (US 20180148939 A1)(Herein with Signinolifi (2016)).
In regards to Claim 8, Sighnolfi discloses the tile levelling device (10) according to claim 1, the monolithic tie rod (40) and abutment body (40) However, Sighnolfi does not disclose the tie rod comprises a handle element protruding from the abutment body
Furthermore, Sighnolfi (2016) discloses handle element (42) protruding from the abutment body [Fig 4] and configured to be able to rotate the tie rod (40) about the central axis of the stem (31) [Fig 4].
Based on the prior art relied upon above, it would have been obvious to a person having
ordinary skill in the art before the effective filing date of the claimed invention to modify the tile levelling device as disclosed by Sighnolfi to further incorporate a handle element protruding from the abutment body and configured to be able to rotate the tie rod about the central axis of the stem as disclosed by Sighnolfi (2016). When modified tile leveling device would incorporate a handle protruding from the abutment body further facilitating the ability to rotate the tie rod for easier use of the apparatus.
11. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sighnolfi (US 2019/0345724) (Herein with Sighnolfi) as applied to claim 1 above, and further in view of Torrents Comas Josep (WO 2014177736)(Herein with Torrents).
In regards to Claim 9, Signinolfi discloses the tile levelling device (10) according to claim 1, wherein the abutment body (40) comprises the presser (50) comprises a knob (51), however fails to disclose comprises a serrated strap and provided with at least one tooth configured to engage the serrated strap in a pop-up manner.
Furthermore, Torrents discloses comprises a serrated strap (2) [Fig 4] and provided with at least one tooth [Fig 4] configured to engage the serrated strap (2) in a pop-up manner [Fig 4].
Based on the prior art relied upon above, it would have been obvious to a person having
ordinary skill in the art before the effective filing date of the claimed invention to modify the tile levelling device as disclosed by Sighnolfi to further incorporate abutment body comprises a serrated strap, with at least one tooth configured to engage the serrated strap in a pop-up manner as disclosed by Torrents. When modified the abutment body would incorporate a serrated strap with one tooth for engagement in a pop-up manner, furthermore the reasoning includes facilitating axial insertion for tile placement, moreover, this tooth and serrated strap is used for tile installation with a pushing effected is used as the method for the apparatus. The tooth and serrated strap further engages for precise tile placement.
12. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sighnolfi (US 2019/0345724) (Herein with Sighnolfi) as applied to claim 1 above, and further in view of Sighinolfi (US 20220025662)(Herein with Sighinolfi (2022)).
In regards to Claim 10, Signinolfi discloses the tile levelling device (10) according to claim 1, wherein the presser (50) and monolithic tie rod (40).
However fails to disclose wherein the presser comprises a wedge and the monolithic tie rod comprises a pair of stems spaced apart from each other by a through opening adapted to be crossed at least partially by the wedge and delimited at the top by a crosspiece that acts as an abutment element and that unites the second end of the stems, wherein a respective transverse element is joined to the first end of each stem, wherein the longitudinal axis of each transverse element is orthogonal to a longitudinal axis of the crosspiece, each stem preferably having a predetermined torsional elasticity, so as to allow a rotation of the respective transverse element joined to the first end of the stem, around the longitudinal axis of the same stem, by at least 90 with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and a return without deformation of the transverse element to a starting position between the adjacent tiles.
Furthermore, Sighnolfi (2022) discloses a wedge (50) and the monolithic tie rod comprises a pair of stems (31) [Fig 19] spaced apart from each other by a through opening (40) adapted to be crossed at least partially by the wedge (50) [Fig 12] and delimited [Abstract] at the top by a crosspiece (32) that acts as an abutment element and that unites the second end [Fig 19] of the stems (31) , wherein a respective transverse element (20) is joined to the first end of each stem [Fig 19].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tile levelling device as disclosed by Sighnolfi to further incorporate the presser comprising a wedge and the tie rod comprising a pair of stems spaced apart from each other by a through opening adapted to be crossed at least partially by the wedge and delimited at the top by a crosspiece that acts as an abutment element and that unites the second end of the stems as disclosed by Sighnolfi (2022). When modified, the tile leveling device uses the wedge as a means for further leveling the tiles in a secured method by the delimitator.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the tile leveling device of Signolfi to have the transverse element orthogonal to a longitudinal axis of the crosspiece in shape in order to allow rotations of the transverse element and maintain an easier installation mechanism. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tile leveling device of Sighnolfi to include a predetermined torsional elasticity, so as to allow a rotation of the transverse element joined to the first end of the stem, around the longitudinal axis of the stem , by at least 90° with respect to the second end, starting from an unperturbed starting position, without plastic yielding of the stem, and the elastic return of the transverse element to the starting position in order to place the transverse element between both tiles, as it has been held that applying a known technique (rotation of the transverse element) to a known device (tile leveling device) improvement to yield predictable results, allowing the transverse element to gain access underneath the tiles is within the level of ordinary skill in the art. See MPEP 2143 (D).
13. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sighnolfi (US 2019/0345724) (Herein with Sighnolfi) as applied to claim 1 above, and further in view of Xin-xin Ding (CN 114922398 A)(Herein with Ding)
In regards to Claim 11, Sighnolfi discloses the tile leveling device (10) according to claim 1, wherein the monolithic tie rod (40). However, does not disclose the monolithic tie rod is made of a plastic material.
Furthermore, Ding discloses wherein the monolithic tie rod is made of a plastic material [Background].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tile levelling device as disclosed by Sighnolfi to further incorporate the tie rod made of a plastic material. When modified the tie rod as disclosed by Sighnolfi would be made of plastic as disclosed by Ding, which further provides ease of machineability and use as part of the tile leveling device. In addition, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
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Examiners Comments
Figure 4, Sighinolfi
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Figure 1, Sighinolfi
Response to Arguments
14. Objections to Priority: Applicant make no mention of Priority Claim, furthermore, objection to priority is maintained (see above under Priority section).
15. Objections to the Claims: Applicant' s argument with respect to the claim objections is persuasive and objection to the claims is hereby withdrawn.
16. Claim Rejections 35 USC 112: Applicant' s argument with respect to the claims rejected under 35 USC 112 have been considered but are partially persuasive and withdrawn but for those listed in the above, which were not amended and where not provided with specific remarks. Please see section 112 rejections.
17. Claim Rejections 35 USC 103: Applicant' s arguments with respect to all claims rejected under 35 USC 103 have been considered but are not persuasive.
Applicant argues modifying Sighnolfi's device to have a stem and transverse element narrow enough to fit into an existing joint would be a "mere change of shape" for a person of ordinary skill in the art is incorrect. Furthermore, Applicant iterates that the Examiner's analysis is based on improper hindsight and a misunderstanding of the technical problem solved by the invention.
Additionally, Applicant iterates a different technical problem and function, Sighnolfi '724, discloses a traditional leveling system. As is typical for such systems, it features a wide base that must be positioned under a tile before the adjacent tile is laid. It is structurally and functionally incapable of being used once two tiles are already laid side-by-side. Further iterating the present invention is designed to solve a different problem, providing a leveling solution that can be used after the tiles have already been laid [as state in paragraph 0014].
Additionally, Applicant iterates a different structure, iterating the claimed invention has a radically different structure, devoid of a wide base. Further iterating Instead, it features a transverse element and a stem that are both specifically dimensioned to be narrower than or equal to the width of the joint. This specific structure is what allows the device to be inserted vertically into the existing joint and then rotated by 90 degrees to anchor the transverse element under the already-laid tiles. See e.g., paras. [0026]-[0027] of the publication.
Additionally, Applicant iterates no motivation to modify the prior art, further explaining there is no teaching or suggestion in Sighnolfi '724 that would have motivated a person of ordinary skill in the art to abandon its fundamental design (a wide, pre-positioned base) in favor of the claimed structure. The Examiner's conclusion that this is a "mere change of shape" is incorrect. It is a complete redesign of the device's structure to achieve a new and different function. The motivation for this redesign comes only from knowledge of the Applicant's invention, which is impermissible hindsight.
Examiners response to Applicant argument regarding Examiner’s analysis is based on improper hindsight and a misunderstanding of the technical problem solved by the invention is as follows. The timing of laying tiles is directed to a method, whereas the claims are directed to a product. The final assembly is what governs, not the order of process of assembly. Additionally, examiner iterates the technical problem solved by the invention does not correlate to the claimed invention, as the claims are examined on the merits, not the technical problem solved by the invention. Examiner further iterates in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Additionally, as iterated in the above rejection
It would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the stem of Sighnolfi to have a transverse overall dimension equal to or less than the width of said joint in shape in order to bring adjoining tiles into alignment and reduce tile lippage. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the transverse element of Sighnolfi to have a maximum width of the transverse element is equal to or less than a width of the joint defined between the at least two adjacent laying tiles in order to bring adjoining tiles into alignment and reduce tile lippage, furthermore also allowing access post tile installation instead of pre tile installation. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
Examiners response to Applicants argument regarding a different technical problem and function is stated as follows. The technical problem solved by the invention does not correlate to the claimed invention. The claims are examined on the merits, not the technical problem solved by the invention.
Examiners Response to Applicants argument regarding a different structure is as follows. The timing of laying tiles is directed to a method, whereas the claims are directed to a product. The final assembly is what governs, not the order of process of assembly. Additionally, while the invention might be a different structure, the manner in which it is claimed is not, as shown above. Furthermore, the applicant iterates the structure is devoid of a wide base. This is a feature which is not claimed. Applicant further iterates the specific structure is what allows the device to be inserted vertically, and that the sequence of operations is impossible in the prior art. As iterated above, the claims are drawn to a product, not the manner of assembly.
Examiners response to Applicants argument regarding no motivation to modify the prior art is as follows. There is no requirement that a reference in itself provides a teaching or suggestion to modify as per KSR. Motivation has been presented in the previous rejection as well as the above (see 103 rejections). Additionally, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The motivation was provided in the previous rejection and the above. As iterated in the above rejection, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the stem of Sighnolfi to have a transverse overall dimension equal to or less than the width of said joint in shape in order to bring adjoining tiles into alignment and reduce tile lippage. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
Additionally, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the transverse element of Sighnolfi to have a maximum width of the transverse element is equal to or less than a width of the joint defined between the at least two adjacent laying tiles in order to bring adjoining tiles into alignment and reduce tile lippage, furthermore also allowing access post tile installation instead of pre tile installation. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
Conclusion
18. THIS ACTION IS MADE FINAL. 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.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZAKARIA K. AL-ASWAR whose telephone number is (571)272-6335. The examiner can normally be reached M through F 7:30 to 5PM.
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/Z.K.A./Examiner, Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
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