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 .
DETAILED ACTION
This is a non-final First Office Action on the Merits in application 18/663,435, filed 4/14/2024, with continuing data as disclosed.
Claims 1-14 are pending and examined.
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 4-5, 9-10 and 13-14 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 claims 4, 9 and 13, line 3, “said first section” has no antecedent basis. By deleting “said first section of” the rejection would be overcome.
In claims 5, 10 and 14, it is not clear how the receiver is “prohibited from being laterally inserted” from the track when the receiver is positioned within the track. By deleting “inserted and” the rejection would be overcome.
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over James(9,719,292; cited on PTO 892).
Regarding claims 1-2, 6-7 and 11, James discloses an automatic tensioning side track assembly(100) for maintaining a retractable screen(200) of a retractable screen enclosure assembly at a desired tensioned state, said automatic tensioning side track assembly comprising at least one of:
a screen receiver(110) including a first magnet channel(see at least Fig. 3) having a first outer wall surrounding a portion of a perimeter of said first magnet channel, and a first magnet(113) being housed within said first magnet channel; and
a base track(140) being engaged with said screen receiver(see at least Figs. 2-7), said base track(140) including a second magnet channel(see at least Fig. 3) having a second outer wall surrounding a portion of a perimeter of said second magnet channel, and a second magnet(145) being housed within said second magnet channel.
James further discloses a channel(160) having a cover(170, see Figs. 3 and 8) to enclose the channel(see column 7, lines 4-34) thereby considered to have provided a wall continuously surrounding an entire perimeter of the channel(160), but lacks the magnet channels each having an outer wall continuously surrounding an entire perimeter of the respective magnet channel.
It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have provided the magnet channel of James with an enclosed channel, such as suggested by channel 160 and cover 170 in Fig. 3, with a reasonable degree of success, in order to have enclosed the magnet channels and protected them from corrosion or damage or ambient fluid and debris given the intended use of the assembly and design requirements thereof. The manner in which the channel is enclosed, such as by a cover for removability of the magnet or a one-piece wall for a more permanent attachment of the magnet, is a considered a feature best determined by a skilled artisan given the intended use of the assembly and design requirements thereof.
Regarding claims 3, 8 and 12, James discloses the automatic tensioning side track assembly of claims 2, 7 and 11, wherein said screen receiver further comprises: a plurality of prongs(114, 115, see Fig. 3), wherein said base track(140) includes a plurality of pockets disposed along a travel path of said prongs(between 147 and 149, and between 148 and 150, see Fig. 3), wherein said prongs are configured to releasably engage said pockets as said screen receiver is reciprocated along a horizontal bi-directional travel path inside said base track(see Figs. 6-7).
Regarding claims 4, 9 and 13, James discloses the automatic tensioning side track assembly of claims 3, 8 and 12, wherein said prongs(114, 115) and said pockets(between 147 and 149, and between 148 and 150, see Fig. 3) are configured to prohibit said screen receiver from laterally exiting, along said horizontal bi-directional travel path, said base track(without tilting the receiver is not able exit the track meeting the claim limitation).
Regarding claims 5, 10 and 14, James discloses the automatic tensioning side track assembly of claims 2, 7 and 1, wherein, when said screen receiver is tilted at an angle within said base track(see Fig. 4-5), said screen receiver is prohibited from being laterally inserted and removed from said base track(the proportions of the prongs and portions 147 and 148 are such that if the screen receiver was tiled at a small angle the receiver would not be able to be removed meeting the claim limitation).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 6-11 of U.S. Patent No. 12,018,527. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims set forth an automatic tensioning side track assembly for maintaining a retractable screen of a retractable screen enclosure assembly at a desired tensioned state, said automatic tensioning side track assembly comprising at least one of: a screen receiver including a first magnet channel having a first outer wall continuously surrounding an entire perimeter of said first magnet channel, and a first magnet being housed within said first magnet channel, wherein said first magnet channel is configured to shield said first magnet from ambient fluid and debris; and a base track being engaged with said screen receiver, said base track including a second magnet channel having a second outer wall continuously surrounding an entire perimeter of said second magnet channel, and a second magnet being housed within said second magnet channel, wherein said second magnet channel is configured to shield said second magnet from ambient fluid and debris(claims 1-2, 6-7 and 11 of application and claims 1, 6-7 and 9 of ‘527), the screen receiver further comprises: a plurality of prongs, wherein said base track includes a plurality of pockets disposed along a travel path of said prongs, wherein said prongs are configured to releasably engage said pockets as said screen receiver is reciprocated along a horizontal bi-directional travel path inside said base track(claims 3, 8 and 12 of application and claims 4 and 10 of ‘527), said prongs and said pockets are configured to prohibit said screen receiver from laterally exiting, along said horizontal bi-directional travel path, said first section of said base track(claims 4, 9 and 13 of application and claims 4 and 10 of ‘527), and wherein, when said screen receiver is tilted at an angle within said base track, said screen receiver is prohibited from being laterally inserted and removed from said base track(claims 5,10 and 14 of application and claims 8 and 11 of ‘527).
Prior Art
The prior art 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 BETH A. STEPHAN whose telephone number is (571)272-1851. The examiner can normally be reached M-F 8a-4:30p.
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BETH A. STEPHAN
Primary Examiner
Art Unit 3633
/Beth A Stephan/