DETAILED ACTION
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
Claims 1-13 are pending.
Priority
At the outset, it is noted that the priority date of the claimed invention is that of US App. No. 15/049,372, filed on 2/22/16. Although ‘372 claims priority to US App. No. 62/119,009, filed 2/20/15, ‘009 does not support the claimed embodiment. The claimed embedment (claim 1) requires a horizontally oriented main body with first and second portions, the first portion angled downwardly therefrom, and the second portion terminal to the first portion and angled away from the roof side end of the main body. In other words, claim 1 requires features 110, 120 and 122 from Fig. 1. The closest disclosure in ‘009 is that of “Fig. A.” However, “Fig. A” does not disclose the claimed second portion. ‘372, however, discloses the claimed second portion. Thus, the effective filing date of the claimed invention is that of US 15/049,372, filed on 2/22/16
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.
Claims 1-13 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.
Re claim 1, claim 1 recites, “a lip member extended from…the horizontally oriented main body and in-plane with the horizontally oriented main body” in lines 9-10. 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 lip member extends in-plane with the horizonal oriented main body. However, in each figure, and each embodiment, the lip member is only shown extending at an angle with respect to the main body. For example, Fig. 3 shows 112, the lip member, extending at an angle with respect to the plane of the main body 110. In addition, [0034] for example explicitly states that the lip member extends at an angle 114. The lip member does not appear, in any embodiment or statement in the specification, to extend in-plane with the main body. 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.
Claims 2-13 are rejected as being dependent on a rejected claim.
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 1-13 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.
Re claim 1, claim 1 recites, “a lip member extended from…the horizontally oriented main body and in-plane with the horizontally oriented main body” in lines 9-10. 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 lip member extends in-plane with the horizonal oriented main body. However, in each figure, and each embodiment, the lip member is only shown extending at an angle with respect to the main body. For example, Fig. 3 shows 112, the lip member, extending at an angle with respect to the plane of the main body 110. In addition, [0034] for example explicitly states that the lip member extends at an angle 114. The lip member does not appear, in any embodiment or statement in the specification, to extend in-plane with the main body. Thus, it is unclear how the lip member extends from the horizontally oriented main body and is in-plane with the horizontally oriented main body. For the purposes of this examination, this language will be interpreted as shown in the specification as originally filed, requiring that the lip member extends at an angle from the main body.
In addition, claim 1 recites, “the channel” in line 13-114 and 18. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to recite, “the single channel” and “the single channel” and will be interpreted as such.
Claims 2-13 are rejected as being dependent on a rejected claim.
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) 1-4, 7-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Breyer (US 2016/0102459) in view of Gurr (US 2006/0288652).
Re claim 1 in view of the rejections under 35 USC 112 above, Breyer discloses a non-roof cover system (Fig. 2, Fig. 8, 10) for a gutter debris preclusion device (32, 34) having a heat element fitment (36), a roof side (left side of 38) and gutter lip side (right side of 38; proximate 118) and attached to a gutter (14), the gutter (50) have a gutter lip (below 64 in Fig. 8), comprising:
a horizontally oriented main body (114) having a roof side end (proximate 117; left side of 114) and a gutter lip side end (proximate 116);
a lateral member (117) integrally coupled to (as 38 is one piece) the roof side end (left side of 114) of the horizontally oriented main body (114) and having a joined first portion (117), wherein the first portion (117) is angled downwardly from (Fig. 8) the horizontally oriented main body (114) and in-plane with (Fig. 8; as interpreted under 35 USC 112 above) the horizontally oriented main body (114);
a lip member (116 to 118) extended from (Fig. 8) the gutter lip side end (right side of 38) of the horizontally oriented main body (114), having a lip portion (118) angled downwardly (Fig. 8); and
a single channel (below 114/right of 117/ left of 118; in other words, everything underneath 117/114/116/118 is a “single channel” because the area therein has no partition/separating walls) below the horizontally oriented main body (114), spanning from (Fig. 8, being the entire area under 117/114/116/118) the lateral member (117) to the gutter lip side end right side of 38; proximate 118, wherein a bottom (bottom of the channel above) of the channel (below 114/right of 117) is bounded by a top (top of 32/34, at 108) of the gutter debris preclusion device (32/34),
wherein, the non-roof cover system (10) is coupled to (Fig. 2, Fig. 8) a top (top of 32/34) of the gutter debris preclusion device (32/34), the gutter lip side end (right side of 38) of the horizontally oriented main body (114) fits over a gutter lip (below 64 in Fig. 8) and the channel (below 114/right of 117) is proximal to (Fig. 8) the gutter lip (below 64 in Fig. 8),
but fails to disclose a second portion, the second portion is terminal to the first portion and angled away from the roof side end of the horizontally oriented main body.
However, Gurr discloses a second portion (see examiner comments), the second portion (see examiner comments) is terminal to (Fig. 2) the first portion (see examiner comments) and angled away from (being angled inwardly, modified onto 117 of Breyer) the roof side end (Breyer: proximate 117) of the horizontally oriented main body (see examiner comments).
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 non-roof cover system of Breyer with a second portion, the second portion is terminal to the first portion and angled away from the roof side end of the horizontally oriented main body as disclosed by Gurr in order to provide additional surface area and points of contact for maintaining both the heat element and feature 92 of Breyer in place, providing a greater delineated channel.
Re claims 2-4, Breyer as modified discloses the c non-roof over system of claim 1, but fails to disclose wherein the single channel has a cross-sectional shape of a partial rectangle [claim 2], wherein the single channel has a cross-sectional shape of a partial ellipse [claim 3], wherein the single channel has a cross-sectional shape of a partial sinusoidal curve [claim 4].
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 non-roof cover system of Breyer wherein the single channel has a cross-sectional shape of a partial rectangle [claim 2], wherein the single channel has a cross-sectional shape of a partial ellipse [claim 3], wherein the single channel has a cross-sectional shape of a partial sinusoidal curve [claim 4] in order to fit or conform to heat element fitments of different shapes, such as those claimed in claims 2-4. In addition, 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.
Re claim 7, Breyer as modified discloses the non-roof cover system of claim 1, further comprising a heat element (36) disposed within the single channel (below 114/right of 117), but fails to disclose the heat element occupying a majority of the single channel.
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 non-roof cover system of Breyer with the heat element occupying a majority of the single channel in order to increase the size of the heat element, increasing the heating capacity. In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 8, Breyer as modified discloses the non-roof cover system of claim 7, wherein a longitudinal axis (longitudinal axis of 36) of the heat element (36) is parallel to (Fig. 8) the horizontally oriented main body (114).
Re claim 9, Breyer as modified discloses the non-roof cover system of claim 1, wherein the lip member extends past an exterior end of the gutter lip.
However, 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 non-roof cover system of Breyer wherein the lip member extends past an exterior end of the gutter lip (such as by extending the length of 18) in order to provide a drip edge over the gutter lip or to protect 64 by extending farther past. In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 10, Breyer as modified discloses the non-roof cover system of claim 1, wherein the gutter debris preclusion device (32/34) is attached to (Fig. 8) the gutter lip (below 64 in Fig. 8).
Re claim 11, Breyer as modified discloses the non-roof cover system of claim 10, wherein the lateral member (117) and the gutter debris preclusion device (32/34) form lateral boundaries (Fig. 2, Fig. 8) for the channel (below 114/right of 117) and the horizontally oriented main body (114) and the gutter debris preclusion device (32/34) form top and bottom boundaries, respectively (Fig. 8), for the channel (below 114/right of 117).
Re claim 12, Breyer as modified discloses the non-roof cover system of claim 1, but fails to disclose wherein the second portion is shorter in length than the first portion.
However, 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 cover system of Breyer wherein the second portion is shorter in length than the first portion, such as by reducing the size of the second portion, in order to reduce material used, saving in material costs. In general, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 13, Breyer as modified discloses the non-roof cover system of claim 1, Gurr discloses wherein an interior angle (Fig. 2) formed by the first and second portions (see examiner comments) is greater than 90 degrees (Fig. 2).
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Breyer (US 2016/0102459) in view of Gurr (US 2006/0288652) and Clark et al (“Clark”) (US 2011/0297662).
Re claim 5, Breyer as modified discloses the non-roof cover system of claim 1, but fails to disclose further comprising a bottom portion connected to the second portion, wherein the bottom portion is oriented towards the gutter lip.
However, Clark discloses further comprising a bottom portion (the bottommost wall at 305, connected to the end of 316) connected to a terminal end (bottom end of 316) of the second portion (316), wherein the bottom portion (the bottommost wall at 305, connected to the end of 316) is oriented towards (as it is angled downwardly) the gutter lip (such as the left lip of 50).
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 non-roof cover system of Breyer further comprising a bottom portion connected to the second portion, wherein the bottom portion is oriented towards the gutter lip as disclosed by Clark in order to provide additional surface area and points of contact for maintaining both the heat element and feature 92 of Breyer in place, providing a greater delineated channel.
Re claim 6, Breyer as modified discloses the non-roof cover system of claim 5, wherein a terminal end (the corner bend connection of the wall below and connected to 316 and 316; this intersection is a terminal end of that wall because that wall ends and 316 begins, and the language does not define a terminal end as being unconnected to anything) of a gutter lip side of the bottom portion (the wall below and connected to 316) is oriented upwardly (Fig. 3, as that wall angles upwardly towards 316).
Examiner Comments
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Response to Arguments
Claim Rejections 35 USC 112: Applicant’s arguments with respect to all claims have been considered and are persuasive. Rejection of the claims under 35 USC 112 for the reasons stated in the previous rejection is hereby withdrawn. However, new grounds of rejection are presented above.
Claim Rejections 35 USC 102 and/or 103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
Applicant argues the lip member of Breyer fails to disclose the amended portion of claim 1, namely, that Breyer’s lip member is not in-plane with the horizontal main body. This language is addressed in view of the rejections under 35 USC 112 and 35 USC 103 above.
In addition, Applicant argues the amended language of claim 1 requiring that the single channel does not span the lateral member to the gutter lip side end. The Examiner respectfully disagrees, as the channel may be interpreted as the entire space below 114/right of 117/ left of 118; in other words, everything underneath 117/114/116/118 is a “single channel” because the area therein has no partition/separating wall.
In addition, Applicant argues that if Gurr’s second portion were applied to Breyer, it would require Breyer’s second portion to intrude into lip 92. Applicant contends that if Breyer’s wall 117 is extended downward, it would cover slot 86, or if bent away, it would intrude into the slot. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The teachings of Gurr would have suggested the proposed modification in order to provide additional surface area and points of contact for maintaining both the heat element and feature 92 of Breyer in place, providing a greater delineated channel.
Applicant’s arguments concerning the dependent claims and Clark are addressed by the above.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
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