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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/20/26 has been entered.
Claim Objections
Claim 11 is objected to because of the following informalities: the limitation that the bead “extends the entire length of the bottom surface” is a duplicate of a limitation already claimed in claim . Appropriate correction is required.
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.
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 1, 2, 4, 9, 10, 15 and 17 are 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 Neil et al. US 2023/0046540 A1 (hereinafter ‘Neil’).
In regard to claims 1, 2, 9 and 15, Neil teaches a device, comprising:
a bottom surface (40) and a side surface (42) with a bend (30) at the intersection of said bottom and side surfaces;
only a single raised rounded (see [0014]) bead (32) positioned on an inner surface of said bottom surface (see fig. 5 -and [0015]); and
only a single raised rounded (see [0014]) bead (38) positioned on an inner surface of said side surface (see fig. 5 -and [0015]); and
wherein said raised rounded beads are positioned generally parallel to said bend (see [0014] and figures 1-2) that extends along the entire length of the bottom surface (see fig. 1).
It is noted that Neil discloses “at least one raised portion” i.e. bead, which means Neil is disclosing an embodiment having only one bead (in addition to other embodiments having more than one bead) thus meeting the claim.
The Examiner notes that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function and/or the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus meeting all the structural limitations of the claim. See MPEP 2114.
In the event that Applicant disagrees with the Examiner’s notion that the “at least one bead” of Neil includes an embodiment with only one bead, it would have been obvious to one of ordinary skill in the art to provide only one bead because doing so reduces manufacturing costs and time.
In regard to claims 4, 10 and 17, Neil teaches the claimed invention wherein said bottom and side surfaces are perpendicular (see [0014]).
Claims 3, 5-8, 11-14 and 16, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Neil.
In regard to claims 3 and 16, Neil appears to teach, see fig. 4, that the beads on the bottom surface and on the side surface are the same distance away from said bend, but it is not explicitly disclosed. Thus, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application to provide the beads at a same distance from the bend so as to provide a symmetric construction that facilitates installation.
In regard to claims 5 and 11, Neil is silent regarding the distance the beads extend above the respective bottom and side surfaces. Wherein, it would have been obvious to one of ordinary skill in the art to arrive at a value within the claimed range (between 0.01 and 0.04 inches) as a matter of routine experimentation so as to promote even installation. See MPEP 2144.05. (In the instant case, size differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such size is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
In regard to claim 6, 12 and 18, Neil is silent regarding the distance the beads extend above the respective bottom and side surfaces. Wherein, it would have been obvious to one of ordinary skill in the art to arrive at the claimed value as a matter of routine experimentation so as to improve shear strength of adhesives as well as resistance to mechanical shear. See MPEP 2144.05. (In the instant case, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)).
In regard to claims 7, 13 and 19, Neil is silent regarding the distance the beads are positioned from the bend. Wherein, it would have been obvious to one of ordinary skill in the art to arrive at a value of about 2 inches as a matter of routine experimentation. See MPEP 2144.05. (In the instant case, location differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such location is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
In regard to claims 8, 14 and 20, Neil is silent regarding the size of the bottom and side surfaces. Wherein, it would have been obvious to one of ordinary skill in the art to arrive at a width value within the claimed range of about 4 inches as a matter of routine experimentation. See MPEP 2144.05. (In the instant case, size differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such size is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
In response to Applicants argument that Neil is not analogous art, it is noted that the determination of whether a reference is analogous art is relevant to obviousness under 35 U.S.C 103, but is not applicable to anticipation under 102 (see MPEP 2131.05). For anticipation, the sole inquiry is whether a single prior art reference discloses all the claimed structural limitations which Neil does as noted above.
Nevertheless, it is noted that a reference is considered analogous prior art: 1- if the reference is from the same filed of endeavor as the claimed subject matter, regardless of the problem addressed, or 2- if the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In the instant case, the field of endeavor of the claim subject matter is construction materials. Note that the recitation of “step flashing piece” happens in the preamble, a preamble is not given patentable weight unless it recites essential structure or is necessary to give life, meaning and vitality to the claim. In the instant case, the body of the claim defines a structurally complete invention and the preamble merely states a purpose, intended use or filed of use (see MPEP 2111.02).
Further, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. The manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus meeting all the structural limitations of the claim. See MPEP 2114.
With respect to Applicant’s argument for claims 5-8, 11-14, 18 and 19 regarding a result-effective variable, and optimization of ranges, the Examiner maintains her position as noted above. Applicant’s remarks on page 5 are acknowledged but they do not equate to evidence of unexpected results or criticality of the claimed values and ranges. i.e. Applicant has not disclosed why a range of 0.01 – 0.04 inches is a critical range or why a bead extending a distance outside the claimed range would perform differently than the invention.
Conclusion
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 PAOLA AGUDELO whose telephone number is (571)270-7986. The examiner can normally be reached 8AM - 5PM.
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 E Glessner can be reached at 571-272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PAOLA AGUDELO/Primary Examiner, Art Unit 3633
Prosecution Insights