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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The following limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses means or a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the means or generic placeholder is not preceded by a structural modifier.
“means for affixing” includes the generic/nonce term “means” coupled with the function of “for affixing”. A return to the specification provides self-taping screws. Therefor the limitation is interpreted as the same or equivalents thereof.
“a separate piece configured to be slid into the bend of at least one section of said frame, to facilitate guiding and wedging said cover panel into place” includes the generic/nonce term “piece” coupled with the function of “to facilitate guiding and wedging said cover panel into place”. A return to the specification provides an S-shaped piece. Therefor the limitation is interpreted as the same or equivalents thereof.
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.
Claim 8 is 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.
Claim 8 recites “the defined track” which lacks antecedent basis.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 8, 10, and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanford (US 5,603,190) in view of Johnson (US 3,831,321).
Regarding claim 1, Sanford discloses a cover, comprising:
a frame (12) configured to be secured around an outer exposed edge protruding from a wall structure, and
a panel (16) configured to seat within the frame and thereby shield an outer protruding interior.
Sanford lacks the use of the cover being for an air conditioner sleeve.
Johnson discloses the use of a protective panel (2) for shielding an outer protruding interior of an air conditioner sleeve (in particular Johnson discloses window-mounted air conditioning units; 1:20-21).
It has been held that where there exists an art recognized suitability for an intended purpose that it is obvious to apply the known means to the known purpose. MPEP 2144.07. In this instance Sanford provides for a protective panel for a window. Johnson evidences that protective panels are used for window air conditioner sleeves. Merely applying the known panel of Sanford to the known purpose of protecting an air conditioner sleeve is prima facie obvious yielding predictable results.
Regarding claim 8, Sanford, as modified, discloses the cover of claim 1, wherein the panel has a laterally-protruding handle (24) at one end thereof, to allow said panel to be grasped and inserted into a defined track of the frame and removed therefrom.
Regarding claims 10 and 13, Sanford discloses the panel and frame are made from metal (8:17-20 “inexpensive and durable metal”) but is silent concerning aluminum. The examiner takes official notice that aluminum is a well-known inexpensive and durable metal. It would have been obvious to one of ordinary skill in the art to have provided Sanford with aluminum in order to observe its low expense, durability, and resistance to corrosion.
Regarding claim 14, Sanford, as modified, discloses the cover of claim 1, but lacks that said panel is additionally insulated with foam. Johnson discloses the panel (2) is insulated with foam (4). It would have been obvious to one of ordinary skill in the art to have provided Sanford with foam as taught by Johnson in order to insulate and seal the panel.
Regarding claim 15, Sanford further discloses said laterally-protruding handle (24) has an inner fold configured to act as a weather strip minimizing water and air infiltration into the air conditioner sleeve when the panel is completely lowered into the frame (fold arrangement shown in figure 1).
Claim(s) 2-4, 7, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanford (US 5,603,190), in view of Johnson (US 3,831,321), and in view of Goebel (US 4,332,114).
Regarding claim 2, Sanford, as modified, discloses the cover of claim 1, wherein the frame (12) has three sections configured to form a C or U shape and secured to the outer exposed edge of the air conditioner sleeve (as modified by Johnson the frame is secured to an air conditioner sleeve). Sanford is silent concerning bending. Goebel discloses an air conditioning cover formed by bending sections (frame is bent at miters 18 as shown in at least figures 3, 4, and 5). It would have been obvious to one of ordinary skill in the art to have formed the frame by bending in order to allow for an easier to ship product for shipping prior to installation.
Regarding claim 3, Sanford further discloses means (27) for affixing said frame to the outer edge of the air condition sleeve.
Regarding claim 4, Sanford further discloses said frame (12) defines a track (40) for receiving said panel being slid thereinto against the outer exposed edge of the air conditioner sleeve.
Regarding claims 7 and 16, Sanford discloses internal edges of the frame sections are bent over on themselves to define the channel or track (40) for receiving the panel.
Regarding claims 17 and 18, Sanford, as modified, discloses the cover of claim 16 but lacks an S-shaped “separate piece”. The examiner takes official notice that s-shaped pry bars are old and well known. It would have been obvious to one of ordinary skill in the art to have provided Sanford with an S-shaped pry bar as a “separate piece” in order to aid in directing the panel into the channel or track 40.
Claim(s) 5, 6, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanford (US 5,603,190), in view of Johnson (US 3,831,321), and in view of Simmons (US 7,146,577).
Regarding claim 5, Sanford, as modified, discloses the cover of claim 3, but lacks a spacer. Simmons discloses a spacer (32) for positioning a frame (28) onto the outer exposed edge of the air conditioner sleeve for installing said frame on the air conditioner sleeve. It would have been obvious to one of ordinary skill in the art to have provided Sanford with a spacer as taught by Simmons in order to facilitate mounting of the arrangement.
Regarding claim 6, Sanford, as modified, discloses the cover of claim 5, wherein said affixing means are fasteners. Sanford is silent concern self-tapping screws. The examiner takes official notice that self-tapping screws are old and well known. It would have been obvious to one of ordinary skill in the art to have provided Sanford with self-tapping screws in order to provide the fasteners in a single step.
Regarding claim 12, Sanford, as modified, discloses the cover of claim 5, but is silent concerning aluminum. The examiner takes official notice that aluminum is an old and well known material. It would have been obvious to one of ordinary skill in the art to have provided the spacer in an aluminum material in order to take advantage of aluminum’s low cost, durability, and resistance to corrosion.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanford (US 5,603,190), in view of Johnson (US 3,831,321), and in view of Mondi (US 2,901,989).
Regarding claim 9, Sanford, as modified, discloses the cover of claim 1, but lacks that said panel has a bent pyramidical surface. Mondi discloses a protective panel having a bent pyramidical surface (defined by bends 28). It would have been obvious to one of ordinary skill in the art to have provided Sanford with the bent pyramidical surface as taught by Mondi in order to increase rigidity.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Claim 11 recites “The cover of claim 5, wherein the spacer has a laterally-protruding handle at one end thereof, to allow said spacer to be grasped and removed from the defined track of the frame after installing the frame on the air conditioner sleeve.”
The examiner notes that while in general merely providing a handle to an element is old and well known, in this specific instance and within the context provided by the preceding claims, that it does not follow to remove the spacer of the prior art after installing the frame on the air conditioner sleeve. Therefor it does not follow to provide a handle in the manner claimed.
No known reference, whether alone or in proper combination, would yield the claimed invention.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited prior art includes protective covers, screens, and filters for air conditioning units and other building constructions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R ZERPHEY whose telephone number is (571)272-5965. The examiner can normally be reached M-F 7:00-4:00 PM.
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, Jianying Atkisson can be reached at 5712707740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R ZERPHEY/Primary Examiner, Art Unit 3799