DETAILED ACTION
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 Objections
Claims 1-2 are objected to because, at line 1, “in combination” should be deleted because the fastener passage is not individually distinct from the tile body, a combination being “a joining or merging of different parts in which the component elements are individually distinct”.
Claim 1 is objected to because, at line 2, “lower side;” should be --lower side; and--.
Claim 2 is objected to because, at line 2, “rooftile” should be –roof tile--. This language appears in other claims also.
Claim 2 is objected to because, at line 5, “rooftile” should be --the roof tile--.
Claim 2 is objected to because, at line 6, “roof tile” should be --the roof tile--.
Claim 3 is objected to because, at line 2, “tiles” should be --tile--.
Claim 3 is objected to because, at line 7, “rooftile” should be –the roof tile--.
Claim 11 is objected to because, at line 1, “rigid rooftile” should be --unitary ganged set of rigid roof tiles--.
Appropriate correction is required.
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 1-2, 4-6, 8-9, 11-17, and 20 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.
Claims 1-2, 11-13 recite the limitation "the" fastener head. There is insufficient antecedent basis for this limitation in the claim, as no fastener head is previously recited, only a fastener is recited. It is assumed the claim recites a fastener head.
Claim 2 recites the limitation "the" trapezoidal upper tile section in line 3. There is insufficient antecedent basis for this limitation in the claim, as no trapezoidal upper tile section is previously recited, only an “upper tile section”, line 2, is recited. It is assumed the claim recites a trapezoidal upper tile section.
Claim 11 recites the limitation "the" metal roof tile body section in line 8. There is insufficient antecedent basis for this limitation in the claim, as no metal roof tile body section is previously recited, only “roof tile body sections”. It is assumed the claim recites a metal roof tile body section.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7-8, and 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 is an exact duplicate of lines 6-13 of claim 2, and claim 8 is an exact duplicate of lines 6-13 of claim 2. Finally, claim 20 recites that the tile is metal, but the tile is already recited as being metal (claim 11, line 7). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1 – is rejected under 35 U.S.C. 103 as being unpatentable over Naden (5,174,092) in view of Merrill (3,667,184).
1. Naden teaches a “metal” roof tile 10, col. 1, line 68, comprising:
a metal roof tile body section (“substantially flat” “trapezoidal surface” 14) having an upper (exposed) side and a lower (non-exposed) side; and
at least one fastener passage (34a, 34b, 34c) penetrating the upper side of the metal roof tile body section and extending through the lower side of the metal roof tile body section, fig. 2.
Naden does not teach the fastener passage having a pre-formed spacer section extending from, and away from, the upper side of a metal roof tile body section, whereby a fastener may be forced through the fastener passage with the fastener head abutting and thereby being spaced from the upper side of the metal roof tile body section by the spacer section. Merrill, fig. 3, teaches a metal roof tile with a section (flange section 26) having an upper (exposed) side and a lower (non-exposed) side; and a fastener passage (“set of holes 31”) having a pre-formed spacer section (“annular raised ridge 33”) extending from, and away from, an upper side of the metal roof tile body section, whereby a fastener may be forced through the fastener passage with a fastener head (fastener “head”, col. 4, line 58) abutting and thereby being spaced from the upper side of the metal roof tile flange section by the spacer section (the Merrill fastener “may” (is capable of) going through hole 31, the fastener head abutting and thereby being spaced from the upper side of the flange section by the raised ridge 33 because the ridge is raised above the flange top surface, a nail driven with enough force “to provide a seal between such fastener and the hole”, col. 4, line 59, but not overdriven such that the raised ridge is flattened being a fastener head raised above the flange top surface, “each set of the holes 31 is provided with an annular raised ridge 33 circumscribing the same on the upper surface of the holding flange 26. This raised ridge sealingly engages the head of a fastener 32 passing through its associated hole set 31 to provide a seal between such fastener and the hole”, col. 4, lines 56-59). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Naden body section nail holes to have a pre-formed spacer section extending from, and away from, an upper side of a metal roof tile body section just like Merrill has the flange section raised ridge “to provide a seal between such fastener and the hole”, col. 4, line 59, to reduce leakage and to reduce instances of overdriving the “common roofing nails 36a, 36b, and 36c” such that the nail head goes below the body section top surface causing additional potential leaks.
Claims 2, 6-8, and 14-17 - are rejected under 35 U.S.C. 103 as being unpatentable over Naden in view of Merrill and McDonald (1,941,570).
2 and 7. Naden teaches a rigid roof tile (tile 10 is rigid because it is “metal”) 10, col. 1, line 68, comprising:
a roof tile body section (“substantially flat” “trapezoidal surface” 14, first flange 22, second flange 24, upper edge 16, and lower flange 18) having a trapezoidal upper tile section (14) intermediate a first (24) and second (22) opposed side, each side extending downwardly “depending” from the trapezoidal upper tile section; and
wherein the roof tile body section has:
an upper (top) side and a lower (bottom) side; and
at least one fastener passage (34a, 34b, 34c) penetrating the upper side of the roof tile body section and extending through the lower side of the roof tile body section (the nails penetrate at the trapezoidal surface 14 part of the tile body section).
Naden does not teach the fastener passage having a pre-formed spacer section extending from, and away from, the upper side of the roof tile body section, whereby a fastener may be forced through the fastener passage with a fastener head abutting and thereby being spaced from the upper side of the metal roof tile body section by the spacer section. Merrill, fig. 3, teaches a metal roof tile with a section (flange section 26) having an upper (exposed) side and a lower (non-exposed) side; and a fastener passage (“set of holes 31”) having a pre-formed spacer section (“annular raised ridge 33”) extending from, and away from, an upper side of the metal roof tile body section, whereby a fastener may be forced through the fastener passage with a fastener head (fastener “head”, col. 4, line 58) abutting and thereby being spaced from the upper side of the metal roof tile flange section by the spacer section (the Merrill fastener “may” (is capable of) going through hole 31, the fastener head abutting and thereby being spaced from the upper side of the flange section by the raised ridge 33 because the ridge is raised above the flange top surface, a nail driven with enough force “to provide a seal between such fastener and the hole”, col. 4, line 59, but not overdriven such that the raised ridge is flattened, such a nail head being a fastener head raised above the flange top surface, “each set of the holes 31 is provided with an annular raised ridge 33 circumscribing the same on the upper surface of the holding flange 26. This raised ridge sealingly engages the head of a fastener 32 passing through its associated hole set 31 to provide a seal between such fastener and the hole”, col. 4, lines 56-59). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Naden body section nail holes to have a pre-formed spacer section extending from, and away from, an upper side of a metal roof tile body section just like Merrill has the flange section raised ridge “to provide a seal between such fastener and the hole”, col. 4, line 59, to reduce leakage and to reduce instances of overdriving the “common roofing nails 36a, 36b, and 36c” such that the nail head goes below the body section top surface causing additional potential leaks.
Finally, regarding the limitation reciting an upwardly extending U-channel extending from and along the first side of rooftile body section, Naden teaches channel element 40 (although channel element 40 is left out of the drawings). However, the Naden channel is “integral to the second depending side flange” 24, col. 3, lines 33-34 (Naden mislabels the second depending side flange as element “22”), so one vertical leg of the channel is formed by the side flange. As such, Naden does not expressly teach an upwardly extending U-channel extending from and along the first side of rooftile body section. McDonald teaches that it is old in the art for a channel 40 to be integral with an adjacent element (“face plate”) or separate from the adjacent element (as shown in figs. 1 and 3, page 2), lines 35-58. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Naden channel, like the McDonald channel, to be separate (such that the channel extends from and is along the first side of the Naden rooftile body section) so the channel can be a “different metal than that of the” roof tile body, page 2, line 43.
6 and 8. Naden in view of Merrill and McDonald teach the rigid rooftile of claim 3, the Naden in view of Merrill and McDonald tile further teaching the upwardly extending U-channel has a trapezoidal central section (Naden figs. 1 and 4 show a rectangular central, bottom section) intermediate first and second opposed vertical U-channel sides.
14. Naden in view of Merrill and McDonald teach the rigid rooftile of claim 3, Naden further teaching the rigid rooftile comprises metal, col. 1, line 68.
15. Naden in view of Merrill and McDonald teach the rigid rooftile of claim 7, Naden further teaching the rigid rooftile comprises metal, col. 1, line 68.
16. Naden in view of Merrill and McDonald teach the rigid rooftile of claim 8 (claim 8 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph as shown above), Naden further teaching the rigid rooftile comprises metal, col. 1, line 68.
17. Naden in view of Merrill and McDonald teach the rigid rooftile of claim 9 (claim 9 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph as shown above), Naden further teaching the rigid rooftile comprises metal, col. 1, line 68.
Claims 4-5 - are rejected under 35 U.S.C. 103 as being unpatentable over Naden in view of Merrill and in further view of McDonald.
4. Naden in view of Merrill teaches the metal roof tile of claim 2, Naden further teaching the rooftile body section has a trapezoidal upper tile section 14 intermediate a first 24 and second 22 opposed body section side, each side extending downwardly from the trapezoidal upper tile section.
Regarding the limitation reciting an upwardly extending U-channel extending from and along the first side of rooftile body section, Naden teaches channel element 40 (although channel element 40 is left out of the drawings). However, the Naden channel is “integral to the second depending side flange” 24, col. 3, lines 33-34 (Naden mislabels the second depending side flange as element “22”), so one vertical leg of the channel is formed by the side flange. As such, Naden does not expressly teach an upwardly extending U-channel extending from and along the first side of rooftile body section. McDonald teaches that it is old in the art for a channel 40 to be integral with an adjacent element (“face plate”) or separate from the adjacent element (as shown in figs. 1 and 3, page 2), lines 35-58. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Naden channel, like the McDonald channel, to be separate (such that the channel extends from and is along the first side of the Naden rooftile body section) so the channel can be a “different metal than that of the” roof tile body, page 2, line 43.
5. Naden in view of Merrill and in further view of McDonald teaches the metal rooftile of claim 5, the Naden in view of Merrill and in further view of McDonald tile further teaching the upwardly extending U-channel has a trapezoidal central section (Naden figs. 1 and 4 show a rectangular central, bottom section) intermediate first and second opposed vertical U-channel sides.
Claims 3, 9-10, and 18-19 - are rejected under 35 U.S.C. 103 as being unpatentable over Naden in view of McDonald and Chuang (D453,382).
3. Naden teaches rigid tiles 10 comprising:
rigid tile roof tile body sections (“substantially flat” “trapezoidal surface” 14, first flange 22, second flange 24, upper edge 16, and lower flange 18) having an upper tile section 14 intermediate a first 24 and second 22 opposed side, each side extending downwardly from the upper tile section, fig.1. Naden does not teach a unitary ganged set of the tiles comprising a unitary section having a plurality of the tiles integrally formed within the unitary section, and an upwardly extending U-channel extending from and along the first side of rooftile body section. Chuang, figs. 1 and 6, teaches a unitary ganged set of tiles comprising a unitary section having a plurality of the tiles integrally formed within the unitary section (the 5 tiles shown in fig. 1 minus the lip on the right), and an upwardly facing connecting section (the lip on the right, fig. 6) extending from and along a first side (the right side) of rooftile body section. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to gang the Naden tiles for labor saving.
Finally, Naden teaches channel element 40 (although channel element 40 is left out of the drawings). However, the Naden channel is “integral to the second depending side flange” 24, col. 3, lines 33-34 (Naden mislabels the second depending side flange as element “22”), so one vertical leg of the channel is formed by the side flange. As such, Naden does not expressly teach an upwardly extending U-channel extending from and along the first side of rooftile body section. McDonald teaches that it is old in the art for a channel 40 to be integral with an adjacent element (“face plate”) or separate from the adjacent element (as shown in figs. 1 and 3, page 2), lines 35-58. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Naden channel, like the McDonald channel, to be separate (such that the channel extends from and is along the first side of the Naden rooftile body section) so the channel can be a “different metal than that of the” roof tile body, page 2, line 43.
9. Naden in view of McDonald and Chuang teaches the unitary ganged set of rigid tiles of claim 4, Naden further teaching each upper tile section has a trapezoidal periphery including the first and second opposed sides (Naden teaches each upper tile section has a trapezoidal periphery including the first and second opposed sides because “trapezoidal surface” 14 is trapezoidal and the sides thereof are included in the trapezoidal periphery because the trapezoidal shape is maintained when viewed from above surface 14 as shown in fig. 1).
10. Naden in view of McDonald and Chuang teaches the unitary ganged set of rigid tiles of claim 10, the Naden in view of McDonald and Chuang tile further teaching the upwardly extending U-channel has a trapezoidal central section (Naden figs. 1 and 4 show a rectangular central, bottom section) intermediate first and second opposed vertical U-channel sides.
18. Naden in view of McDonald and Chuang teaches the unitary ganged set of rigid tiles of claim 10, Naden further teaching the rigid rooftile comprises metal, col. 1, line 68.
19. Naden in view of McDonald and Chuang teaches the unitary ganged set of rigid tiles of claim 11, Naden further teaching the rigid rooftile comprises metal, col. 1, line 68.
Claims 11-13 and 20 – are rejected under 35 U.S.C. 103 as being unpatentable over Naden in view of McDonald and Chuang and in further view of Merrill.
11 and 20. Naden in view of McDonald and Chuang teaches the unitary ganged set of rigid roof tiles of claim 4, Naden further teaching at least one fastener passage (34a, 34b, 34c) penetrating the upper side of the metal roof tile body section and extending through the lower side of the metal roof tile body section, fig. 2. Naden does not teach the fastener passage having a pre-formed spacer section extending from, and away from, the upper side of a metal roof tile body section, whereby a fastener may be forced through the fastener passage with the fastener head abutting and thereby being spaced from the upper side of the metal roof tile body section by the spacer section. Merrill, fig. 3, teaches a metal roof tile with a section (flange section 26) having an upper (exposed) side and a lower (non-exposed) side; and a fastener passage (“set of holes 31”) having a pre-formed spacer section (“annular raised ridge 33”) extending from, and away from, an upper side of the metal roof tile body section, whereby a fastener may be forced through the fastener passage with a fastener head (fastener “head”, col. 4, line 58) abutting and thereby being spaced from the upper side of the metal roof tile flange section by the spacer section (the Merrill fastener “may” (is capable of) going through hole 31, the fastener head abutting and thereby being spaced from the upper side of the flange section by the raised ridge 33 because the ridge is raised above the flange top surface, a nail driven with enough force “to provide a seal between such fastener and the hole”, col. 4, line 59, but not overdriven such that the raised ridge is flattened being a fastener head raised above the flange top surface, “each set of the holes 31 is provided with an annular raised ridge 33 circumscribing the same on the upper surface of the holding flange 26. This raised ridge sealingly engages the head of a fastener 32 passing through its associated hole set 31 to provide a seal between such fastener and the hole”, col. 4, lines 56-59). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Naden body section nail holes to have a pre-formed spacer section extending from, and away from, an upper side of a metal roof tile body section just like Merrill has the flange section raised ridge “to provide a seal between such fastener and the hole”, col. 4, line 59, to reduce leakage and to reduce instances of overdriving the “common roofing nails 36a, 36b, and 36c” such that the nail head goes below the body section top surface causing additional potential leaks.
12. Naden in view of McDonald and Chuang teaches the unitary ganged set of rigid roof tiles of claim 9, Naden further teaching at least one fastener passage (34a, 34b, 34c) penetrating the upper side of the metal roof tile body section and extending through the lower side of the metal roof tile body section, fig. 2. Naden does not teach the fastener passage having a pre-formed spacer section extending from, and away from, the upper side of a metal roof tile body section, whereby a fastener may be forced through the fastener passage with the fastener head abutting and thereby being spaced from the upper side of the metal roof tile body section by the spacer section. Merrill, fig. 3, teaches a metal roof tile with a section (flange section 26) having an upper (exposed) side and a lower (non-exposed) side; and a fastener passage (“set of holes 31”) having a pre-formed spacer section (“annular raised ridge 33”) extending from, and away from, an upper side of the metal roof tile body section, whereby a fastener may be forced through the fastener passage with a fastener head (fastener “head”, col. 4, line 58) abutting and thereby being spaced from the upper side of the metal roof tile flange section by the spacer section (the Merrill fastener “may” (is capable of) going through hole 31, the fastener head abutting and thereby being spaced from the upper side of the flange section by the raised ridge 33 because the ridge is raised above the flange top surface, a nail driven with enough force “to provide a seal between such fastener and the hole”, col. 4, line 59, but not overdriven such that the raised ridge is flattened being a fastener head raised above the flange top surface, “each set of the holes 31 is provided with an annular raised ridge 33 circumscribing the same on the upper surface of the holding flange 26. This raised ridge sealingly engages the head of a fastener 32 passing through its associated hole set 31 to provide a seal between such fastener and the hole”, col. 4, lines 56-59). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Naden body section nail holes to have a pre-formed spacer section extending from, and away from, an upper side of a metal roof tile body section just like Merrill has the flange section raised ridge “to provide a seal between such fastener and the hole”, col. 4, line 59, to reduce leakage and to reduce instances of overdriving the “common roofing nails 36a, 36b, and 36c” such that the nail head goes below the body section top surface causing additional potential leaks.
14. Naden in view of McDonald and Chuang teaches the unitary ganged set of rigid roof tiles of claim 10, Naden further teaching at least one fastener passage (34a, 34b, 34c) penetrating the upper side of the metal roof tile body section and extending through the lower side of the metal roof tile body section, fig. 2. Naden does not teach the fastener passage having a pre-formed spacer section extending from, and away from, the upper side of a metal roof tile body section, whereby a fastener may be forced through the fastener passage with the fastener head abutting and thereby being spaced from the upper side of the metal roof tile body section by the spacer section. Merrill, fig. 3, teaches a metal roof tile with a section (flange section 26) having an upper (exposed) side and a lower (non-exposed) side; and a fastener passage (“set of holes 31”) having a pre-formed spacer section (“annular raised ridge 33”) extending from, and away from, an upper side of the metal roof tile body section, whereby a fastener may be forced through the fastener passage with a fastener head (fastener “head”, col. 4, line 58) abutting and thereby being spaced from the upper side of the metal roof tile flange section by the spacer section (the Merrill fastener “may” (is capable of) going through hole 31, the fastener head abutting and thereby being spaced from the upper side of the flange section by the raised ridge 33 because the ridge is raised above the flange top surface, a nail driven with enough force “to provide a seal between such fastener and the hole”, col. 4, line 59, but not overdriven such that the raised ridge is flattened being a fastener head raised above the flange top surface, “each set of the holes 31 is provided with an annular raised ridge 33 circumscribing the same on the upper surface of the holding flange 26. This raised ridge sealingly engages the head of a fastener 32 passing through its associated hole set 31 to provide a seal between such fastener and the hole”, col. 4, lines 56-59). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Naden body section nail holes to have a pre-formed spacer section extending from, and away from, an upper side of a metal roof tile body section just like Merrill has the flange section raised ridge “to provide a seal between such fastener and the hole”, col. 4, line 59, to reduce leakage and to reduce instances of overdriving the “common roofing nails 36a, 36b, and 36c” such that the nail head goes below the body section top surface causing additional potential leaks.
Conclusion
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/DANIEL J KENNY/Examiner, Art Unit 3633