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 1-10, 24-27 are pending.
Claims 11-23 are cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/17/25 has been entered.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless 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 a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “A structure” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Claim 7 discloses the structure as perforated lines, holes, slit cross-hatching and/or slits.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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) 1-7, 10, 24-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrison et al (“Harrison”) (US 2005/0262782) in view of Burton et al (“Burton”) (US 2008/0110110) and O’rourke (US 2009/0090068).
Re claim 1, Harrison discloses a fenestration unit (100), comprising:
a frame (102) having an interior side (inner side of 102) and exterior side (exterior side of 102), and including a head (110), first (112) and second jambs (112), and a sill (113), wherein the head (110) and first jamb (112 on the left) define a first corner (top left corner of 102), the head (110) and second jamb (112 on the right) define a second corner (top right corner of 102), the sill (113) and first jamb (112 on the left) define a third corner (bottom left corner of 102), and the sill (113) and second jamb (112 on the right) define a fourth corner (bottom right corner of 102);
a pre-attached flashing member (108, [0031]) including a frame mounting portion (Fig. 3, at 300; see examiner comments) and a structure engaging portion (Fig. 3 above 300; see examiner comments) and being transitionable between ([0046]) a shipping configuration ([0046] disclosing folding against the frame for a “compact storage position”) and an installation configuration (Fig. 1);
wherein the frame mounting portion (Fig. 3, at 300; see examiner comments) is attached to ([0032] disclosing adhesive) the head (110) and to the first (112) and second jambs (112) on the exterior side (exterior side of 102) of the frame (102);
wherein the structure engaging portion (Fig. 3 above 300; see examiner comments) extends continuously around (Fig. 1) both of the first (top left corner of 102) and second corners (top right corner of 102) and includes a first corner portion (at the top left corner of 108, see [0027] disclosing overlapping of flashing segments) and a second corner portion (top right corner of 108, see [0027] disclosing overlapping of flashing segments), and a lengthwise portion (along the length of 108 between corners) extending between (Fig. 1) the first corner portion (at the top left corner of 108, see [0027] disclosing overlapping of flashing segments) and the second corner portion (top right corner of 108, see [0027] disclosing overlapping of flashing segments), and wherein each of the first corner portion (top left corner of 108) and the second corner portion (top right corner of 108) comprises elastomeric material ([0030]) to facilitate transitioning ([0030]) of the first corner portion (top left of 108) and the second corner portion (top right of 108) between the shipping configuration ([0046]) and the installation configuration (Fig. 1);
wherein in the installation configuration (Fig. 1) the structure engaging portion (Fig. 3 above 300; see examiner comments) of the pre-attached flashing member (108) extends radially from (Fig. 1) a perimeter (perimeter of 102) of the frame (102).
one or more installation brackets (500) mounted to the frame (102),
but fails to disclose wherein each of the installation brackets is configured to allow for insertion of the fenestration unit from an interior of a building structure, and wherein each of the first corner portion and the second corner portion comprises a structure that is different than a structure of the lengthwise portion to enhance an ability of the first corner portion and the second corner portion to be transitionable between the shipping configuration and the installation configuration.
However, Burton discloses wherein each of the installation brackets (Fig. 1C 605) is configured to allow for insertion (Fig. 1C) of the fenestration unit (800) from an interior ([0059]) of a building structure (22).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the fenestration unit of Harrison wherein each of the installation brackets is configured to allow for insertion of the fenestration unit from an interior of a building structure as disclosed by Burton in order to simplify installation on higher floors of a building, as inserted from the inside allows installation without the use of additional tools such as ladders.
In addition, O’rourke discloses wherein each of the at least one of the first corner portion (Harrison: top left 108) and the second corner portion (Harrison: top right 108) includes a structure (at 11a/b/c, [0020]) that is different than a structure (of 108, being flat) of the lengthwise portion (between the first and second corners of Harrison) to enhance an ability ([0020]) of the first corner portion (Harrison: top right 108) and the second corner portion (Harrison: top left 108) to be transitionable between ([0020]) the shipping configuration (Harrison: [0046]) and the installation configuration (Harrison: Fig. 1)
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the fenestration unit of Harrison wherein each of the first corner portion and the second corner portion comprises a structure that is different than a structure of the lengthwise portion to enhance an ability of the first corner portion and the second corner portion to be transitionable between the shipping configuration and the installation configuration as disclosed by O’rourke in order to make folding easier and more accurate and/or straight.
Re claim 2, Harrison as modified discloses the fenestration unit of claim 1, wherein the structure engaging portion (Fig. 3 above 300; see examiner comments) extends around (Fig. 1) both of the first and second corners (top left and top right corners of 102).
Re claim 3, Harrison as modified discloses the fenestration unit of claim 2, wherein the structure engaging portion (Fig. 3 above 300; see examiner comments) extends around (Fig. 1) both of the third and fourth corners (bottom left and bottom right corners of 102).
Re claim 4, Harrison as modified discloses the fenestration unit of claim 1, wherein at least portions of the pre-attached flashing member (108) is bent and/or folded ([0046]) when in the shipping configuration ([0046] disclosing folding against the frame for a “compact storage position”).
Re claim 5, Harrison as modified discloses the fenestration unit of claim 4, wherein the first and second corner portions (top right/left of 108) of the pre-attached flashing member (108) are bent and/or folded ([0046]) when in the shipping configuration ([0046] disclosing folding against the frame for a “compact storage position”). In the event the Examiner overbroadly construed [0046], see alternative rejection below.
Re claim 6, Harrison as modified discloses the fenestration unit of claim 5, O’rourke discloses wherein the first corner portion (Harrison: top left 108) and the second corner portion (Harrison: top right 108) include structures (at 11a/b/c, [0020]) configured to facilitate the bending and/or folding ([0020]).
Re claim 7, Harrison as modified discloses the fenestration unit of claim 6, O’rourke discloses wherein first and second corner portions (Harrison: top left/right corners of 108) include one or more of (1) one or more perforated lines (at 11a/b/c, [0020]), (2) a plurality of holes, (3) slit cross-hatching, or (4) a series of slits (as this is an “or” clause).
Re claim 10, Harrison discloses a method (Fig. 9) for installing the fenestration unit (100) of claim 1 (see above), comprising:
receiving (Fig. 1 showing 100 received) the fenestration unit (100) with the pre-attached flashing member (108) in the shipping configuration ([0046]);
inserting ([0010]) the fenestration unit (100) into a rough opening ([0010]) of a structure ([0010]) from a side (exterior side thereof) of the structure ([0010]), with the exterior side (exterior side of 102) of the frame (102) facing the exterior side (exterior side of the structure) of the structure (Fig. 3);
attaching the installation brackets (500) to the structure ([0033]);
transitioning the pre-attached flashing member (108) from the shipping configuration ([0046]) to the installation configuration (Fig. 1); and
attaching (Fig. 3, [0032] disclosing adhering) the structure engaging portion (Fig. 3 above 300; see examiner comments) of the pre-attached flashing member (108) to the structure (Fig. 3),
but fails to disclose the side as the interior side of the structure.
However, Burton discloses the side (of 22) as the interior side ([0059]) of the structure (22).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Harrison with the side as the interior side of the structure as disclosed by Burton in order to simplify installation on higher floors of a building, as inserted from the inside allows installation without the use of additional tools such as ladders.
Re claim 24, Harrison as modified discloses the method of claim 10, further comprising anchoring ([0033]) each of the one or more installation brackets (500) after inserting ([0033] discloses inserting into the rough opening, and then bending the brackets 500 for anchoring) the fenestration unit (100) into a rough opening ([0033]) of a structure ([0033]) from the interior side of the structure (Burton: [0059]).
Re claim 25, Harrison as modified discloses the method of claim 10, wherein transitioning (Fig. 5A-5B, [0046]) each of the pre-attached flashing members (108) from the shipping configuration ([0046]) to the installation configuration (Fig. 1) includes transitioning ([0046]) each of the pre-attached flashing members (108), but fails to disclose after inserting the fenestration unit into the rough opening of the structure from the interior side of the structure.
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 method of Harrison with the transitioning after inserting the fenestration unit into the rough opening of the structure from the interior side of the structure in order to ensure a proper window fit into the rough opening prior to installing flashing, thus ensuring a proper flashing seal. In addition, selection of the order of performing process steps has been held as within the level of ordinary skill in the art absent new or unexpected results. In re Gibson, 39 F.2d 975.
Re claim 26, Harrison as modified discloses the method of claim 10, wherein: each of the one or more installation brackets (500) includes a base ([0033], the portion coupled to the frame) mounted to the fame (102), and an anchoring bracket (the portion of 500 shown in Fig. 5A-5B) moveably coupled ([0033] disclosing bending) to the base ([0033], the portion coupled to the frame); and the method further comprises moving ([0033]) the anchoring bracket (the portion of 500 shown in Fig. 5A) with respect to the base ([0033], the portion coupled to the frame) for each of the one or more installation brackets (500).
Re claim 27, Harrison as modified discloses the fenestration unit of claim 1, wherein each of the one or more installation brackets (500) includes a base ([0033], the portion coupled to the frame) mounted to the frame (100) and an anchoring bracket ([0033], the portion of 500 shown in Fig. 5A-5B) moveably coupled ([0033] disclosing bending) to the base ([0033], the portion coupled to the frame).
Claim(s) 5 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Harrison et al (“Harrison”) (US 2005/0262782) in view of Burton et al (“Burton”) (US 2008/0110110) and O’rourke (US 2009/0090068).
Re claim 5 in the alternative, Harrison as modified discloses the fenestration unit of claim 4, wherein the portions of the pre-attached flashing members (108) are bent and/or folded ([0046]) when in the low profile configuration ([0046] disclosing folding against the frame for a “compact storage position”), but fails to disclose the portions being around the first and second corners.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the fenestration unit of Harrison such that the bent/folded portions are around the first and second corners (in addition to any other location thereof) in order to provide a more compact storage position, making shipping/transportation less expensive and easier.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrison et al (“Harrison”) (US 2005/0262782) in view of Burton et al (“Burton”) (US 2008/0110110), O’rourke (US 2009/0090068) and Pufahl (US 2012/0085063).
Re claim 8, Harrison as modified discloses the fenestration unit of claim 1, but fails to disclose wherein: the frame mounting portion and the structure engaging portion of the pre-attached flashing member includes a backing layer (optionally aluminum foil), a carrier layer, and an adhesive layer; and the structure engaging portion of the pre-attached flashing member includes a release liner over the adhesive layer when the pre-attached flashing member is in the shipping configuration.
However, Pufahl discloses wherein: the frame mounting portion (Harrison: Fig. 3 below 300; see examiner comments) and the structure engaging portion (Harrison: Fig. 3 above 300; see examiner comments) of the pre-attached flashing member (100) includes a backing layer (120) (optionally aluminum foil), a carrier layer (110), and an adhesive layer (150); and the structure engaging portion (Harrison: Fig. 3 above 300; see examiner comments) of the pre-attached flashing member (100) includes a release liner (140, 151) over the adhesive layer (150) when the pre-attached flashing member (100) is in the shipping configuration (Harrison: [0046] disclosing folding against the frame for a “compact storage position”).
It would have been obvious to a person having ordinary skill in the art before the wherein: the frame mounting portion and the structure engaging portion of the pre-attached flashing member includes a backing layer (optionally aluminum foil), a carrier layer, and an adhesive layer; and the structure engaging portion of the pre-attached flashing member includes a release liner over the adhesive layer when the pre-attached flashing member is in the shipping configuration as disclosed by Pufahl in order to provide a flashing which is a moisture barrier material providing water impermeability, drainage of moisture and air flow on its external surface, pliability, conformance to structural surface variations, sealant compatibility, and excellent immediate and long term adhesion to common building substrates ([0010]).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrison et al (“Harrison”) (US 2005/0262782) in view of Burton et al (“Burton”) (US 2008/0110110), O’rourke (US 2009/0090068) and Tait et al (“Tait”) (US 5,119,609).
Re claim 9, Harrison as modified discloses the fenestration unit of claim 1, but fails to disclose further comprising shipping material on the fenestration unit when the pre-attached flashing member is in the shipping configuration.
However, Tait discloses further comprising shipping material (48) on the fenestration unit (10) when the pre-attached flashing members (50) is in the shipping configuration (Fig. 4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the fenestration unit of Harrison further comprising shipping material on the fenestration unit when the pre-attached flashing member is in the shipping configuration as disclosed by Tait in order to prevent dislodging during shipping (Col 5 lines 21-35).
Examiner Comments
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Response to Arguments
Claim Interpretation: Applicant’s argument with respect to the claims interpreted under 35 USC 112 have been considered but are not persuasive. Applicant argues that the claims do not use the term, “means” and thus, 112(f) is not invoked. It is not required that the claims use the terms means. It is required that the claims utilize a generic placeholder with an accompanied function. The claims as discussed above use such language and thus, invoke 35 USC 112(f).
Claim Rejections 35 USC 112: Applicant’s argument with respect to the claims rejected under 35 USC 112 is persuasive and rejection of the claims pursuant to 35 USC 112 is hereby withdrawn.
Claim Rejections 35 USC 102/103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
Applicant argues the amended language of claims 1 and 10. Applicant argues that claim 1 as amended requires a pre attached flashing member. Applicant argues that Fig. 5 of Harrison shows a flashing member 108 formed of numerous segments, and that there is no teaching of a corner portion with a structure different than that of the lengthwise portions thereof. In effect, Applicant argues that because Fig. 5 shows a segmented structure, there is no corner structure that differs from that of the remainder. It is not readily apparent how this structure would differ from Applicant’s claims. Applicant’s claims require a “continuous” flashing member. Although not claimed, it would appear Applicant’s intent is that the flashing member is a single piece. It is noted that no claim language requires such, and that even the segmented 108 of the prior art is “continuous” around the perimeter. Applicant’s claims further require that this “continuous” flashing member has first and second corner portions. It is not readily apparent how a continuous (or, perhaps, one piece) flashing member can have “differing” corner portions, yet the prior art with segmented flashing members cannot have “differing” corner portions. It would seem that a segmented flashing member would specifically allow for use of different corner portions. In addition, “a portion,” even in a single piece flashing member, is an arbitrary delineation. In any event, even in the absence of differing corner portions in Harrison, O’rourke specifically discloses such. Motivation for the proposed modification thereof is found in the above.
Applicant further argues that the O’rourke flashing is significantly different than that of Harrison. This may be the case. However, the flashing member itself of O’rourke is not relied upon in the above rejection. Only the “structure” that differs is relied upon (including the features of claims 6-7). As such, the prior art meets the claim.
Applicant’s arguments concerning the remaining claims is addressed by the above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
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.
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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