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
The claims are objected to because “where” should be –wherein--. The limitation “where" indicates a place or situation, while "wherein" is a term meaning "in which". Appropriate correction is required.
Election/Restrictions
Claims 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/9/2026.
The traversal is on the grounds that the “basis for restriction is the assertion that the flashing member of apparatus Claims 1 to 14 and 20 (corresponding to Invention I) can be made by injection molding”. Examiner responds that the inventions are distinct because it has been shown that the product as claimed can be made by another and materially different process, the process in this case being injection molding. For example, while sheet material could be produced in injection molding, sheet material would not be provided in injection molding. It is stock polymer raw material that would be provided in injection molding.
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 1-14 and 20-22 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.
Claim 1 recites the elongate main element is formed from an aluminum alloy having an elongation at break of at least 6% and that the at least one end element is formed from an aluminum alloy having an elongation at break of at least 12% and larger than the elongation at break of the elongate main element, which is confusing. Aluminum alloy elongation at break is a complex test involving parameters such as sample geometry, feed rate, etc. Is the test done to a recognized standard? If the standard is periodically revised, then to what revision number is the test performed? As the meets and bounds of the claim cannot be ascertained because, as a result of the lack of test step details, the specific elongation values have reduced claim patentable weight, it is assumed the claim recites the elongate main element formed from an aluminum alloy having an elongation at break less than that of an end element formed from an aluminum alloy.
Claim 22 recites “a first piece of sheet material forming an element is bent along two parallel lines to have a first bend and a second bend”, which is confusing because it appears to be a method step (bending) in clams drawn to an article. It is assumed the claim recites a first bend connects the first section and the planar third section and a second bend connects the second section and the planar third section, wherein the planar third section extends between the first section and the second section, said planar third section extending along the length axis and at an angle to both the first section and the second section, the bends being parallel.
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.
Claims 1-14 and 20-22 - are rejected under 35 U.S.C. 103 as being unpatentable over VKR Holdings (EP3404162) in view of VKR Holdings (EP3517229) and Uchida (2006/0263623).
Claims 1-3. VKR ‘162 teaches a flashing member 21 23 for a roof window comprising a frame, said frame comprising a plurality of frame members including a top frame member, a bottom frame member 14, and two side frame members, said plurality of frame members delimiting a frame opening and each of said plurality of frame members having an outer side, para. 29, facing away from the frame opening,
where said flashing member is formed from a sheet material,
where said flashing member comprises an elongate main element having two ends and at least one end element,
where the elongate main element comprises a first section extending along a length axis and a height axis of the flashing member, and
a second section extending along the length axis and a width axis of the flashing member, said length axis extending between the two ends of the elongate main element, and where the at least one end element is attached to the main element at one end and connected to the first section and the second section by a seam connection.
VKR ‘162 does not teach the seam connection is a folded seam connection. VKR ‘229 teaches a seam connection is a folded seam connection, page 2, lines 1-17.
VKR ‘162 does not teach, again as best understood, one sheet formed from an aluminum alloy having an elongation at break less than that of another sheet element formed from an aluminum alloy. Uchita teaches one sheet formed from an aluminum alloy having one set of mechanical properties and another sheet formed from an aluminum alloy having different mechanical properties, para. 37 (while sheets of aluminum of different alloys almost always have at least slightly different elongations at break, elongation being strongly influenced by alloy composition, heat treatment, and processing history, Uchita does not expressly teach the different property is elongation at break).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the main element from one alloy and the end elements from another alloy as taught by Uchita, for the seam to be a folded seam as taught by VKR ‘229, and to make the obvious design choice of the higher end element elongation mechanical property to improve manufacturability by preventing cracking in high-strain areas in the end elements that require higher ductility to absorb strain during bending or forming, while maintaining structural integrity in the main element.
4. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 1, VKR ‘229 further teaching the folded seam connection is a flat lock seam, fig. 7.
5. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 4, VKR ‘229 further teaching each of the elements comprises a bent edge, where said bent edges hook into each other, and where the flat lock seam has been compressed so that the bent edges are pressed firmly against each other, fig. 7.
6. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 1, VKR ‘162 further teaching the height axis and the width axis are substantially perpendicular to each other, and the first section and the second section extend in directions that are substantially perpendicular to each other, fig. 1.
7. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 1, VKR ‘162 further teaching the elongate main element further comprises a planar third section (see figure 3, the inclined portion of 21 which forms an angle B with the horizontal portion of 21) extending between the first section (vertical portion of 21) and the second section (horizontal portion of 21), said planar third section extending along the length axis and at an angle to both the first section and the second section.
8. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 7, VKR ‘162 further teaching the planar third section extends at angles of at least 90 degrees, with respect to the first section and the second section, para. 28. While fig. 2 clearly shows at least the claimed 110 angle, if Applicant should disagree, Examiner indicates that it would have been a matter of obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention for the angle to be at least 110 degrees for water shedding.
9. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 7, VKR ‘162 further comprising a fourth section extending from an edge of the first section opposite the planar third section, said fourth section being configured for engaging with an exterior side of a frame member in the mounted state, as seen I fig. 3, there is a narrow 4th section that extends perpendicular to the distal top edge of the first section as defined herein.
10. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 1, VKR ‘162 further configured for use as a bottom flashing member mounted at the bottom frame member of the roof window mounted in an inclined roof, para. 57.
11. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 10, VKR ‘162 further teaching a skirt element extends in continuation of the second section at the distal end thereof (the tab that extends, fig. 3).
12. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 1, VKR ‘162 in view of VKR ‘229 and Uchida further teaching the sheet material is sheet metal (aluimnum).
13. VKR ‘162 does not expressly teach a total height of the elongate main element along the height axis is 25-60 mm. It would have been a matter of obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention for a total height of the elongate main element along the height axis to be 25-60 mm for waterproofing, especially considering the main element of both VKR ‘162 and the present member are similarly structured and identically used.
14. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 1, VKR ‘162 further teaching a roof window mounted in an inclined roof structure 4, where the flashing member according to claim 1 is mounted at the bottom frame member of the roof window, below the roof window when seen in a direction of inclination of the inclined roof structure, fig. 4.
20. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 7, VKR ‘162 further teaching the planar third section extends at angles of at least 120 degrees, with respect to the first section and the second section (as seen in fig. 3, the angles are much greater than 120 degrees). If Applicant should disagree, Examiner indicates that it would have been a matter of obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention for the angle to be as claimed for water shedding.
21. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 1, Uchida further teaching the one element is formed from a first piece of sheet material and the other element is formed from a second piece of sheet material (different aluminum alloys).
22. VKR ‘162 in view of VKR ‘229 and Uchida teaches the flashing member according to claim 1, at least VKR ‘162, fig. 3, further teaching, as best understood, a first bend connects the first section and a planar third section (the section between the first (vertical top) section and the horizontal part of 21) and a second bend (the lower of the two bends) connects the second section and the planar third section, wherein the planar third section extends between the first section and the second section, said planar third section extending along the length axis and at an angle to both the first section and the second section, the bends being parallel, fig. 3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J KENNY whose telephone number is (571)272-9951. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian 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.
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/DANIEL J KENNY/Examiner, Art Unit 3633
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