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 1-20 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-14 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 12,071,772 in view of Kim (WO 02/086254).
Re claim 1 of the pending application and claim 1 of ‘772, each discloses a cover base support with a vertical support portion, wherein the vertical support portion is configured to be positioned between a wall and a cove base, where the cove base is not of a single piece with a flooring material, an angled support portion, a toe support portion that extends downward and away from the angled support portion, wherein the toe support portion is configured to provide support to a toe of the cove base, but ‘772 fails to claim the cove base support comprises an antimicrobial material.
However, Kim discloses the cove base support (Fig. 1) comprises an antimicrobial material (Page 11 line 19 – Page 12 line 9).
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 cove base support of ‘772 with the cove base support comprises an antimicrobial material as disclosed by Kim in order to help hygienic management by adding a sanitary function (Abstract) and to prevent bacteria or fungi from inhabitation (Page 12 lines 16-20).
Claims 2-14 are rejected as being dependent on a rejected claim.
Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 12,071,772 in view of Rachak (US 2008/0245006).
Re claim 17 of the pending application and claim 2 of ‘772, each discloses cove base support, comprising: (a) a vertical support portion, wherein the vertical support portion is configured to be positioned between a wall and a cove base, where the cove base is not of a single piece with a flooring material; (b) an angled support portion; and (c) a toe support portion that extends downward and away from the angled support portion, wherein the toe support portion is configured to provide support to a toe of the cove base, and herein the vertical support portion defines a plurality of apertures (claim 2 of ‘772), but ‘772 fails to disclose (d) a horizontal support portion extending from a distal end of the toe support portion and towards the wall.
However, Rachak discloses (d) a horizontal support portion (Fig. 2 26) extending from a distal end (left end of 30) of the toe support portion (30) and towards the wall (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 cove base support of ‘772 with (d) a horizontal support portion extending from a distal end of the toe support portion and towards the wall as disclosed by Rachak in order to comfortably overlie the floor ([0017]) and to provide additional support to the cove base support so as to prevent slippage of the toe support portion.
Claims 18-20 are rejected as being dependent on a rejected claim.
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) 1-6, 8-10, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE202005011138 in view of Kim (WO 02/086254).
Re claim 1, DE202005011138 discloses a cove base support (9), comprising:
(a) a vertical support portion (10), wherein the vertical support portion (10) is configured to be positioned between a wall (5) and a cove base (3), where the cove base (3) is not of a single piece (Fig. 1) with a flooring material (Fig. 1-2),
(b) an angled support portion (the bend at the intersection of 13 and 49; akin to Applicant’s “angled support portion” 116); and
(c) a toe support portion (49) that extends downward and away from (Fig. 1) the angled support portion (the bend at the intersection of 13 and 49), wherein the toe support portion (49) is configured to provide support to (as “provide support to” is broad, and as “configured to” is a statement of intended use) a toe (35) of the cove base (3),
but fails to disclose the cove base support comprises an antimicrobial material.
However, Kim discloses the cove base support (Fig. 1) comprises an antimicrobial material (Page 11 line 19 – Page 12 line 9).
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 cove base support of DE2005011138 with the cove base support comprises an antimicrobial material as disclosed by Kim in order to help hygienic management by adding a sanitary function (Abstract) and to prevent bacteria or fungi from inhabitation (Page 12 lines 16-20).
Re claim 2, DE202005011138 as modified discloses the cove base support of claim 1, Kim discloses wherein the antimicrobial material includes one of zinc (Page 11 line 19-27), SilverShield ®, MicroGuardTM, Nouvex®, Interact ABX, or Ascera TM.
Re claim 3, DE202005011138 as modified discloses the cove base support of claim 1, Kim discloses wherein the antimicrobial material (Page 11 line 19 – Page 12 line 9) is effective to reduce microbes in blood (being an antibacterial substance).
Re claim 4, DE202005011138 as modified discloses the cove base support of claim 1, Kim discloses wherein the antimicrobial material (Page 11 line 19 – Page 12 line 9) is effective to act as one of an antifungal (Page 12 lines 16-20), antiviral, antibiotic (Abstract: being antibacterial), or antiparasitic material.
Re claim 5, DE202005011138 as modified discloses the cove base support of claim 1, wherein the cove base support (9) includes a support portion (19) operatively extending from (Fig. 1) the vertical support portion (10), but fails to disclose the support portion as horizontal.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cove base support of DE202005011138 with the support portion as horizontal in order to reduce bending and machining required. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
Re claim 6, DE202005011138 as modified discloses the cove base support of claim 5, wherein the horizontal support portion (19) extends towards (from right to left Fig. 1) the wall (5).
Re claim 8, DE202005011138 as modified discloses the cove base support of claim 5, but fails to disclose wherein the horizontal support portion is parallel with the flooring material.
However, it would have been obvious as a matter of choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cove base support of DE202005011138 wherein the horizontal support portion is parallel with the flooring material in order to reduce bending and machining required. In general, it has been held that a mere change in shape of a component is within the level of ordinary skill in the art absent persuasive evidence that a particular configuration of the claimed shape is significant. In re Dailey, 357 F.2d 669, 149.
Re claim 9, DE202005011138 as modified discloses the cove base support of claim 5, wherein the horizontal support portion (19) is angled downwards towards (at 19, at 21) the floor (Fig. 1; there being no contact required) from the vertical support portion (10).
Re claim 10, DE202005011138 as modified discloses the cove base support of claim 5, wherein the horizontal support portion (19) includes the antimicrobial material (Kim: Page 11 line 19 – Page 12 line 9, modifying all of DE202005011138 to include it).
Re claim 13, DE202005011138 as modified discloses the cove base support of claim 5, wherein the horizontal support portion (19) is configured to be spaced away from (Fig. 1; due to 10) the wall (5) when the vertical support portion (10) is substantially flush against (Fig. 1) the wall (5).
Claim(s) 7, 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE202005011138 in view of Kim (WO 02/086254) and Rachak (US 2008/0245006).
Re claim 7, DE202005011138 as modified discloses the cove base support of claim 5, but fails to disclose wherein the horizontal support portion extends from a distal-most end of vertical support portion.
However, Rachak discloses wherein the horizontal support portion (26; akin to the “horizontal support portion” 215 shown in Applicant’s Fig. 6) extends from a distal-most end (Fig. 2) of vertical support portion (28).
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 cove base support of DE2005011138 wherein the horizontal support portion extends from a distal-most end of vertical support portion as disclosed by Rachak in order to provide a location for passing wiring and to provide vertical support by overlying the flooring.
Re claim 11, DE202005011138 as modified discloses the cove base support of claim 5, Rachack discloses wherein the horizontal support portion (26) is configured to contact the flooring material (10) when positioned between the wall (22) and the cove base (DE202005011138: 3).
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 cove base support of DE2005011138 wherein the horizontal support portion is configured to contact the flooring material when positioned between the wall and the cove base as disclosed by Rachak in order to provide a location for passing wiring and to provide vertical support by overlying the flooring.
Re claim 12, DE202005011138 as modified discloses the cove base support of claim 5, Rachak discloses wherein the horizontal support portion (26) is configured to contact the wall (12; [0019] disclosing 33 as optional) when the vertical support portion (26) is substantially flush against the wall (12).
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 cove base support of DE2005011138 wherein the horizontal support portion is configured to contact the wall when the vertical support portion is substantially flush against the wall as disclosed by Rachak in order to provide a location for passing wiring and to provide vertical support by overlying the flooring.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE202005011138 in view of Kim (WO 02/086254) and Borkenstein (US 2,111,922).
Re claim 14, DE202005011138 as modified discloses a cove base assembly (Fig. 1) comprising:
(a) the cove base (3);
(c) the cove base support (9) according to claim 1 (see above),
but fails to disclose (b) an adhesive (Page 1 lines 20-30).
However, Borkenstein discloses an adhesive (Page 1 lines 20-30).
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 cove base assembly of DE2005011138 with an adhesive as disclosed by Borkenstein in order to provide permanent, tool-less assembly.
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borkenstein (US 2,111,922) in view of Pelosi JR et al (“Pelosi”) (US 5,553,431).
Re claim 15, Borkenstein discloses a method of manufacturing (Fig. 1-3 showing 1 and 5 manufactured) a cove base support (5), the method including:
wherein the cove base support (5) includes a vertical support portion (8) configured to vertically support (via 6 and 7) a cove base (1),
but fails to disclose incorporating antimicrobial properties into a material of the cove base support.
However, Pelosi discloses including incorporating antimicrobial properties (Col 5 lines 13-26) into the material (Col 5 lines 13-26) of the cove base support (10).
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 Borkenstein with incorporating antimicrobial properties into a material of the cove base support as disclosed by Pelosi in order to kill bacteria and microbes (Col 5 lines 13-26).
Re claim 16, Borkenstein as modified discloses the method of claim 15, further comprising imbuing (Pelosi: Col 5 lines 13-26 disclosing incorporating the antimicrobial agent into the material of 10) a horizontal support portion (9) of the cove base support (5) with the antimicrobial properties (Pelosi: Col 5 lines 13-26).
Claim(s) 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE202005011138 in view Rachak (US 2008/0245006).
Re claim 17, DE202005011138 discloses a cove base support (Fig. 3 109), comprising:
(a) a vertical support portion (110) defining apertures (at 115) therethrough (Fig. 3), wherein the vertical support portion (110) is configured to be positioned between a wall (5) and a cove base (3), where the cove base (3) is not of a single piece (Fig. 1) with a flooring material (Fig. 1-2),
(b) an angled support portion (the bend at the intersection of 110 and 149; akin to Applicant’s “angled support portion” 116); and
(c) a toe support portion (149) that extends downward and away from (Fig. 5) the angled support portion (the bend at the intersection of 110 and 149), wherein the toe support portion (149) is configured to provide support to (as “provide support to” is broad, and as “configured to” is a statement of intended use) a toe (35) of the cove base (3),
but fails to disclose (d) a horizontal support portion extending from a distal end of the toe support portion and towards the wall.
However, Rachak discloses (d) a horizontal support portion (26; akin to the “horizontal support portion” 215 shown in Applicant’s Fig. 6) extending from a distal end (Fig. 2) of the toe support portion (30) and towards (Fig. 2) the wall (12).
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 cove base support of DE2005011138 with d) a horizontal support portion extending from a distal end of the toe support portion and towards the wall.as disclosed by Rachak in order to provide a location for passing wiring and to provide vertical support by overlying the flooring.
Re claim 18, DE202005011138 as modified discloses the cove base support of claim 17, Rachak discloses wherein the horizontal support portion (26) contacts ([0019] states that 26 “abuts” 12) the wall (12).
Re claim 19, DE202005011138 as modified discloses the cove base support of claim 17, Rachak discloses wherein the horizontal support portion (26) extends from a distal-most end (left end of 30) of toe support portion (30).
Re claim 20, DE202005011138 as modified discloses the cove base support of claim 17, Rachak discloses wherein the horizontal support portion (26) is parallel with (Fig. 2) the flooring material (10).
Response to Arguments
Objections to the Claims: Applicant’s argument with respect to the claim objections is persuasive and objection to the claims is hereby withdrawn.
Double Patenting Rejection: Applicant’s argument with respect to the double patenting rejections have been considered but are not persuasive. Considering the change in scope of the claims, the claims remain rejected as outlined above.
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 moot as they do not apply to any of the combination of references relied upon in the above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 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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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
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